'Medici' found to be misleading for certain Class 32 goods

Russian Federation

The Chamber of Patent Disputes has found that the trademark TALISMAN DE’ MEDICI could be registered for “beer” in Class 32 and “alcoholic beverages” in Class 33 of the Nice Classification (June 20 2013).

A Russian applicant filed an application (No 2011720409) for the registration of the trademark TALISMAN DE’ MEDICI for goods in Classes 32 and 33. The Russian Patent and Trademark Office (Rospatent) rejected the application on the following grounds:

  • there was a likelihood of misleading consumers as to the nature and origin of some of the goods in Class 32; and
  • the mark applied for was confusingly similarity to three earlier marks:

International Registration No 594295  

International Registration No 1029665  

International Registration No 963644

In Russia, applications are frequently refused on the ground that the mark is capable of misleading consumers as to the producer of the goods. In particular, in some cases applications for the registration of trademarks in Latin characters (representing or including foreign last names) by Russian applicants have been rejected.

In the present case, the examiner based the refusal on the fact that, when translated from Italian, the mark means 'Medici talisman'. The examiner noted that Medici is the name of a family of the Florentine oligarchy, and that several members of that family were governors of Florence. As Italy is well known as a wine-making country, registration of the mark applied for in the name of a Russian applicant in respect of some of the goods (ie, non-alcoholic beverages) was capable of confusing consumers as to the nature and origin of the goods.

The applicant appealed to the Chamber of Patent Disputes of Rospatent, requesting to limit the list of goods in Class 32 to “beer” and submitting letters of consent from the owners of the earlier cited marks. Moreover, the applicant provided agreements concluded with the owners of International Registrations Nos 594295 and 1029665.

After analysing the circumstances of the case, the Chamber of Patent Disputes concluded that the trademark TALISMAN DE’ MEDICI could be registered for the limited list of goods - namely, “beer” in Class 32 and “alcoholic beverages” in Class 33.

Tatiana Pogrebinskaya and Vladimir Trey, Gorodissky & Partners, Moscow 

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