Doubled trademark protection is forbidden in Russia
Ekaterina Shekhtman, IP attorney, Managing partner INCO ltd., Novosibirsk, RUSSIA, INTA Bulletin Committee, Europe subcommitee
Maria Usova, Senior lawyer, INCO ltd., Novosibirsk, RUSSIA
Verifier: Natalia Nikolaeva, Trademark Attorney, Partner, Regional Director, Law Firm “Gorodissky & Partners”, Novosibirsk, Russia
Intellectual Property Rights Court of the Russian Federation is looking for a balance in practice of granting reasonable trademark protection especially in cases where trademark trolls uses their rights to claim compensation for an infringement of every trademark that they register.
Trademark No.311066 «» («Golden ratio») was registered in 2004 for goods and services in classes 05, 08, 14, 16, 19, 20, 35, 36, 41-44. Later, in 2015 new TM application No.2015728911 «» («Golden ratio») having the same word elements but a slightly different font was filed and registered in March, 2020 under reg. No.752587 by the same rightholder.
However, in December, 2020 the Russian Patent Office invalidated registration No.752587 for some goods and services in classes 05, 08, 14, 35, 36, 41-43 upon a third party`s claim. The main argument of the decision was that trademarks Nos.311066 and 752587 are the same, while it is illegal for a rightholder to have several marks, which are identical and registered for the same goods or services.
The rightholder of the invalidated trademark appealed to the Intellectual Property Rights Court (IPR Court) arguing that marks are just closely similar, but not the same because they have different text font. In spite of that, the IPR Court dismissed the claim on the grounds that it contradicts the nature of the exclusive rights to trademarks and public interests (Decision dated February 20, 2019, Case No. SIP-635/2018). However, Presidium of the IPR Court did not agree with the opinion of the court of first instance and returned the case for a new turn (Decision dated August 05, 2019). Under the second trial, the IPR Court dismissed the decision of the Russian Patent Office and obliged it to restore the registration (Decision dated December 26, 2019).
In turn, the Russian Patent Office filed the appeal to the Supreme Court of Russia, which dismissed the previous decisions and returned the case for a new re-trial to the IPR Court (Decision dated December 15, 2020). The Supreme Court of Russia decided that minor difference in text font does not have any legal significance to establish similarity of trademarks, because the effect of such graphic differences on the perception the sign by consumers is too small. As a result, such marks cannot be registered even as a series of marks.
At a new trial, the IPR Court came to a final decision that trademarks Nos.311066 and 752587 are the same under the phonetic and semantic criteria and their differences are minor and not visually active (Decision dated March 22, 2021).
To sum up, this case confirms that if two or more marks have minor, not significant differences, the Russian Patent Office and IPR Court can consider them as identical trademarks and refuse to register as two separate trademarks owned by one rightholder.