Gowling WLG (International) Inc - Russia
A company’s name is one of its most valuable assets. However, there may be cases where trademark protection for this essential element is missing or has been delayed. Until recently, there was no established system to object to third-party, bad-faith trademark applications that represent a company name in Russia. However, this has now been significantly amended in a Russia Patent and Trademark Office (Rospatent) Information Notice.
For many years, third-party prior rights to a company name operated as a valid statutory ground for rejecting a trademark application in Russia. And yet, during the application examination, a search of protected prior rights to a company name was never specifically included within the scope of an examiner’s duties, meaning that earlier company names were rarely cited during examination.
If a company name has also received protection as a registered trademark in Russia, examiners have typically chosen to raise an objection based on the prior registered trademark under Article 1483 (6(2)) of the Russian Civil Code; alternatively, if an examiner suspects that a third party’s application represents the name of a third-party company, the examiner may choose to raise an objection based on deceptiveness with regard to a manufacturer or service provider as per Article 1483 (3(1)).
Fortunately, Rospatent’s Information Note On Checking Compliance of Applied-for Trademarks with the Requirements of Article 1483(8) of Civil Code with regard to Company Names and Commercial Designations, published on 10 June 2020, introduces an examination method in cases where an applied-for mark is similar or identical to a company name.
The process – submitting a protest
Previously, examiners were neither instructed nor authorised to conduct a search of company names (eg, by searching databases of registered companies).
However, third parties are now invited to present information on prior rights to company names in the form of unofficial pre-registration oppositions, which is sometimes referred to as a ‘protest’. This can be filed at Rospatent at any time before or during the substantive examination.
What needs to be proven
A pending application can be rejected based on prior rights to a company name if a third party can establish that:
- the company name is protected in Russia (ie, the company name is registered in accordance with the county of origin);
- the company is valid/not liquidated;
- the company name represents an identical or a confusingly similar name;
- the company operates with regard to the same or similar goods or services for which the third party’s application is filed; and
- the use of the company name began before the third party’s application priority date.
Evidence and information
To establish the above in a protest, it is recommended to provide certain types of evidence, which include the following:
- Evidence of the prior right to the company name – this can be any official document (eg, the extract from the company’s register) showing that the right to the company name arose before the priority date of the challenged trademark application and is valid at the time of examination.
- Analysis of similarity between the challenged third party’s mark and the company’s name – similarity is established between the applied-for mark and the original part of the company’s name (ie, Apple if the company’s name is Apple, Inc) based on phonetic, visual and semantic criteria.
- Information about the level of awareness of the company’s name in Russia (optional) – this can be helpful, especially when the likelihood of confusion is assessed. A higher awareness of a company’s name results in the higher likelihood of confusion (SIP-40/2016).
- Information about the operations of the company with regard to the same or similar goods and services as the third party’s application.
This list is non-exhaustive and can further include contracts, invoices, promotional materials, advertisements, samples of goods or their packaging, among other things, showing the actual use of the company’s name that started before the third party’s application priority date.
The Russian IP Court has noted that it is also possible to submit information about the company name’s worldwide recognition in addition to evidence of use, if any, of the company’s name in Russia.
Beyond the protest letter
Objections to registration of a third party’s registration, based on prior rights to a company name, can also be presented at in a post-grant opposition in the Patent Chamber or on a further appeal before the IP Court.
Recent case law
This approach to examining trademark applications with regard to prior rights appears to be in line with court practice, for example, in the WEDO TOOLS CO, LTD v Wedo Rus, LLC case (SIP-391/2019).
In 2019, Wedo Tools successfully invalidated a third party’s trademark registration for the mark below due to its similarity with the company name.
The claimant proved that:
- its company name originated in China before the priority date of the challenged trademark;
- the company name and the trademark are similar to a degree that could lead to confusion; and
- the use of the company name began in Russia before the trademark priority date.
As result, the Chamber for Patent Disputes invalidated the registration in regards in respect of the goods that were similar to Wedo Tool’s evidenced activity in Russia. The IP Court went on to uphold the decision (SIP-391/2019).