Trademarks: Funny and Not That Funny

To register a national trademark, one must submit an application to Rospatent and attach the necessary documents. Rospatent conducts a two-stage examination of such an application: first, a formal examination, and then a substantive examination, where the designation claimed as a trademark is reviewed. If the examination is successful, the applicant becomes the proud owner of a trademark certificate, which certifies the priority of the trademark and exclusive rights to it for the goods specified in the certificate.

Humorous Trademarks

Rospatent notes that sometimes the designations submitted for registration as trademarks exhibit an extraordinary sense of humor and ingenuity of their owners. According to a ranking published by the administrative body on April 1, 2021, the top 5 unusual and original registered trademarks include:

• "Seagull Scribbler" (No. 781330);
• "Toe Cake" (No. 676539);
• "Don’t Peck with an Open Pack" (No. 711190);
• "Back to the Past" (No. 765466);
• "Ororange" (No. 576317).

Controversial Trademarks

However, creativity and an unconventional approach do not always lead applicants to the desired result. During the examination of the claimed designation, Rospatent checks its compliance with Article 1483 of the Civil Code of the Russian Federation, specifically, whether there are grounds for refusing its registration.

In particular, the law prohibits registering designations as trademarks that consist of or contain elements that contradict public interests, principles of humanity and morality (subparagraph 2, paragraph 3, Article 1483 of the Civil Code). Such designations are also referred to as "controversial" trademarks (Rospatent order No. 39 dated March 23, 2001 [1]).

Characteristics of Controversial Trademarks

Currently, the law does not provide specific criteria that unequivocally characterize a designation as "controversial." However, the Trademark Registration Rules provide an open list of such designations, including, in particular, unethically applied national and/or state symbols (coats of arms, flags, emblems), anti-state slogans, obscene words and images, anti-humanitarian appeals, insults to human dignity, religious sentiments of believers, etc.

In assessing designations for compliance with these principles, Rospatent interprets the concepts of "contradiction to public interests" and "humanity and morality" quite broadly, while relying on the principle that public interest must be upheld in a fair competitive environment. Additionally, the agency considers not only universally accepted global moral standards but also national traditions and culture. For example, Rospatent Order No. 39 dated March 23, 2001, provides the following examples of "controversial" trademarks:

"GREAT LENT" for contraceptives or "Confessional" for vodka, as such trademarks could offend the feelings of Orthodox Christians;

"GURAM-BAYRAM" for canned pork products, as this designation could offend the feelings of Muslims. 

Additionally, Rospatent Order No. 12 dated January 20, 2020, notes that designations that primarily contradict principles of humanity and morality may include:

• Profane (swearing) words and expressions, such as “scum”, “herod”, etc.;
• Slang words and expressions that cause unpleasant associations, for example, “cheat (shoe, fool) a comrade.”;
• Obscene images that offend human dignity, for example, naturalistic or caricatured images of a naked or semi-nude female or male body, performed in an obscene pose;
• Volumetric designations of an obscene nature, approaching pornographic items, such as figures of people and/or animals in obscene poses;
• Olfactory and sound designations that cause unpleasant associations, for example, with the physical functions of the body.

How about practice?

In applications for trademark registration, the humor and irony can vary widely. Sometimes applicants/clients come up with such strange trademarks that it is hard to imagine how they could be used to mark a product or service, for example:

• In Japan and Turkey, the trademark is protected under international registration No. 1669370, but in Russia such a mark was denied protection:

• At the same time, the following mark No. 567754 is registered in Russia:

• An interesting example is Certificate No. 827393 – the trademark was registered but its protection was later challenged in Rospatent's Patent Dispute Chamber:

Another practical problem is to claim a broad list and not give importance to the goods and services contained in the classroom. For example, Rospatent refused to protect the following verbal designations:

• “Right to Protection” for toilet paper and casinos;
• “Game over" for funeral services and nursing homes;
• "The "Candyman" is a designation that was declared for confectionery products, but careful examination found that in slang dictionaries (jargon) it means drug trafficking.

