Registration of DR KOFFER allowed despite existence of identical trade name
Legal updates: case law analysis and intelligence
In Tufelka LLC v Division for the Substantive Examination of Trademarks of the Federal Institute of Industrial Property of Rospatent (Case 2005731212/20, March 19 2009), the Chamber for Patent Disputes has partially upheld an appeal against the examiner’s refusal to register the trademark DR KOFFER for goods in Classes 16, 18, 24 and 25 of the Nice Classification.
The examiner had refused to register the mark on the grounds that:
- it might mislead consumers as to the origin of the goods; and
- it was identical to the trade name of US company Dr Koffer, which manufactures and sells leather goods in several countries, including Russia.
The Chamber for Patent Disputes considered that the examiner had been correct in finding that the mark was capable of misleading consumers as to the origin of certain goods in Class 18 - namely, "leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags".
However, the Chamber for Patent Disputes found no reason to refuse registration of the mark on the grounds that it was identical to a trade name. The Chamber for Patent Disputes held that to oppose the registration of a mark based on an earlier trade name, the following conditions must be met:
- the mark must be identical to the trade name;
- the trade name must be protected in the Russian Federation; and
- the rights in the trade name must predate the priority date of the trademark application.
In the present case, the Chamber for Patent Disputes stated that it had no information on the rights in the trade name Dr Koffer in the Russian Federation. Therefore, it allowed the registration of the DR KOFFER mark, except with regard to the abovementioned goods in Class 18.
Tamara Istomina, Gowlings International Inc, Moscow
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10