What's in a name? The courts decide
The name of Yury Gagarin, the first cosmonaut, is known around the world, so it is unsurprising that some businesses wish to use it for their own commercial purposes. A Russian company filed and obtained a figurative trademark (422186) which featured a yellow star, a triangle, a red tetragon and the words 'Gagarin Entertainment and Trade Centre'. The trademark designated an entertainment centre located near Gagarin Square, Moscow. Gagarin's daughter Helen sought cancellation of the trademark by filing an appeal with the Chamber of Patent Disputes. When the chamber rejected the appeal, she appealed the decision to the IP Court on the grounds that the trademark violated her non-proprietary rights (ie, the right to the name of the first cosmonaut). The trademark owner argued that the word element 'gagarin' was used to designate the place in which services were rendered because the Gagarin Entertainment and Trade Centre was situated close to Gagarin Square. However, the court ruled that the trademark implied a link with both space travel and Yury Gagarin, and ordered the Patent Office to cancel the registration.
This case was mirrored by another involving the name of Valery Chkalov, a pilot who was well known during the 1930s as the first to fly over the North Pole to the United States. A Russian company registered the trademark CHKALOV (352414) for a trade centre in Perm, in the Ural region. The trade centre was geographically close to Chkalov Street. Chkalov's daughter Olga appealed the registration and, following rejection at first instance, appealed to the IP Court. Surprisingly, the court did not examine the specifics of the case. Instead, it focused on investigating whether Olga Chkalov was the heir of Valery Chkalov. According to Article 7 of the Trademark Law 2008, a designation which reproduces the name of a well-known person cannot be registered as a trademark without the approval of that person's heirs. Further, a trademark can be opposed only by an interested person. As Article 7 is intended to protect the heirs' interests, only such parties can be accepted by the court as interested persons. Olga Chkalov had no certificate of inheritance even though she lived in the same apartment as her father and received fringe benefits as his family member. The court argued that it was necessary to establish not the family relationship, but rather her status as an heir as set out in the Civil Code. In another case, the IP Court stated that the concept of an 'heir' is a category that is legally defined by civil law; thus, substitution of the notion of an heir by the notion of a relative is without legal basis.
The Civil Code contains no definition of 'heir'. Article 1112 provides that the estate of a deceased person consists of things and other property, including proprietary rights and obligations. Personal non-proprietary rights and other non-material benefits shall not be part of the deceased's estate. A name that is a non-proprietary right requires no certification – everything that can be bequeathed has material character.
Further, the word 'heir' appears in a number of Civil Code articles:
- Article 1152 – “To acquire an inheritance the heir must accept it.”
- Article 1156 – “If an heir who has been called to inheritance died after the opening of inheritance.”
These provisions all use the term 'heir' for a person who has not yet obtained a certificate of inheritance. However, Article 1117 provides that there may be “unworthy heirs” – that is, persons who have no right of inheritance. Thus, under the Civil Code the term 'heir' is much broader than merely the person who obtained a certificate of inheritance.
The Civil Code in force when Valery Chkalov died was passed in 1922. The court cited that version of the code, even though it did not define the term 'heir'. Article 430 of the Civil Code 1922 provided that “heirs absent on the date of opening of the inheritance may accept (i.e. have not yet accepted) inherited property personally or through their agents”. Further, the share of an heir who was not born on the date when the inheritance arose may be demanded by his or her representative within three months.
Therefore, although both the old and new Civil Codes interpret the term 'heir' quite broadly, the court ruled that Olga Chkalov provided no documentation confirming her right to inheritance.
The court erred in its judgment on two counts:
- It interpreted the concept of 'heir' incorrectly; and
- It erroneously included the right to the name in the inherited estate.
The IP Court decision is expected to be appealed to the cassation instance and it is hoped that the name Chkalov will enjoy protection in the same way as the name Gagarin.
This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight
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