IP Court clarifies criteria for refusal of misleading trademarks

On May 21 2014 the Russian Court for Intellectual Property Rights issued its decision in a case involving a trademark application for PETROFF, filed in the name of Russian holding group Businessinvestgroup (Court Case No CIR-193/2014).

In the decision, the court made some important statements which may influence the practice of the Russian Patent and Trademark Office (Rospatent) regarding refusals issued on the ground that the trademark applied for is liable to mislead the public.

According to the current practice of Rospatent, an examiner may refuse a trademark application simply based on links to websites which contain information about goods bearing the same or similar trademarks and manufactured by other companies in any country of the world. Russian law does not directly provide for a refusal on such a basis; however, in these cases, the examiners usually refer to Article 1483.3 of the Russian Civil Code, which prohibits the registration of trademarks that are false or capable of misleading consumers.

Businessinvestgroup filed a trademark application for PETROFF (No 2012711735) for goods in Classes 32, 33, and 34 of the Nice Classification. Rospatent refused to register the trademark. In particular, Rospatent argued that the mark was liable to mislead the public as to the manufacturer of the goods in Classes 32 and 33, because there was some information on the Internet that Petroff vodka was produced by French company Pernod Ricard in Malaga, Spain. Furthermore, Rospatent noted that Pernod Ricard was the owner of Russian trademark registration No 115408, which expired in 2012.

Businessinvestgroup appealed this decision to the Chamber for Patent Disputes of Rospatent; however, the chamber upheld the examiner’s position. Businessinvestgroup appealed to the Court for Intellectual Property Rights, which ruled in favour of the applicant.

The court noted that, when an application is filed with respect to a trademark which cannot be considered as well known by Russian consumers, the risk to mislead consumers is absent, even if this mark was previously registered in the name of another party.

However, if a trademark was known to Russian consumers and, for some reason, ceased to be effective in Russia, a new trademark registration in the name of a third party is liable to mislead consumers. Nevertheless, if Rospatent refuses an application on such a basis, it must give reasons for such refusal - for example, it must provide evidence that there is a high recognition of the mark among Russian consumers for goods bearing such a trademark, or confirmation that consumers associate the relevant goods with a certain manufacturer. The mere existence of a previous trademark and the notoriety of its owner are not sufficient to refuse an application.

In this case, the court noted that Rospatent had not presented any weighty evidence confirming the fame of Pernod Ricard’s mark PETROFF for Russian consumers. Therefore, the court revoked the refusal and requested that Rospatent register the PETROFF mark in the name of Businessinvestgroup.

Apparently, Rospatent was not able to present evidence of the notoriety of the trademark and its owner without submitting specific information obtained from the owner; however, current procedures do not provide for the possibility for Rospatent to contact the owner of a conflicting trademark. Nevertheless, if the owner of a conflicting trademark provides information confirming its notoriety on its own initiative before the issuance of a final decision, such information may be taken into consideration by the examiners. Further, according to Russian law, the owner of prior rights may file a cancellation action with the Chamber for Patent Disputes of Rospatent after registration of a trademark.

Tatiana Petrova, Sojuzpatent, Moscow