Russia: Geographical names in trademarks

The use of geographical names in trademarks is a very common practice among manufacturers or companies providing services, due to the undoubted attractiveness of such trademarks for consumers. However, when including a geographical name in a trademark, the specifics of examination of such names must be considered to be sure that the trademark will receive legal protection.

The main provisions, governing the protectability of designations representing or containing geographical names, are contained in Part IV of the Russian Civil Code (in force from January 1, 2008). According to the provisions of item 1, Art. 1483, the designations may not be registered as trademarks, which lack distinctiveness or consist only of the elements characterizing the goods, including pointing to the place of their manufacture or sale.

In addition, the provisions of item 3(1) of Article 1483 of the Civil Code, establish the prohibition on a registration as trademarks of the designations that constitute or contain elements that are false or capable of misleading consumers regarding the product or its manufacturer.

Recommendations for examination

The Russian Patent and Trademark Office (PTO) approved the Recommendations on specific issues of the examination of applied designations (the Order of the Russian PTO dated March 23, 2001), which include provisions relating to the expertise of the designations consisting of geographical names or including them, among other things, specifics of examining of such designations, in terms of their falsity or capacity to mislead consumers. The provisions of these Recommendations are applied in practice both by the PTO and the courts.

Many geographical names, but not all, can be interpreted as indications to the place of production/sale of goods and/or of the manufacturer's location; that is, they can act as descriptive designations or elements.

Geographical names can be divided among three groups, depending upon the perception of usage:

1. Geographical names which are not perceived as indications to the place of production/sale of goods and/or of the manufacturer's location. Such geographical names are perceived as fanciful almost in respect of any goods (e.g., "NORTH POLE" for the goods "candies" or "GULFSTREAM" for the product "filters").
2. Geographical names, which in respect of some goods are perceived as fanciful, and in relation to others as referring to the place of production/sale of goods and/or the manufacturer's location (e.g., "Baikal" in respect of goods "soft drinks" is fantasy, though, the same name may be perceived as an indication to the place of production/sale of goods and/or of the manufacturer's location, if it is claimed in relation to the goods "live fish").
3. Geographical names which are perceived as indications to the place of production/sale of goods and/or of the manufacturer's location. Among them, first, and foremost, the names of cities.

Accordingly, in the examination of a trademark constituting a geographical name or including it as an element, first of all, it will be analyzed to see whether the claimed designation would be perceived by consumers as an indication to the place of production/sale of goods and the manufacturer's location in relation to the goods specified in the application. If the Examiner finds that the claimed geographical name may be perceived in such a way, further analysis will depend on the specific goods the legal protection for a trademark is sought.

Namely, the geographic trademarks may be claimed in respect of:

1. goods, the characteristics of which arc associated with the geographical origin. In this case, the geographical name indicates to the place of production/sale of goods, the location of the manufacturer and the geographical origin of goods; or
2. goods, the characteristics of which are not associated with the geographical origin. In this case, the geographical name indicates only to the place of production/sale of goods and/or location of the manufacturer.

The first group includes products for which quality, reputation and other characteristics are mainly dependent on their geographical origin or on the natural conditions within the region in which they are produced (for example, Moroccan tangerine, Scotch whiskey).

According to the approach of the Russian PTO, it is impractical to provide trademark protection to a designation indicating to the geographical origin of the claimed goods, even if the applicant provides evidence showing that the given designation is perceived by the consumers as the trademark of the concrete manufacturer. This approach is explained by the fact that the geographical name indicating the geographical origin of goods should be free for use by different manufacturers, producing the goods, quality, reputation and other characteristics of which are associated with the specific features of the place of manufacture of goods.

Geographical names, claimed in respect of goods for which characteristics are not associated with the geographical origin, can in turn be divided into two groups depending on the amount of information contained in the sources of information and relating to these names:

1. known geographical names that may be perceived as the location of the manufacturer; or
2. the geographical names which are little-known and therefore unlikely to be perceived as the location of the manufacturer.

Provided that the information sources contain knowledge about a geographical name - the volume of such information is not specified - then it will not be granted legal protection, except in cases where the applicant provides evidence of acquired distinctiveness (for example, such evidence could be accepted by the PTO in case of registration of the geographical name "MOSCOW" as a trademark for "periodicals", as in the name of the publishing house of the magazine "Moscow" published since 1957).

If the sources of information do not contain any knowledge about the geographical name or such details are scarce and/or contained only in rare special editions, this geographical name can be considered as practically unknown to an average consumer and, therefore, it may be granted trademark protection.

