Distinctly different? Trademarks and the standards for distinctiveness in Russia

The growth of the online world means that many brands which used to be accessible to and promoted by a certain section of society are now available across the globe. This creates many challenges, one of which is how to create, protect and enforce a brand across numerous territories. Different countries have different processes, standards and definitions, which brand owners must navigate in order to create a strong and effective brand portfolio.

The essential function of any trademark is to guarantee the customer the identity of the origin of the marked goods or services. A trademark must be able to distinguish itself from other marks or signs in order to fulfil that function. Distinctiveness affects everything from the registrability of a mark and its scope of protection to its enforceability and its continuing validity once registered. It must be distinctive. However, is this test the same the world over and how can a brand owner satisfy the criteria?

Russian trademark law

Trademark distinctiveness is an essential concept of Russian trademark law. However, federal legislation does not define the concept and so brands must look to the decisions of the Russian IP Court and the Russian Patent Office (ROSPATENT) for guidance. Generally speaking, a trademark must either be inherently distinctive or it must have some degree of acquired distinctiveness.

Under Article 1483 (1) of the Russian Civil Code, a lack of distinctiveness is grounds to refuse a trademark registration. Article 1512 allows third parties to challenge any registered trademark on the basis that it is not distinctive. Distinctiveness is normally assessed by the priority date of the registration. If a cancellation action alleges that an otherwise distinctive trademark has become generic, then this issue is addressed by examining the date of the cancellation action.

The Trademark Rules set out the primary standards of distinctiveness by indicating the types of designations which cannot be distinctive:

• simple geometric figures, lines and numbers;
• letters and their combinations without verbal character;
• common names;
• realistic or schematic pictures of the goods; and
• designations related to the manufacture of goods or characterising goods, their weight, materials or the components from which the goods are made.

Under Article 1483 of the Civil Code, the above designations can be included in a trademark registration but as non-protectable elements only and provided that they do not have a dominant position in the trademark. The most typical examples of non-distinctive marks are simple combinations of letters and/or numbers without any verbal character (ie, DMT, KX06, NDC) or distinctive visual elements.

Trademarks comprising elements with little or no inherent distinctiveness can still be protected if elements are combined in an original way. Similarly, inherently distinctive designations which are proven to have lost that quality as a result of wide and longstanding use by different manufacturers for identical or similar goods may, if challenged, be found to be non-distinctive.

A trademark that is not inherently distinctive may still be registered if the applicant can show that it has acquired distinctiveness on the Russian market before the priority date of the trademark application. The burden is upon the applicant and the process can be onerous.

In assessing whether a mark has acquired distinctive character, ROSPATENT must evaluate whether an average customer would perceive the mark as indicating the goods’ source of origin. Acquired distinctiveness must be shown by way of well-documented evidence submitted to the examiner in response to an inherent registrability objection. All materials must be relevant to Russia specifically – the materials must show the mark in use and the proof must be substantial.

The following evidence is typically considered:

• production and sales volumes of the goods or services in Russia;
• the origin of the goods or services in Russia;
• advertising expenses in Russia;
• duration of use of the mark for goods or services specified in the registration;
• information about the extent of consumer’s knowledge about the mark and its owner, including the results of public opinion polls;
• information about publications with respect to the goods or services and the mark; and
• information about the demonstration of the goods or services at exhibitions in Russia.

Evidence that the trademark was registered in other jurisdictions may serve to enhance the applicant's chance in Russia.

Under the legislative framework and the criteria used to evaluate the distinctiveness of a trademark, ROSPATENT has a significant degree of discretion. In some instances an applicant may quite easily overcome an objection, yet in another case be unable to make a convincing argument.

The issue of distinctiveness becomes even more acute when it comes to non-traditional or exotic trademarks. In assessing the distinctive character of a non-traditional mark, ROSPATENT considers whether the average consumer would perceive the use of the mark applied for as an indication of the source of origin as opposed to some other function. Although 3D marks, colour marks, sound marks, light marks, texture marks, olfactory marks, positional or location marks, tactile or feel marks, holographic marks, motion marks and taste marks may be registered in Russia, acquired distinctiveness must be proven in every case.

If an application for a 3D mark is primarily functional from either an ornamental or utilitarian point of view, the mark is not registrable. On the other hand, if the shape is significantly different from the generally accepted functional shape, this may be enough to overcome an objection of lack of distinctive character. For example, the shape of the iPad tablet was refused protection as ROSPATENT considered its shape to be traditional for such kinds of device. On the other hand, the original form of the Dino brand yoghurt drink was granted registration.

Colour marks were previously viewed as being non-traditional and there were only a few registrations. However, in recent years several colour trademarks have been registered in Russia where acquired distinctiveness has been established. In order to demonstrate acquired distinctiveness, the best course of action is to present evidence of long-term use, a colour-orientated marketing strategy and references in advertising and consumer surveys. The association between the colour and the particular goods or services should be strong and the colour must be capable of sufficiently distinguishing the product without any other indicators. Without a large amount of convincing evidence of acquired distinctiveness, an application will not succeed. ROSPATENT may also require a verbal description of the colour(s) with an extended explanation as to the way the colour is used in relation to the goods and services.

The number of registered holographic, sound, tactile and olfactory marks in Russia is extremely small. Sound trademarks may include musical sounds, either pre-existing or specially created to individualise goods and services, and non-musical sounds, either existing in nature or produced by artefactual devices. Tactile marks are extremely rare in Russia due to the difficulty of proving their distinctive character. If the designation is a tactile mark, a sample of the surface and/or its verbal description and other characteristics should be included.

Olfactory marks as such as odours, scents or smells are less frequently applied for. Many of these have been rejected due to lack of distinctive character in relation to the listed goods and services, for example the smell of garlic in relation to foods.