Rospatent guidelines on letters of consent issued
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To ensure the uniform application of Part IV of the Civil Code of the Russian Federation, the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) has issued a series of methodological recommendations, including guidelines on the application of the provisions of the code relating to letters of consent. The guidelines were approved by Rospatent Order 190 (dated December 30 2009) and were published on Rospatent's website on April 1 2010.
The guidelines cover the following:
- the requirements applicable to letters of consent;
- general approaches to the settlement of issues relating to the registration of a sign similar to a registered trademark upon consent of the trademark owner;
- the test to determine whether the mark applied for and the registered mark are confusingly similar; and
- the test to determine whether the goods and/or services covered by the marks are similar.
Further, the guidelines refer to the first, second, third and fourth paragraphs of Section 6, Article 1483 of the Civil Code, stating that a sign cannot be registered as a trademark if it is identical, or confusingly similar, to:
- the trademarks of other persons or entities that have been applied for with regard to similar goods and have an earlier priority date;
- the trademarks of other persons or entities that are protected in the Russian Federation with regard to similar goods and have an earlier priority date; and
- the trademarks of other persons or entities that are recognized as well known in the Russian Federation within the meaning of the Civil Code and cover similar goods.
Pursuant to Paragraph 5, Section 6, Article 1483 of the code, it is possible to register signs that are confusingly similar to such trademarks in respect of similar goods only upon consent of the trademark owner. Therefore, an applicant is entitled to submit documentary evidence demonstrating that the trademark owner has consented to the registration of a confusingly similar trademark.
However, according to the guidelines, the existence of a letter of consent does not mean that there will be no confusion among consumers. Likelihood of confusion depends not only on the similarity of the marks, but also on a number of other circumstances. In particular, the likelihood of confusion between the mark applied for and the registered mark will increase considerably where:
- the marks are almost identical;
- the goods covered by the marks are undoubtedly similar;
- the registered mark is well known among the relevant public and is associated with a specific manufacturer;
- the registered mark is used for mass commodities and everyday consumer goods; or
- the registered mark is a collective trademark, or the applicant seeks registration of its sign as a collective trademark in respect of similar goods.
According to Rospatent, confusing similarity may cause undesirable - and even dangerous - effects, especially if the registered mark covers pharmaceutical goods.
Earlier case law of the arbitration courts pointed out that Article 7(1) of the Trademarks Law did not specify that Rospatent had discretion to allow or refuse the registration of a trademark based on the existence of a letter of consent (see Resolution KA-A-40.11864-07, November 26 2007). Since Article 7(1) of the law was transposed into Article 1483.6 of the Civil Code without any amendments, Rospatent's guidelines conflict with the conclusions of the arbitration courts. Therefore, the guidelines do not comply with the statutory provisions of the code and are subject to revision.
Tamara Istomina, Gowlings International Inc, Moscow
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