IP Court clarifies criteria for assessing distinctive marks
In a recent case, Rospatent refused to register a designation (and rejected a subsequent appeal) due to the possibility of confusion with previously registered marks. However, the IP Court found that the office had applied the criteria incorrectly.
Evaluating the strength of a particular element of a word designation is highly subjective and accordingly the IP Court and Rospatent do not always apply criteria in the same way. The visual element of a word designation is characterised by its originality, (lack of) descriptive character and whether it forms the basis of a series of signs owned by the same rights holder (Clause 7.1.2 of the Guidelines for the implementation of administrative procedures and actions. Order of FGBU FIPS, 20 January 2020 N12).
Similar word elements can have different meanings in different contexts. Therefore, their strength is significant in determining the similarity (or lack thereof) of designations. In case N SIP-1022/2021, Rospatent refused to register the designation shown in Figure 1, due to the possibility of confusion with the previously registered marks N 962890 and N 1298763 (Figures 2 and 3 respectively (Resolution of the Presidium of the Court for Intellectual Property Rights dated June 17, 2022 N C01-893/2022 in case N SIP-1022/2021)).
Rospatent also rejected the registrant’s objection to this decision.
A controversial aspect of Rospatent's decision concerned the element Vedel, which was recognised as strong and performing the main individualising function due to the fact that it is located prominently and is in the original font. The court drew attention to the fact that the disputed designation includes two protected word elements, ‘Vedel’ and ‘Artodex’, the latter being a strong element since it occupies a large area of the designation and attracts the consumer's attention, while the spatial position of the Vedel element and the font size makes it weak.
As a consequence, the IP Court stated that the degree of similarity between the disputed and contrasted designations could not be determined solely on the basis of comparing the word elements, Vedel / Vittel, without analysing other elements of the claimed designation.
However, Rospatent noted that the word element Vedel coincides with the distinctive part of the company's brand name, Vedel, and is serialising. Taking into account this repetition, this word element cannot be considered weak, regardless of the Artodex element.
The IP Court rejected the possibility of referring to a firm name as part of a series, since it individualises a legal entity, and not goods and services. Such inclusion does not form a series of means of individualisation, as Rospatent mistakenly believes. As a result, the court proceeded on the fact that Rospatent did not carry out a comparison of the designations as a whole, taking into account all the protectable elements included in the claimed designation of the protectable elements of Rospatent.
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