Supreme Court: registration of highly similar trademarks by same entity is prohibited

By Tatiana Petrova

Published in WTR Daily, part of World Trademark Review

• Rospatent refused to register a mark on the grounds that it is against the public interest to register two identical marks for identical goods/services in the name of a single entity.
• The IP court disagreed, finding that such approach could lead to the impossibility of registering a series of trademarks
• On appeal, the Supreme Court agreed with Rospatent and returned the case to the court for reconsideration

Russian law does not directly prohibit the registration of identical trademarks for identical goods in the name of the same entity. However, in practice, the Russian Trademark Office (Rospatent) refuses to register such marks on the ground that such duplication is against the public interest. In a recent decision (No 300-ES20-12050, 15 December 2020), the Supreme Court has extended this approach to highly similar trademarks.

Background

Mr Ibatullin (‘the applicant’) filed an application with the Intellectual Property Court seeking to invalidate a decision of Rospatent dated 21 June2018, which amended a Rospatent decision dated 7 June 2017 refusing registration of a mark (Application No 2015728911) for all goods in Class 5 and all services in Class 42, as well as some of the goods in Classes 8 and 14 and some of the services in Classes 35, 36, 41 and 43.

Initially, the applicant had filed an application (No 2015728911) with Rospatent for registration of the mark below (‘golden ratio’ in Russian) for goods and services in Classes 5, 8, 14, 35, 36, 37, 41, 42, 43 and 44. The refusal was based on similarity with several prior trademarks.

The applicant then obtained the registration of one of the cited trademarks (‘golden ratio’ in Russian, Registration No 3110660). However, the words in this mark were written in a slightly different font and arranged over two lines:

Rospatent revoked its arguments based on similarity with prior marks, but the application was refused on another ground, at least for the goods and services identical to those covered by Registration No 3110660. Rospatent based its decision on the ground that the existence of two identical trademarks registered for identical goods and services in the name of a single entity contradicts the nature of the exclusive rights conferred by a trademark and, therefore, contradicts the public interest in accordance with Article 1483(3)(2) of the Civil Code.

Intellectual Property Court decision

The applicant filed an appeal with the Intellectual Property Court, arguing that:

• the conflicting trademarks were not identical;
• the marks were only confusingly similar; and
• there was no obstacle to the registration of two similar trademarks in the name of the applicant.

At first instance, the court ruled in favour of the applicant. The court noted that the marks were not identical and could be registered in the name of the same entity. According to the court, a different approach could:

• lead to the impossibility of registering a series of trademarks in the name of the same rights holder; and
• impede the implementation of measures taken by a business entity in order to rebrand, change the conceptual ideology of the brand, differentiate the brand from others or increase the target audience of the brand.

This first-instance decision was upheld by the Presidium of the Intellectual Property Court.

Supreme Court decision

Rospatent filed a cassation appeal with the Supreme Court of the Russian Federation, alleging that the Intellectual Property Court had committed violations of substantive and procedural law. In particular, Rospatent stated that the insignificant differences between the arrangement of the verbal elements did not indicate the absence of identity between the marks; further, the designations could not be recognised as a series of trademarks, since there were no significant differences between them. The marks contained a single dominant verbal element and did not contain any unprotected elements.

The Supreme Court agreed with Rospatent.

According to the court, the registration of a trademark that is identical to an earlier trademark in the name of the same rights holder in relation to the same or overlapping goods would contradict the nature of the exclusive rights conferred by the trademark; therefore, such registration would be contrary to the public interest. The current law does not provide for the possibility of recognising several exclusive rights in the same trademark, since a single exclusive right is conferred by each trademark. Minor differences in the font used by the marks have no legal significance when establishing the identity of the marks.

Drawing a conclusion on the general visual impression conveyed by the marks, both concerning the font and the spatial arrangement of the verbal elements, the court found that such differences had no legal significance when establishing the identity of the marks, as the impact of such graphic differences on the perception of the mark by Russian consumers would be extremely small.

Based on the foregoing, the Supreme Court cancelled the previous decisions and returned the case to the court of first instance for reconsideration.

This article first appeared on WTR Daily, part of World Trademark Review, in January, 2021. For further information, please go to www.worldtrademarkreview.com