SC decision will help prevent misappropriation of goodwill attached to famous brands
In Roshen v Rospatent (Case No А40-9614/2012-27-117, June 18 2013; full judgment published in September 2013), the Supreme Commercial Court has considered a dispute between Ukrainian confectionery maker Roshen and the Russian Federal Service for Intellectual Property (Rospatent). The latter had refused to register Roshen's trademark LASTOCHKA-PEVUNIA ('Swallow-Chanter' in English) for candies and confectionery in Class 30 of the Nice Classification.
Roshen sought to invalidate the decision of Rospatent in the Commercial Court of Moscow, but the court agreed with Rospatent on the following points:
- The combined designation was confusingly similar with the registered trademarks LASTOCHKA and LASTOCHKI ('swallow' and 'swallows' in English), registered by well-known Russian confectioner Rot Front Open Joint-Stock Company for the same goods (Rot Front joined the proceedings as a third party).
- Such confusing similarity was contrary to Article 1483(6)(2) of the Civil Code of the Russian Federation, Part IV.
- If Rospatent registered Roshen's trademark, consumers could be confused as to the origin of the goods (ie, they could believe that Rot Front had expanded its range of candies).
Roshen appealed. The Ninth Appellate Commercial Court and, subsequently, the Federal Commercial Court of the Moscow Circuit ruled in Roshen's favour, finding that:
- there was no phonetic and semantic similarity between Roshen's designation and Rot Front’s trademarks;
- the mark LASTOCHKA-PEVUNIA consisted of two words, which differentiated it from Rot Front’s trademarks, even though some similarity existed; and
- there was no visual similarity since the font size of the words used in the parties' marks was different.
Rot Front filed a supervisory appeal to the Supreme Commercial Court, which overturned the appellate courts’ decisions and upheld the decision of the Moscow Commercial Court on the following grounds:
- The appellate courts had failed to follow Supreme Commercial Court Resolution No 2979/06 (dated July 18 2006) and Resolution No 16577/11 (dated April 17 2012), which established that the courts must consider the overall impression of the trademarks and not their individual elements in order to assess their visual similarity.
- The courts had failed to consider the results of public interviews showing that a substantial amount of consumers failed to distinguish Roshen's designation from the well-known Russian brand. This was contrary to the rule that a risk of confusion among consumers is sufficient; there is no need to show that actual confusion has occurred.
- Roshen's attempt to register its mark aimed to misappropriate Rot Front's goodwill.
- Adding a word to a trademark owned by a third party does not mean that the new sign is not confusingly similar to that mark.
In addition, the Supreme Court indicated that similar cases in which the judges’ reasons were different from those established in this case could be subject to retrial. The reasons in the present case should serve as mandatory guidelines for future disputes involving similar facts.
The Supreme Commercial Court’s decision will help prevent the wrongful misappropriation of goodwill attached to famous brands by merely adding a word to the trademark.
Alexey Pashinskiy, Squire Sanders Moscow LLC, Moscow
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