How trademarks may collide with other IP subject matters

Part IV of the Russian Civil Code regulates IP subject matters, which are defined as results of intellectual activities and means of individualization.

The Civil Code ensures that intellectual property is protected by law, and provides the explicit list of the results of intellectual activities and means of individualization, which may be protected as such: scientific, literary and artistic works; programs for computers (computer programs); databases; performances; sound recordings; broadcasting and cable radio and television programs (the transmissions of broadcasting or cable organizations); inventions; utility models; industrial designs; breeding achievements; integrated circuit layoutdesigns (topography); know-how; company names; trademarks and service marks; the appellation of the origin of goods; commercial names.

Soon, the list of IP matters will be extended – “geographical indications” are about to break through. Being, in a way, similar to the appellations of origin of goods, geographical indications seem to be somewhat less complicated in terms of their properties and regulations thereof. The Federal Law introducing changes to Part IV of the Russian Civil Code in connection with the new IP object is expected to come into force in Summer 2020.

Geographical indications will be included in the section of IP objects, which is known as means of individualization. This section comprises company names, commercial names, the appellations of origin of goods and trademarks and service marks.

The individualizing nature of trademarks comes from their definition – a designation serving for individualizing goods of legal entities or individual entrepreneurs. Any protectable word, design, slogan, sound, symbol, etc. could serve as a trademark that identifies goods or services.

In Russia, a designation filed for registration as a trademark undergoes substantive examination, during which the compliance of the applied designation with the requirements set out in the Civil Code will be verified and the priority of the trademark shall be established.

The Russian Civil Code provides grounds for refusing state registration of a trademark, and here we come across the possible collisions a trademark may face in relation to other IP subject matters, which we will touch upon in this article.

Trademark vs appellation of origin of goods

The Civil Code states that no trademark registration shall be granted to any designations (applied for any goods) identical or similar to the extent of confusion with an appellation of origin of goods.

An appellation of origin of goods is a designation being, or containing, a contemporary or historical, official or unofficial, full or abbreviated name of a country, urban or rural inhabited settlement, locality or another geographic object, and also a designation which is derivative from such a name and which has become recognized as the result of being used in respect of goods whose special properties are exclusively or predominantly defined by the natural conditions and/or human factors typical of the given geographic object.

In contrast to a trademark, which serves in trade to distinguish goods and services of various producers (and a holder of a trademark has exclusive right to use the trademark and dispose of this right), an appellation of origin may be used by different manufacturers who make goods having the same special properties within the boundary of the same geographic object. Disposing of an exclusive right to an appellation of origin is prohibited by law.

At the same time, an appellation of origin may be included in a trademark as a non-protectable element if the trademark is filed in the name of the same person, who is entitled to use the appellation of origin, and the application covers the same goods for which the appellation of origin is granted. In other cases, should the designation be considered identical or similar to the extent of confusion to the appellation of origin, the trademark application will be refused registration.

In practice, collisions between trademarks and appellations of origin are quite rare. This may be preconditioned by the fact that currently there are only 212 registered appellations of origin.

However, such cases exist. Application for designation СТАРОРУСЬСКАЯ (OLD RUSSIAN) filed for goods in Classes 29, 32 and 33 was refused registration. Among other grounds for refusal, the examiner cited appellation of origin РУССКАЯ ВОДКА (RUSSIAN VODKA) registered for “vodka”.

The IP Court upheld the position of the Russian PTO on similarity of the applied designation and the registered appellation of origin. The IP Court specified that while element ВОДКА (VODKA) is a name of a type of goods, for which appellation of origin РУССКАЯ ВОДКА (RUSSIAN VODKA) is registered, the individualizing element РУССКАЯ (RUSSIAN) is similar to the extent of confusion with applied designation СТАРОРУСЬСКАЯ (OLD RUSSIAN).

Registration of designation СТАРОРУСЬСКАЯ (OLD RUSSIAN) was refused for all goods, and here it should be additionally noted that similarity of goods is not viewed when it comes to the collision of a trademark and an appellation of origin, as registration of a designation identical or similar to the extent of confusion with an appellation of origin is prohibited for all goods.

Is there any way to eliminate a risk of a conflict between a trademark and an appellation of origin of goods? To some extent, it may be possible to forecast such a conflict by way of conducting clearance search before filing a trademark application, but a search does not guarantee subsequent straightforward registration procedure, since search results capture the present moment, while the same or similar appellation of origin of goods may obtain protection in future.

Trademark vs company name

A legal entity being a commercial organization operates under its company name. It is not only a right of a commercial enterprise to have a company name, but also its obligation. The company name is defined in constitutive documents of the commercial organization and the organization owns an exclusive right to use its company name. The exclusive right to a company name comes into effect from the moment of state registration of the legal entity; disposal of an exclusive right to a company name is prohibited.

According to the provisions of the Civil Code trademark registration shall not be granted for similar goods to designations identical or similar to the extent of confusion to a company name, which is protected in the Russian Federation and to which rights owned by other persons had emerged in the Russian Federation prior to the priority date of the trademark being registered.

