Similar mark may be registered with consent of owner of previous mark

In OOO Firm Bars v Chamber of Patent Disputes of Rospatent (Case 09AP-10670/2007-AK, August 17 2007), the Ninth Arbitration Appellate Court has dismissed the appeal by the Chamber of Patent Disputes against a Moscow Arbitration Court decision to register the mark VULKAN.

On November 18 2006 OOO Firm Bars applied for the registration of the trademark VULKAN for services in Class 39 of the Nice Classification. The Chamber of Patent Disputes found that the mark VULKAN was confusingly similar to the previously registered trademark VULKAN (and design) (Registration 183998) in respect of services in Class 39, which is owned by Zao Vulkan.

OOO Firm Bars filed a petition before the Moscow Arbitration Court against the Chamber of Patent Disputes decision to refuse the registration of the mark VULKAN, arguing that it had obtained the consent of the owner of the previously registered trademark. The Moscow Arbitration Court declared that the Chamber of Patent Disputes' decision was invalid.

The Ninth Arbitration Appellation Court upheld the decision of the Moscow Arbitration Court. It found that the Moscow Arbitration Court correctly took into consideration that the Trademark Law does not differentiate between 'obvious' and 'unobvious' similarities. Although the marks VULKAN and VULKAN (and design) share phonetic and semantic features, the court found that they were not identical. The court also rejected the Chamber of Patent Disputes' argument that the consent of the owner of the previously registered trademark should not be taken into account.

Finally, the court also agreed with the Moscow Arbitration Court that the duty to protect trademarks under Article 43 of the Trademark Law must not overstep the limits of the law, which provides for the possibility to register similar designations with the consent of the owner of the previously registered trademark.

Tamara Istomina, Gowlings International Inc, Moscow