Furthermore, one of the grounds for refusal of trademark registration due to a contradiction to public interests is the violation of spelling rules (orthography). In particular, the agency refused to register the verbal designation "DAST IST FANTASTISCH!" on the grounds that in the German language there is the word "DAS," which means "THIS." However, the word "DAST" in the claimed designation is a misspelled version of "DAS."

Since the criteria for refusal of trademark registration listed in subparagraph 2, paragraph 3, Article 1483 of the Civil Code are related to evaluative categories, and the list of cases is general, Rospatent's refusals on this basis often lead to legal disputes. Courts often side with the administrative body in these disputes.

For example, the courts supported the position of Rospatent to refuse registration on the grounds of contradiction to the principles of morality of the following designations:

• "HALYAVA" [2], because it is a slang word, belongs to a relatively autonomous social group and is used to denote distorted, incorrect speech;
• "SHIRE KHARYA" [3], because This designation contains the word "KHARYA", which, according to Russian language dictionaries, is a slang, swear word.

An interesting case involved the administrative body refusing to grant legal protection to the trademark with the verbal element "SAINT VINCENT"/ "Saint Vincent" for "alcoholic beverages (except beer) [4]. Rospatent noted that the controversial designation translated into Russian means Saint Vincent and reproduces the name of a saint revered in Catholicism and Orthodoxy, and therefore the dispute has a clearly defined religious theme.

Rospatent considered the official position of the Russian Orthodox Church, which stated that registering trademarks containing names of alcoholic beverages with religious semantics (including images or names of saints) offends the feelings of believers. Religious organizations can freely use religious symbols of their faith, but religious symbolism is not subject to state registration.

The court upheld Rospatent's position that the contested trademark could offend the religious feelings of believers. It noted that subparagraph 2, paragraph 3, Article 1483 of the Civil Code protects the historical and cultural values of society, in which religion is an essential component of public life, including spiritual culture.

In this case, it is notable that the applicant, to substantiate the compliance of the disputed designation with the law, presented the court with a linguistic expert opinion from the Ministry of Justice of the Russian Federation, expert opinions on religious denominations, and other similar materials. However, the court stated that the dogmas, customs, and canons of the faith, as well as the circle of saints revered by Orthodox believers, are determined, in particular, by the Russian Orthodox Church, as are the sources of theological knowledge of this denomination. Thus, the court emphasized that in this dispute, the official position of the Russian Orthodox Church has priority among the evidence.

What Could Change

In the first days of June, some well-known business media (in particular, Kommersant, RBC) published news about changes that are being prepared into law regarding the registration of trademarks.

Thus, according to media reports, the Russian Orthodox Church and Rospatent jointly prepared amendments to the Civil Code of the Russian Federation prohibiting the registration of trademarks that contain religious symbols or semantics. In particular, such an initiative is caused by the fact that some alcohol and tobacco products are labeled with symbols that are associated with religious themes (the “Soul of a Monk” wine, “Confession of a Sinner” , “Saint George” cigarettes, etc.).

The legal basis for such a ban is a violation of the principle of morality, since the use of religious symbols, names of saints, etc. for purposes related to the use of trademarks may lead to offense to the feelings of believers. However, as Kommersant notes, the Moscow Patriarchate assured that the new rules will not apply to trademarks registered before the new law came into force.

According to media reports, it is expected that the bill will be submitted to the State Duma of the Russian Federation for consideration before the end of the spring session.

Sources:

1. Clause 4 of Rospatent Order No. 39 dated March 23, 2001 (as amended on July 6, 2001) “On approval of Recommendations on certain issues of examination of declared designations” // SPS "ConsultantPlus"
2. Decision of the Intellectual Rights Court dated May 31, 2016 in case No. SIP-123/2016 // ATP “ConsultantPlus”
3. Resolution of the Intellectual Rights Court dated September 18, 2013 N C01-60/2013 in case N A40-68/2013 // ATP “ConsultantPlus”
4. Conclusion of the Chamber for Patent Disputes dated 06/09/2021 (Appendix to the decision of Rospatent dated 06/30/2021 on application N 2012700256/33) <On recognizing the provision of legal protection to a trademark as partially invalid> // ATP “ConsultantPlus”