Сore audience is not an obstacle to the recognition of a trademark as well-known in Russia

Contributors:

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

There is no exhaustive list of criteria to recognition of a trademark as well-known in Russia. Among the base evidences there are such as period of use, territory of use, rate of usage, using the sign for certain goods or services. However, the court shall weigh not only mentioned, but all the evidences which rightholder provides for recognize trademark as well-known.

In December 2019, the Russian Patent Office refused to recognize the TM 603305 « » (Mercator) for goods «Vehicles, namely road and communal machinery» from 12 class as well-known. The main argument of the decision was that social investigation was not correct because it was provided among core audience – consumers of specialty vehicles. Moreover, the Russian Patent Office stated that all evidences refer to previous versions of the sign, but not exactly to the design of TM 603305, and that fact does not allow to conclude that the claimed design is widely known.

The rightholder appealed to the Intellectual Property Rights Court (IPR Court) arguing that design of TM 603305 is just an updated version of the previous signs, which are famous among consumers. Moreover, the design itself was never changed significantly. As for social investigation, the rightholder explained that because it is the leading company on specialty vehicles market, producing expensive special equipment, it has a narrow circle of consumers - large enterprises, municipalities. This way, mentioned investigation should not be brought into question.

The IPR Court agreed with the opinion of the rightholder, dismissed the decision of the Russian Patent Office and obliged it for re-examination the claim regarding recognition of a trademark as well-known (Decision dated February 04, 2020). The IPR Court`s main position was that narrow group of consumers is not an obstacle to the recognition of a trademark as well-known, so it was legal to provide social investigation among consumers of specialty vehicles. Moreover, because there is no exhaustive list of criteria to recognition of a trademark as well-known, the Russian Patent Office is obliged to analyze all and any evidences, including the position of the rightholder on the market under the sign, the cost of a trademark, which in this case was about 1 billion rubles (about 13 500 000 USD).

The Russian Patent Office did not agree with court`s decision and filed the appeal to the Presidium of the IPR Court. However, court of cassation agreed with the opinion of the court of first instance, upheld its decision and dismissed the claim (Decision dated May 17, 2021).