Rospatent elaborates on procedure for filing informal observations regarding company and trade names

• A recent memorandum elaborates on the means of challenging an application on the grounds that it is similar to a prior company name
• The memorandum explicitly states that informal observations can be filed by any party
• Informal observations are becoming an attractive option when challenging pending trademarks, particularly compared to invalidation actions
   

The possibility of tackling a newly-filed application in Russia has been – and remains – the subject of many queries, as there is no proper opposition procedure available before the Russian Patent and Trademark Office (Rospatent). IP practitioners have always been advised to challenge pending applications with informal observations, which are not binding, but nevertheless often serve the purpose of impeding undesirable filings.

Following a recent memorandum of Rospatent dated 10 June 2020, informal observations have become slightly more formalised if the newly-filed trademark is similar to an existing company name or trade name. While the Russian trademark legislation provides for the possibility of challenging a trademark on the grounds of similarity with a prior company name, Rospatent examiners have never paid much attention to this provision. In addition, Rospatent does not conduct searches for conflicting company and trade names during the examination process. The recent memorandum now elaborates on the means of challenging a pending trademark application under the existing provision.

Unlike invalidation actions, which can be lodged only by interested parties before the Rospatent’s Chamber of Patent Disputes (CPD), the memorandum explicitly states that informal observations can be filed by any party. The observations must be filed during the examination of the contested application - that is, before the examiner reaches a final decision.

The principles for determining the similarity between a company name and a trademark are the same as those which generally apply during the trademark examination process. Only the distinctive part of the company name will be taken into account, while all other indications, such as “limited liability company”, will be disregarded.

As provided by Articles 2 and 8 of the Paris Convention, “nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals”. This means that both Russian and foreign companies will have the right to challenge trademark applications if the trademarks are similar to their company names in Russia. According to Article 8 of the Paris Convention, “a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.

It is important for the company name to have been registered before the priority date of the challenged application, which must be proven by a company certificate, company register extract or another relevant document, depending on the company’s jurisdiction. The company must also legally exist on the observation’s filing date.

The company name must be used in Russia in connection with a business activity similar to the goods or services listed in the conflicting trademark application. The nominal or putative use of a company name will not be considered as a reason to cite the company name as an obstacle to registering a trademark.

The rights holder must provide evidence of the company’s relevant activities in Russia. However, this may not be needed in case the company name is known worldwide, which must be proven. The same conditions apply to trade names that are not subject to registration but are used to individualise businesses and may also be represented graphically or as combined designations.

Observations, however, remain informal - the memorandum stipulates that the examiner is not bound by the information provided in the observation and will not request additional documents if the observation is not convincing or if it lacks evidence. The examiner is even free to leave the observation unanswered - however, this rarely happens.

Informal observations are becoming an attractive option when challenging pending trademarks, particularly compared to invalidation actions filed before the CPD, which tends to support the examiners’ decisions and thus makes it difficult to successfully challenge registered trademarks. Rospatent examiners often appear more flexible, which increases the probability of successfully challenging a trademark application during the examination process.