Changes to company names and bad-faith trademark applications in Russia

7 minute read
07 October 2020

This article was originally published on IAM Media.

A company's name is the face and one of the most valuable assets of any business. However, there could be situations when trademark protection for this essential asset is missing or has been delayed. Even recently, there was no established mechanism for objecting to third-party bad faith trademark applications representing a company name in the Russian Federation. However, this situation has been significantly changed by a recently published Information Notice of the Russian PTO.



Background

For many years, third-party prior rights to a company name have operated as a valid statutory ground for rejecting a trademark application in Russia. And yet, during examination of an application, a search in respect to protected prior rights to a company name has never been specifically included within the scope of an examiner's duties and therefore an earlier company name is seldom cited during examination.

If a company name has also received protection as a registered trademark (par. 6(2) Article 1483 of Civil Code) in Russia, examiners have typically chosen to raise an objection based on the prior registered trademark; alternatively, if an examiner suspects that a third party's application represents the name of a third party company, the examiner might choose to raise an objection based on deceptiveness in respect to a manufacturer or service provider (par. 3(1) Article 1483 of Civil Code).

Fortunately, the new Information Note of the Russian PTO "On Check of Compliance of Applied-for Trademarks to the Requirements of Paragraph 8 of Article 1483 of Civil Code, (in respect of company names and commercial designations)", published on June 10, 2020, now introduces a methodology in examination where an applied-for mark is similar or identical to another company's name.

The process: submitting a protest

As before, the examiners are not instructed or authorized to conduct a search in respect to company names - such as searching databases of registered companies.

However, third parties are now invited to present information on prior rights to company names in the form of unofficial pre-registration oppositions, sometimes referred to as a "protest". A protest may be filed in the Russian PTO at any time before or during substantive examination.

What needs to be proven

A pending application can be rejected based on prior rights to a company name if it can be established by any third party, that:

  • the company name is protected in Russia (i.e. the company name is registered in accordance with the county of origin);
  • the company is valid/not liquidated;
  • the company name represents an identical or a confusingly similar name;
  • the company operates in respect to the same or similar goods or services for which the third party's application is filed; and
  • the use of the company name began before the third party's application priority date.

Evidence and information

To establish the above in a protest it is recommended to provide the following evidence:

  • Evidence of the prior right to the company name: This can be any official document (such as the extract from the company's register) showing that the right to the company name arose before the priority date of the challenged trademark application and is valid at the time of examination.
  • Analysis of similarity between the challenged third party's mark and the company's name: Similarity is established between the applied-for mark and the original part of the company's name (i.e. Apple if the company's name is Apple, Inc.) based on phonetic, visual and semantic criteria.  
  • Information about the level of awareness of the company's name in Russia (optional): This can be helpful, especially when the likelihood of confusion is assessed. A higher awareness of a company's name results in the higher likelihood of confusion.[1]
  • Information about the operations of the company in respect to the same or similar goods and services as the third party's application.

This list is not exhaustive and can further include contracts, invoices, promotional materials, advertisements, samples of goods or their packaging, etc., showing the actual use of the company's name that started before the third party's application priority date.

Russia's Intellectual Property Court has noted that it is also possible to submit information about the company name's worldwide recognition in addition to evidence of use, if any, of the company's name in Russia.

Beyond the Protest letter

Objections to registration of a third party's registration, based on prior rights to a company name, can also be presented at in a post grant opposition in the Patent Chamber or on a further appeal in the Russian Intellectual Property Court.

Recent case law

This approach of examining trademark applications in respect to prior rights appears to be in line with court practice. An instructive example is WEDO TOOLS CO., LTD. vs Wedo Rus, LLC[2].

In 2019, Wedo Tools successfully invalidated a third party's trademark registration for Wedo due to its similarity with its company name.

The claimant proved that (i) its company name originated in China before the priority date of the challenged trademark; (ii) the company name and the trademark are similar to a degree that could lead to confusion; and (iii) the use of the company name began in Russia before the trademark priority date.

As result, the Chamber for Patent Disputes invalidated the registration in regards in respect of the goods that were similar to WEDO's evidenced activity in Russia. The Russian Intellectual Property Court went on to sustain the decision[3].


[1] Ruling of the Intellectual Property Court, July 08, 2016, case № SIP-40/2016

[2] Ruling of the Intellectual Property Court, November 06, 2019, case № SIP-391/2019

[3] Ruling of the Intellectual Property Court, November 06, 2019, case № SIP-391/2019


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