Letter of consent does not save JAGUAR application

In a ruling issued on September 12 2006, the Chamber for Patent-related Disputes of the Russian Federal Service for Intellectual Property, Patents and Trademarks (the chamber) has dismissed Jaguar Cars Limited's appeal against an examiner's decision to refuse its application to register the trademark JAGUAR (and Jaguar device) for goods in Class 16 of the Nice Classification, namely "writing implements, including pens, pencils and pencil boxes".

The chamber first noted that Jaguar Cars' application was for a combination of the word element 'JAGUAR' in a standard upper-case font and a design element featuring a jumping jaguar placed above the word element. Next, it stated that the examiner had based the earlier decision to refuse registration on the existence of an earlier JAGUAR (and Jaguar device) mark in the name of Jaguar Deutschland GmbH for identical goods in Class 16. Having performed a comparative analysis of the two JAGUAR marks, the chamber concluded that they were identical and would cover identical goods.

Upholding the earlier refusal, the chamber disregarded evidence from Jaguar Cars that it had obtained a letter of consent to register its mark from Jaguar Deutschland. It held that registration of a mark in respect of goods identical to those of an earlier rights holder, where the earlier rights holder has given its consent, is permitted only in cases when the claimed mark is confusingly similar to the later mark, not when the two are identical. Thus, the letter of consent could not serve as a basis for registration in this case as the marks were identical.

Tamara Istomina, Gowlings International Inc, Moscow