Though the Russian Civil Code contains the above provision for refusing state registration of a designation applied to be registered as a trademark, the substantive examination of a designation is not carried out in connection with determining its similarity to company names with earlier seniority. Thus, it comes that legal actions on the basis of prior similar company name may be taken in respect of a registered trademark only.

Alternatively, at time of examination of a designation, any person may file an observation letter with the Russian PTO, in which they may express their concern with a possible registration of a mark being identical or similar to the extent of confusion with the company name. In such a case a possible rejection may be based on misleading ground. This is partially due to the fact that the refusal may not be issued on the ground other than that foreseen by the law (as mentioned above the examiner does not check similarity of the applied designation and prior company names), but also because the prohibition of registering a trademark similar to a company name with earlier seniority should be understood as an instrument to prevent confusion among the consumers, which may occur in case of real use of the company name in connection with the goods and/or services for which the mark was filed.

The same misleading issue should be true for invalidating a registered trademark in full or in part within the whole term of its validity on the basis of prior company name. A mere existence of identical or similar company name does not provide a good basis for invalidation of a trademark. The possibility of confusion of the customers seems to be more reliable ground and for this the company name should be known by the consumers with respect to the goods and/or services similar to those of a challenged mark on the filing date of this mark.

In terms of enforcement possibilities, a complex protection, including obtaining a trademark registration for a distinctive part of a company name might be recommended.

This particularly concerns company names of foreign entities, which are protected in Russia under the provisions of the Paris Convention, to which Russia is a party. It might be quite complicated for a company to prevent registration or succeed in invalidation of a trademark registration, which is identical or confusingly similar to the company name of a legal entity existing in another country. In this case having a trademark registered may be a solid ground to rely upon in enforcement procedures.

Besides, reverse aspect in connection with a company name which should be kept in mind is that not only a trademark may be invalidated on the basis of prior company name, but use of the company name may infringe prior trademark rights. This may come when a company name contains distinctive part, which is regarded identical or similar to the extent of confusion to a registered trademark. A possible measure, which may be taken to exclude such probability is conducting a clearance check among registered trademarks before adopting a company name.

Though rights to a company name provide certain room for challenging a trademark, it seems that registration of a trademark, which represents the distinctive part of a company name, gives stronger protection and more possibilities for enforcing the right.

Trademark vs Industrial design

Intellectual rights to industrial designs lie within the segment of patent rights and these are the only patent rights which may obviously collide with trademarks.

The Russian Civil Code states that words, images, three-dimensional and other designations or combinations thereof may be registered as trademarks.

Naturally, creation of unique graphics of a designation, product package or form, which may serve for distinguishing goods or services of diverse manufacturers, requires artistic taste and imagination.

And that is where we come to the line separating certain kinds of trademarks from industrial designs, since these are the results of intellectual activities in the area of artistic design that are recognized as objects of patent rights for industrial designs.

According to the provisions of the Civil Code, an industrial design is a solution of the appearance of an article of industrial or handicraft production.

The possibility of conflicts between trademarks and industrial designs originates from artistic features of both objects.

An industrial design enjoys legal protection if it is novel and original in terms of its significant features. The significant features of an industrial design are the features determining the aesthetic and/or ergonomic details of the appearance of an article, including the form, configuration, decoration and color pattern. Establishing novelty and originality is a crucial factor for obtaining rights for an industrial design, and while criterion for novelty is typical for patents, criterion for originality may be compared to determining similarity of trademarks, which is carried out on the basis of phonetic, visual and semantic criteria considered separately or in different combinations. Thus, it seems logical that when determining novelty and originality of an industrial design, not only applications with earlier priority for inventions, utility models and industrial designs are considered, but also applications for trademarks and service marks are taken into account.

The other aspect which provides for a collision of the viewed intellectual property objects is misleading.

It is not only that the Civil Code provides that trademark registration shall not be granted to designations identical or similar to the extent of confusion to an industrial design, in respect of which rights had emerged prior to the priority date of the trademark being registered, but it also that the Code forbids the granting of legal protection as an industrial design to solutions that could mislead the consumer, especially solutions identical to trademarks or designations applied to be registered as such, or producing the same general impression, or including these objects, if the rights to the specified objects arose earlier than the priority date of the industrial design.

A good and simple example of a misleading objection could be the citation of a trademark registered for a label as a bar to granting protection to an industrial design applied for the appearance of a label in the name of another owner.

Reviewing possibilities of collision of a trademark with other IP subject matters, it seems that various aspects should be considered. It might be that trademarks are at the cutting edge of the list of the results of intellectual activities and means of individualization when it comes to an average consumer being the first thing, which attracts attention of a customer. However, apart from trademarks there is a huge segment of intellectual property rights and in order to avoid possible conflicts between them, each IP matter should be taken into account when protection for a trademark is sought. indications will be included in the section of IP objects, which is known as means of individualization. ”

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