Relative grounds for trademark refusals in Russia are connected to the following prior rights of third parties:
1. Trademarks, including international trademarks and trademark applications, with earlier priority dates;
2. Geographical indications and appellations of origin;
3. Trade names, commercial designations and names of plant varieties;
4. Copyright, personal names of popular persons;
5. Industrial designs.
For the sake of clarity, we will only deal with prior trademark rights in this article.
A trademark cannot be registered if it is identical or confusingly similar with an earlier trademark (including earlier international trademark protected in Russia) protected in respect of similar goods / services.
Identity and confusing similarity
Marks are identical if they are the same in all elements.
Marks are considered confusingly similar when they are associated as a whole despite differences.
Russian IP Office (Rospatent) analyzes confusing similarity taking into account 3 criteria: visual (graphic), aural (phonetic) and conceptual (semantic) similarity and presence of one of them is sufficient for finding confusing similarity.
One has to keep in mind 3 factors:
1. Russia still does not have a formal opposition proceeding and Rospatent conducts ex officio examination of earlier trademark rights;
2. Rospatent is very strict in assessing confusing similarity of marks, often stricter than most other IP Offices and
3. According to article 6quinquies of the Paris Convention for the protection of industrial property (par. C) “in determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration”. Factual circumstances can play a very important role in assessing confusing similarity.
Here are 3 examples from our practice
1) Visual (graphic) similarity in the view of Rospatent examiner
– IR filed in Russia
– The national mark cited against the new IR
The examiner considered both marks confusingly similar due to a picture (bird) used in both marks.
However, it was successfully proven that despite some similarity, it is not enough to give rise to “confusing similarity” due to the following differences between the marks:
· Completely different verbal elements (verbal elements are usually considered as strong ones and decisive in determining confusing similarity between the marks)
· Clear semantics of the verbal elements that explains the picture elements, one picture is “Eagle” (the Russian “Орел”, hence the verbal elements “White Eagle” or “Белый Орел”), the other one is “Falcon” (Serbian ”Соко”, hence the words “Стара Соколова” or “Old Falcon’s”). Besides, the Serbian word is very close to the Russian equivalent of “Falcon”, thus Russian consumers are able to see the difference between the marks and will not confuse the two pictures of different birds when they are accompanied by words (“Falcon” vs. “Eagle”).
2) Aural (phonetic) similarity in the view of Rospatent
– A national TM application
– An earlier national registration
The examiner considered marks confusingly similar due to the presence of the “Elcom” (Russian sound “Элком”) element.
In that case it was successfully proven that:
· The application contains other elements (i.e. design element) and the word element is not a combination of two words (“elcom” +“soft”) but represents one word. Hence, the degree of similarity is very low and is insufficient to give rise to confusing similarity.
· Besides, there were factual circumstances indicating that Russian consumers already knew both the applicant and the mark due to extensive media coverage of the company on the date of application in Russia. Therefore, no consumers’ confusion was possible.
3) Conceptual (semantic) similarity can also play its role both for and against the applicant.
We had a case when the two word marks were arguably similar and there was only one (1) letter difference between them. Nevertheless, we managed to prove that they are not confusingly similar.
· The client’s mark had a clear semantic connotation and was suggestive in a subtle way making reference to goods for which protection was sought, whereas the cited earlier mark did not have a particular meaning or could potentially have a completely different meaning not having any relation to client’s mark.
· Factual circumstances also played their role as the client’s mark was already present on the market in Russia and there were numerous references to the goods under this mark that were quite popular in Russia.
Similarity of goods/ services
When determining similarity of goods (services) the examiners should look at consumers’ perception, namely perception of goods (services) as belonging to the same business.
The following features of goods/services shall be considered in deciding their similarity: type and category of goods, their nature and functionality, materials, channels of their distribution (retail, wholesale, etc.), whether the goods are interchangeable, consumers (including whether the goods are intended for mass consumption or they are intended for experienced consumers – industry professionals who are knowledgeable and circumspect), etc.
Again, as with similarity of marks, Rospatent applies very wide criteria of similarity of goods/services. For instance, it is a standard practice in Russia that “software” and “hardware/computers” or “computer interfaces” are similar goods.
Software with different functionality considered as similar goods as well, i.e. “software for mobile games” and “software for providing communication with customers of an e-shop in real time” would be similar goods in Russia.
In one of our cases both Rospatent examiners and later the Appeal Board of Rospatent considered similar “pharmaceutical preparations for humans” and “veterinary preparations” (for pets) arguing that very often “pharmaceutical preparations for humans” can also be used for pets and the goods can be considered as interchangeable.
At the same time, it was successfully proven that such goods in class 14 as “pet collar charms” and in class 18 “collar for animals; collar for pets; dog leashes; dog collars; cat collars” are not similar with the goods in class 14 “jewelry; chronographs [watches]; precious stones” and goods in class 18 “leather and imitation of leather; suitcases; harness; whips”.
While these goods belong to the same classes, their functionality, purpose of use and nature are very different, they also belong to different types and categories and they are not interchangeable.
Consent of the owner (letter of consent)
While in some cases it is very difficult to successfully argue absence of confusing similarity and /or dissimilarity of goods/services, a letter of consent from the owner (s) of the earlier mark (s) can help.
Rospatent usually accepts the letters of consent and they are an efficient way to overcome a provisional refusal but keep in mind that:
– Such letter of consent shall be made in accordance with Rospatent’s rules and requirements and you should make sure that the letter you want to use complies with these requirements;
– They shall be irrevocable (a respective language shall be added into the text of the letter) and
– It will not help in case of identical marks and there is also a risk that Rospatent will not accept the letter in case of highly similar marks.
1. While overcoming prior trademark rights as a ground of TM refusal in Russia is often very difficult, it is still worth fighting for your application. Don’t be discouraged and analyze each case carefully. Perhaps there are chances, check the cited mark(s), may it has already expired and has not been renewed (hence, the objection will have to be removed) or perhaps a degree of similarity is not very high or may be that the goods/services are in the same class but not similar? What about the letter of consent?
2. It may also happen that your own earlier marks are cited against your application. It actually happens quite often in Russia, for instance, when the owner changed its address but failed to record the change in the national or WIPO registry. Rospatent in that case will consider that the marks are owned by different entities (even if a company name is the same). Update all your changes (i.e. change in company name, address or any other changes such as merger, assignment, etc.) on time and if you receive a provisional refusal based on your own mark, you still have 6 months to respond and record all necessary changes.
3. Conducting a prior search in Russia is highly recommended taking into account strict approach of Rospatent towards confusing similarity and similarity of goods/services. While a prior search is never a guaranty that your mark will mature to registration in Russia, it is still a very good tool to get a clear picture of what you can expect in both national and international application proceeding.