IP Court upholds refusal to undermine US mark
The IP Court has upheld (N SIP 238/2022) the Russia Patent and Trademark Office’s (Rospatent) refusal to register a trademark based on its similarity to a well-known US mark. The court chose to limit itself to the trademark matters at issue and did not engage with wider political points raised by the appellant.
Mark belonging to Russian entrepreneur (challenger).
Mark belonging to Caterpillar Inc (incumbent rights owner).
The main reason behind the claim for invalidating the refusal was the lack of confusing similarity between the potential trademark CATS and the opposed mark of Caterpillar Inc, CAT.
The IP Court agreed with Rospatent with regard to the similarity of the marks, noting that a high degree of similarity and homogeneity of goods increases the likelihood of confusion.
During the course of the CIP’s consideration of Rospatent’s refusal, the challenger drew attention to the fact that the incumbent rights holder is US company Caterpillar Inc and, according to a government order of 5 March 2022 (N 430-r), the United States is included in the list of foreign states and territories that have committed unfriendly actions against the Russian Federation, Russian legal entities and individuals.
The entrepreneur also argued that there was no likelihood of confusion between the compared trademarks in the eyes of consumers and that Rospatent’s refusal to register the mark “in order to protect the exclusive right to the opposed trademark” is contrary to the national interests of the Russian Federation. They referred to the notorious decision in the Peppa Pig case (Arbitration Court of the Kirov Region dated 3 March 2022, Case А28-11930/2021), as well as to the fact that Caterpillar Inc has donated over $1 million to support those suffering in the current humanitarian crisis in Ukraine and has suspended its Russian production facilities.
The court rejected the argument that the provision of legal protection for a trademark owned by a US company − and the refusal to register the challenger’s mark − violates the national interests of the Russian Federation. It pointed out that the inclusion of the United States in the list of foreign states and territories that commit unfriendly actions against the Russian Federation, Russian legal entities and individuals does not cover the opposition of trademarks registered in Russia.
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