Zuykov & Partners - Russia
Part Four of the Russian Civil Code defines a ‘trademark’ as “a designation that serves to individualise the products of legal entities or individual entrepreneurs”. The following may be registered as a mark: a word or a combination of words, an image or packaging, among other subject matters and the combinations thereof. The registration of a surname as a mark is becoming more and more common in Russian and global trademark practice.
Applications may be filed by an individual entrepreneur or a legal entity. However, there are many peculiarities and restrictions with regard to filing a surname as a mark. Article 19 of the Russian Civil Code (“The Name of the Citizen”) establishes that:
“...The name of the individual or his pseudonym may be used with a consent of this person by other persons in their creative activities, entrepreneurial or other economic activities in the ways that exclude misleading third persons in respect of the identity of the citizens and that also exclude abusing the right in other forms... The harm caused to the citizen as a result of the violation of his right to the name or pseudonym shall be compensated in compliance with this Code. When distorting the name of the citizen, or when the name is used in the ways or in the form, which affect his honour, diminish his dignity or business reputation, the citizen shall be entitled to demand refutation, recover the damage caused to him, as well as compensation for moral harm.”
Further, Article 150 outlines the procedure and the conditions for restoring the intangible benefits surrounding a person’s name. This process can be carried out by the person themselves or by others in the event of their death.
The main restrictions with regard to registering a surname as a mark are clarified in Paragraph 9(2) of Article 1483:
“The registration as the trademarks shall not be allowed for the designations that are identical to: ...the name (Article 19), the pseudonym (Paragraph 1 of Article 1265 and Subparagraph 3 of Paragraph 1 of Article 1315) or the designation derived from them, the portrait or the facsimile of the person, who is well-known in the Russian Federation as of the date of filing the application, without the consent of this person or his heir... The provisions of this Paragraph shall also be applicable in respect of the designations, which are confusingly similar to the subject matters indicated therein.”
Therefore, applications to register designations, which are not distinct or possess subject matter that could mislead the consumer in respect of the product or its manufacturer, are not permitted.
The Russia Patent and Trademark Office’s (Rospatent) recommendations outline two categories into which surnames registered as trademarks fall: they either are or are not identical or similar to a surname of a well-known person. If a person is not well known as of the date of filing the application and they want to register their own surname or a fictitious surname that is not similar to a surname of a well-known person and this does not confuse consumers’ associations with any well-known person, they should take the following into account:
- The registration of these marks is allowed if the designation containing the surname is distinctive and is not capable of misleading consumers with regard to the manufacturer.
- To be distinctive, the designation must not only be a proper noun but must also have a dictionary meaning.
- The application materials must confirm that the claimed surname will be perceived by the consumer exactly as the designation of the products or services and not just as the surname – this can be demonstrated by survey results, specialists’ written statements and other forms of proof.
The recommendations indicate that it is possible to increase the distinctive ability of the trademark by adding the person’s first name, presenting the designation in an original graphic manner or including other elements (eg, images).
During the application examination procedure, a negative decision due to the lack of distinction may be handed down if a designation is a surname only and has no other meaning. Further, other filed applications carrying the same surname in the designation may also contribute to this. In this case, a surname may become an unprotected element in the composition of the registered designation.
When registering a designation that is identical or similar to the surname of a widely known person as of the date of filing the application, these kinds of name have acquired a distinctive character and can therefore be registered as marks by themselves. These can be the surnames of stars (ie, variety, film/television, sports, writers and composers, among others). Restrictions to this kind of registration are primarily because the use of another person’s surname may affect the reputation of the well-known bearer (including someone who has passed away). Therefore, in order to register the surname of a well-known person as a mark, it is necessary to either be this well-known person, obtain their consent or be an heir.
However, applying these principles in practice leads to many difficulties; for example, how to determine whether the person bearing the given surname is well known as of the date of filing the application for the trademark. As a rule, this person is understood to be the well-known person and information on them can be found in public sources. This may be done primarily by searching in encyclopedias, reference books, periodicals, radio and TV shows, and increasingly on the Internet. The fact that already-deceased persons are well known is easier to confirm (eg, by the establishment of museums bearing their name and the establishment of monuments, among other things).
Other issues may arise, such as several well-known persons having the same surname. These instances are dealt with on a case-by-case basis.
Thus, key takeaways are as follows:
- if a person or entity wants to register a designation that contains a surname as a mark, they must make sure that it is distinctive and does not mislead consumers;
- if the applicant is a well-known person and they register their surname, no difficulties should arise. If the applicant is not well known but registers the surname of a well-known person, this should also be straightforward as long as they have the consent of the well-known person in advance;
- if the designation is a surname that is not associated with anyone well known, it is much more difficult to get the legal protection for it. In this regard, the following variants can be recommended:
- present the surname in an original font or colour;
- add a name to it; or
- include it in the original combined designation as the unprotected element.
This will increase the distinctive ability of the subject matter, and, consequently, the chances of obtaining a positive decision on the registration of the trademark.