Tiny fairy magics away lovely fairy
The Chamber for Patent-Related Disputes has ordered that the mark MILENKAYA FEYA (meaning 'lovely fairy') be struck off the register. It held that the mark should not have been registered as it is confusingly similar to the earlier mark MALENKAYA FEYA ('tiny fairy') used in relation to the same products.
In May 2002 Kalina Co, a well-known Russian manufacturer of cosmetic products, obtained two registrations for the mark MALENKAYA FEYA in relation to a line of body care products intended mainly for children (Registrations 166033 and 213266). The products became very popular, making the Malenkaya Feya shampoo the second highest selling shampoo for children in Russia. Nefis Cosmetics - another Russian manufacturer - subsequently launched a line of children's cosmetics called Milenkaya Feya, for which it obtained a trademark registration in April 2004 (Registration 266986). The sales of the Malenkaya Feya products quickly dropped after the Milenkaya Feya products were introduced onto the market, prompting Kalina to file an invalidation action against Nefis's registration.
Kalina argued that MILENKAYA FEYA was confusingly similar to its MALENKAYA FEYA mark and thus should not have been registered. It claimed that under the Trademark Registration Rules, a junior mark should be considered confusingly similar to a prior mark if it is generally associated with the prior mark, regardless of the differences between them.
The Chamber for Patent-Related Disputes upheld the invalidation action. It found that Nefis's mark was phonetically, visually and semantically similar to Kalina's mark, and thus should not have been registered. Accordingly, it ordered that MILENKAYA FEYA be struck off the register.
Kalina Co is reported to have filed a court action claiming $200,000 damages from Nefis.
Vladimir Biriulin, Gorodissky & Partners, Moscow
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