This article first appeared on WTR Daily, part of World Trademark Review, in October 2019. For further information, please go to www.worldtrademarkreview.com.

  • The owner of the mark HORSE SENSE filed a post-grant opposition against the mark HORSE DOSE, which had a priority date of 3 March 2014, but was unsuccessful
  • HORSE SENSE was then recognised as having well-known status retroactively to 1 March 2014, and the second opposition was successful
  • Following a request for clarification by the IP Court, the Constitutional Court confirmed that the well-known status provisions are constitutional and valid

On 19 September 2019 Russia's Constitutional court confirmed that the laws recognising well-known status are constitutional and valid (Case No 2145-О)

Background

The Constitutional Court's decision stems from a complex sequence of events between the owners of the marks HORSE DOSE and HORSE SENSE (in Cyrillic). The IP Court asked the Constitutional Court to consider whether the well-known status provisions in the Civil Code are unconstitutional to the extent that those provisions allow a party to oppose an earlier registered trademark on the basis of a trademark to which well-known status has been retroactively granted to an earlier priority date.

The Constitutional Court has many powers, including the power to review whether certain laws violate the rights and freedoms of Russian citizens and, if so, to declare them unconstitutional. This was the particular concern that was raised by the IP Court.

A trademark registration had been granted to ForaPharm in Class 3 for the mark HORSE DOSE with a priority date of 3 March 2014. The opponent, Zeldis, filed two post-grant oppositions against the HORSE DOSE registration. The first opposition was based on three senior HORSE SENSE registrations in Classes 3 and 5, one of which was registration No 43077. That opposition was dismissed in 2016.

Having failed in the first opposition, Zeldis filed a second opposition. Immediately prior to doing so, Zeldis had successfully applied to Rospatent to have its registration (No 43077) acknowledged as having well-known status, retroactively to 1 March 2014 - that is, two days earlier than the 3 March 2014 priority date of the opposed application. The second opposition was successful and the HORSE DOSE registration was cancelled.

Constitutional Court decision

The court reviewed the question posed to it by the IP Court and concluded that the well-known status provisions in the Civil Code were valid and did not offend the Constitution.

The court's reasoning was thorough and logical:

  • Well-known trademarks stand out from other trademarks.
  • Well-known status can be accorded to registered and unregistered marks.
  • The status is perpetual.
  • Legal protection for well-known trademarks is broader than protection for other trademarks.
  • "Priority" of a well-known trademark is on the date indicated and established by the owner.
  • Well-known status can be as of a date that is earlier than the registration date or priority date of a registration.
  • Whether a mark is well known or not is a question of fact.
  • The onus to prove that a mark is well known is on the requesting party.
  • A third party has the right to dispute well-known status.
  • Therefore, the well-known status provisions under the Civil Code are constitutional.

Comment

At present, the application for HORSE DOSE stands as refused on the basis that it is confusing with registration No 43077 for HORSE SENSE in view of the fact that HORSE SENSE was accorded well-known status as of a date earlier than the priority date for the opposed application for HORSE DOSE.

The granting of well-known status is important for brand owners because it allows for protection to transcend into other classes of goods and services. It is also a powerful tool because a request allows for the grant of recognition back to a date when the mark first became well known.

This ruling thus gives a big boost to brand owners everywhere.