Happy hour is over: Patent Office cancels three BLACK RUSSIAN trademarks

Facts

After a prolonged and heated discussion, the Patent Office cancelled three trademarks comprising Latin and Cyrillic characters (Figures 1 to 3).

A detailed investigation showed that the term 'Black Russian' (in Russian, 'Черный русский') had been in general use before the trademarks' priority dates to denote a special kind of product in Class 33 – more specifically, a type of cocktail. The Patent Office held that, as the designation had long been used by consumers and specialists, it therefore could not individualise the goods, which is a trademark's main function. The Patent Office's decision was based on a 2015 IP Court opinion, which stated that designations representing the names of varieties of goods may be recognised as characterising the goods as understood by Article 1483(1) of the Civil Code only if it is possible for consumers to establish an associative connection. Under Article 1483(1), the registration of trademarks that have come into general use to denote a certain kind of goods is prohibited.

Decision

The Patent Office held that the appeal against the trademarks' registration conformed to the IP Court's opinion. The Bartenders League of Russia stated that the Black Russian cocktail has existed since 1949 and is included in the International Bartenders Association's list of official cocktails. The cocktail is considered a classic, which forms part of the obligatory education of bar staff and features on the menu of many bars and restaurants.

The league is competent in passing judgement on this subject, as it:

• comprises over 50,000 people and over 5,000 companies in the hospitality industry;
• organises seminars, competitions, cocktail championships and other events throughout Russia and abroad; and
• maintains a website which provides comprehensive information on the hospitality industry.

Further, a public poll conducted by the Federal Institute of Sociology of the Russian Academy of Science showed that 97% of the respondents (people with professional knowledge of the subject) believed that the term 'Black Russian' signifies a specific recipe.

The granting of an exclusive right over the designation 'Black Russian' to a single party would put it in a position above other economic entities, which is not allowed. If another party prepared a cocktail according to the same recipe, it would not be able to name it a Black Russian without infringing the trademark owner's rights. Instead, it would have to give it a different name and thus mislead consumers.

As a result of the above, all three trademarks were cancelled.