Furthermore a designation representing a geographical name or including it as an element can be considered as being false or capable of misleading consumers. Thus, according to the Rules for drafting, filing and considering an application for registration of a trademark and service mark (approved by the Order of the RUPTO of March 5. 2003), such designations arc defined, in particular, as designations generating in the consumer's mind a certain idea of the quality of the product, its manufacturer or place of origin, which is not true. Furthermore, the designation is recognized to be false or misleading, if at least one of its elements is false or misleading. Accordingly, if the trademark includes as an element a geographical name that is recognized by the expertise as being false or misleading, so the whole trademark will be denied registration.

A geographical name is not recognized as false if it is the real name of the place of production/sale of goods and/or the manufacturer's location. Conversely, if the geographical name is not the real place of production/sale of goods and/or the manufacturer's location, but it can be so interpreted, it can be found to be false.

According to the approach set out in the Recommendations of the Russian PTO, a claimed designation, consisting of a false geographical name or including it, may be given legal protection in cases where the applicant submits materials confirming that the consumers perceived the claimed designation before the filing date as the trademark of the manufacturer.

In order to understand whether the claimed designation (or its element) is false or capable to mislead it is advisable to answer the following questions:

• Whether the element describes the goods/services erroneously?
• Whether the element can cause the consumer's associative representation of the goods/services that can mislead the consumer?

In turn, if the element is found to be false or misleading, it is advisable to evaluate:

• Whether the false designations are plausible?
• Whether the associative representations are plausible?
• Whether the consumer would believe in the false designations and associative representations?

If, in the opinion of the Examiner, a designation can be attributed to be false or misleading, but unfeasible, such designation is not appropriate to be recognized as false or misleading.

The LONDON MALL case

A recent case relating to the trademark LONDON MALL shows the way in which the above provisions are applied in practice by the Patent Office and the courts.

For registration as a trademark the designation was claimed with the verbal element LONDON MALL for services of Classes 35 - 42 in the name of the company from Cyprus.

One of grounds for refusal to register was the Examiner's conclusion that the claimed designation could mislead the consumers as to the iocation of the person providing the claimed services, as it includes the geographical name LONDON while the applicant is a company from Cyprus.

The applicant challenged the refusal at the Chamber of Patent Disputes of the Russian PTO, referring in particular to the fact that the designation LONDON MALL cannot be perceived as an indication of the place of supply of services or location of the service provider, and is a fanciful one in relation to claimed services and, in addition, the shopping center of the applicant with the claimed name had already operated for a certain time in St. Petersburg and had become quite famous.

The Chamber did not agree with the arguments and supported the position of the Examiner, indicating, in particular, the fact that the verbal element LONDON, which occupies a dominant position in a designation, is associated unambiguously for the Russian consumer with the geographical name of the capital of the United Kingdom of Great Britain and Northern Ireland. Therefore, in respect of the applicant, located in Cyprus, a trademark with this geographical name would mislead consumers regarding the person rendering services and their location.

The Court of IP's ruling

The applicant appealed to the Court for intellectual property rights (operating in Russia from July 3, 2013), and insisted that it is necessary to distinguish between those geographical names which can be perceived by consumers as an indication of the location of the person providing services from those which cannot be perceived so. In this connection, throughout the examination, it was necessary to focus on whether London is known as the place that provides those services which were specified in the application.

The Russian PTO in response to the appeal additionally pointed to the fact that the word MALL has one of the meanings corresponding to the "street in central London, leading from Trafalgar Square to Buckingham Palace", which reinforces the false associations caused by the designation LONDON MALL overall.

The Court, however, found that the conclusions made by the Russian PTO were unfounded. The Court agreed that the element LONDON may cause the consumer a false association of the location of the service provider, given that the applicant is located in Cyprus. However, this false association is not plausible, and therefore the majority of consumers who have some experience will not believe in the indication of the geographical name as the location of the person rendering services, which gives it the designation of a fantasy character.

The Russian PTO's argument on the geographical sense of the word MALL was rejected by the Court, such as the semantic meaning can be known only to a small number of Russian consumers with knowledge of the history of London. When assessing the potential to mislead, it should be based on the perception usual for an average-Russian consumer.

The Court found that the combination LONDON MALL will most likely be perceived by Russian consumers in its common usage, the meaning of "London alley for walks", that with respect to the services applied for is fantasy and, therefore, is not capable of misleading consumers as to the location of the service provider.

Taking into account the specific character of geographic trademarks, producers and companies providing services should take particular care of the choice of geographical names as trademarks or elements thereof. They should pay attention to their possible perception by Russian consumers, consider the presence of the information about these geographical names in public sources, as well as take into account the above approaches of the Russian PTO and Courts as to geographic trademarks.