Gowling WLG (International) Inc - Russia
Tying a name or surname to a business is a time-honoured tradition and is particularly common in service industries. It serves personal ambitions and offers clear marketing advantages, as it creates a tie between a generic product and a manufacturer's personality. Further, clients gain confidence in the quality of an organisation’s work because the owner is not afraid to put their own name on the business and its products or services. For entrepreneurs, this is an opportunity to distinguish their business from similar ones and protect their brand from dilution.
However, registering a name or surname as a trademark in Russia is not always straightforward. According to the Civil Code, a mark is not registrable if it is non-distinctive, conflicts with public interest or is contrary to certain moral and ethical standards.
If a surname is rare and not widely used then it should from the outset possess sufficient inherent distinctiveness and be registrable as a trademark. More common surnames may be registered if an applicant presents evidence of acquired distinctiveness, demonstrating that the designation has trademark significance in consumers’ minds in relation to the source of the goods or services. However, if it is deemed too common, then adding a first name to the registration may help. Moreover different first names in combination with the same surname create different associations with regard to distinctions between trademark owners and may therefore co-exist as trademarks.
Marks that are identical to (or similar enough to create confusion with) the name, pseudonym or designation, or physical likeness of a person widely known in Russia as of the date of the filing the application without the consent of that person or their heirs cannot be registered.
If an entrepreneur’s surname is the same as the surname of a famous person, there are a few solutions to successfully obtaining registration. One is to argue that the mark applied for represents the surname of the applicant and is not in any way associated with the famous person. This can be facilitated by adding a given name to the surname to show that the new mark creates an association in Russia with the applicant only. Another option is to present express consent from the famous person or from the heirs.
An interesting surname example is that of ‘Dostoevsky’, which is, first and foremost, the surname of the famous Russian author. It is also a registered trademark for alcoholic beverages in the name of an unrelated legal entity in Russia. The registrant, in the course of the application process, proved that marking goods with this famous surname was aimed at popularising and preserving the memory of this personality. Moreover, the State Literary and Memorial Museum of Dostoevsky expressed its consent for the registration of the claimed designation in the name of the applicant. In addition, the museum expressed its opinion that the choice of DOSTOEVSKY was motivated by the company's charitable activities.
However, it is more often the case that third parties apply for registration of famous names and surnames as trademarks without having any association with the famous person and with no benevolent or philanthropic objective. These applicants typically fall into two categories – trademark trolls trying to gain unfair benefits and individuals or organisations trying to attract attention to their particular activities or social messages.
For example, a party filed trademark applications in Russia for GRETA THUNBERG, FRIDAYS FOR FUTURE and FFF. According to a news article in the 14 February, 2020 edition of Moscow Agency of City News, the applicant said that eco-activism is not yet developed or popular in Russia. Therefore, they were attempting to register these marks in order to draw attention to the problem of climate change. The applicant also indicated that in the event that Greta Thunberg tried to register her name as a trademark, she would be able to duly recover the rights to her name in Russia. However, the trademark applications were refused and Thunberg has since filed her own applications.
A number of slogans containing political statements or featuring the names of politicians have been applied for as trademarks. These applications were rejected for being contrary to the public interest and for violating moral and ethical standards. No doubt the main aim of the applicants was to gain immediate attention rather than to actually succeed in registering and using these types of trademarks.
It is important to keep in mind that, according to generally accepted market research, people tend to remember marks consisting of names/surnames at least 30% more often than other standard marks. Therefore, while it may be challenging to register a surname or a name as a trademark in Russia, once obtained such registrations may have meaningful advantages and add significant brand value.