2014 LESI Annual Conference Trademark protection strategies in Russia Alexey Kratiuk Partner Trademark attorney Gorodissky & Partners Russia Trademarks in Russia: definition and types  Trademark is a sign capable of distinguishing goods and services of one undertaking from those of another  Verbal, pictorial, three-dimensional, and OTHER DESIGNATIONS or their combinations may be registered as trademarks  A trademark may be registered in any colour or colour combination Russia is a first to file country  First filed, first registered first served  No prior use rights are recognized  “first to file system” makes it very important and absolutely necessary to get a trademark registered for the trademark protection  In case of collision of trademark rights the predating right has advantage Different ways to obtain trademark rights in Russia National Registration International Registration designating Russia (Madrid Agreement / Protocol) Trademark duly recognized Well‐known in Russia Trademark Application  One application should relate to one trademark only  A single application may be filed in respect of goods and services in several Classes  No evidence of use of a trademark or intention of its use are necessary before filing an application with the Russian PTO National Trademark Applications to be filed with the Russian PTO  Class heading(s) or/and list of specific goods included in a class/classes may be covered by the application  Class heading does not cover all the goods listed in this Class  Word / design / label etc. – preferable to file in all versions to get broader coverage or as intended to be used Trademarks in Cyrillic script and black&white  Trademarks are protected the same way they are registered  TM Registration does not confer exclusive right to use this trademark in any color or script (protection is limited to the mark in the claimed color and script and similar thereto)  Trademark registration in black&white is better enforceable as compared with that of color version  Protection for the Cyrillic equivalent is recommended in case the trademark is intended to be used in Cyr. and/or to obtain wider protection from the point of view of potential infringement Trademark Application Grounds for Rejection Absolute Grounds Relative Grounds Absolute grounds for rejection  Lack of distinctiveness  Misleading and capability of confusing  Confusing similarity to or identity with state symbols and marks  Reproduction of full or abbreviated names of international or intergovernmental organizations or their symbols  Reproduction of the official names or images of the most valuable objects of Russia’s and worldwide cultural heritage Lack in distinctiveness (the most typical examples)  Signs consisting of consonants, simple geometric figures, their combinations unless these have completely new level of perception XZP R2C5  Designations that denote kind, quality, quantity, properties, application, value of goods and the place and time of their manufacture or sale SUPER SINCE 1875 BEER Trademarks which merit registration on absolute grounds Marks which are not inherently registrable Marks that are entitled to protection Acquired distinctiveness Acquired distinctiveness 1. 2. 3. 4. 5. 6. Evidence of extensive use in Russia: Results of an opinion poll Documents confirming supplies of goods/providing services in Russia Information about volumes of sales, territory of sales, amount of consumers Agreements with Russian companies/customers Advertising and promotional materials etc. TDK JVC BMW Absolute grounds for rejection (typical examples of misleading)  Misleading or a capability of confusing in respect of goods or their manufacturer: – – A label containing the word “beer” cannot be registered for Class 33 goods “Red Square” in the name of a Japanese company Exceptions: fanciful character  Santa Fe / Tucson / Veracruz in the name of a Korean company Other grounds for rejection  Identity or confusing similarity to the prior trademarks (both registrations or applications)  Identity or confusing similarity to well-known marks  Identity or confusing similarity to third parties’ neighboring objects (industrial design, appellation of origin , company name, commercial designation) Refusal on relative grounds: possible ways of overcoming Letters of consent:  A similar trademark may be registered with a consent from the owner of the prior rights  No letters of consent for identical marks are accepted  Letters of consent from related/subsidiary companies – relationship should be indicated Non-Traditional Marks  Position marks  3D marks  Color marks etc. Color Marks  Color per se is considered to be lacking in distinctiveness  Possibility of registration with acquired distinctiveness  The intensive use in Russia before the filing date is of utmost importance Registered in Russia Certificate of Registration No. 310048 Owner: Reckitt Benckiser N.V. Class 03: Cleaning preparations (pantone #226C) IR # 664727 Owner: Andreas Stihl AG & Co. KG Classes 07 and 08: saws, trimmers Orange - Pantone 164c; gray Pantone 428u. Position marks International registration No. 1031242 Owner Christian LOUBOUTIN Class 25: ladies footwear The mark consists of the coulour red (Pantone No. 18.1663TP) applied to the sole of a shoe as shown in the representation (the outline of the shoe is not part of the mark but is intended only to show the placement of the mark). The mark was provisionally refused protection based on lack of distinctiveness. The Examiner considered that any color or color combination in footwear cannot be monopolized and should be free for use by various traders. The applicant managed to overcome the refusal by arguing that he was seeking protection for the color red in relation to the shoe sole only, but not the whole shoe and that this design solution (red sole) was invented by him and made his shoes very distinctive, eye catching and recognizable among consumers all over the world and in Russia. The applicant further argued that the red color of the sole was not functional and constituted an element of design only. In support of his claims the applicant relied upon evidence of fame of his shoes with red sole (multiple publications in media, advertising materials, opinion poll results). Questions and problems  Scope of protection  Distinctiveness of the mark and capability to distinguish the owner’s goods from those of other parties  Risk to have a trademark opposed on the ground of lack of distinctiveness  Insufficient practice of consideration of such issues 3D marks  These basically include shapes of products or their containers.  The main requirement is that the shape must not be functional.  Functional shapes are those which are exclusively or predominantly dictated by the need to perform a particular function.  3D realistic depictions of articles may not be registered for those articles as lacking distinctive character. 3D marks. Examples Russian application No.2010724156 for 3D mark featuring the shape of an iPad was refused as the shape of electronic communication device was recognized traditional for such goods. The shape itself as well as its essential features (rectangular display, control button and slots) were deemed purely functional. Besides, thickness of the device and the presence of smooth transition of the back side of the device from flat shape into flattened ellipse were not visible in the claimed designation. IR No.1045962 for 3D mark representing a shape of mechanical puzzle toy (Rubik’s cube) The mark was provisionally refused as it was considered to be a traditional 3D model of a puzzle toy of a specific type and, hence, descriptive of a specific type of goods. The Board totally reversed the refusal decision because the mark was quite distinctive due to its unique design and composition solutions that were invented in 1977 and have been known since then as those attributed to Rubik’s cube. The Board took into consideration the fact that there exist other mechanical puzzle toys on the market with different design offered by other traders what makes the proposed shape to be non-traditional. General recommendations  Obtaining trademark rights in Russia in due course  Use the trademark in accordance with all formal requirements of the Russian legislation / compiling evidence / recording license agreements  Monitoring trademark portfolio: entering the necessary amendments to the certificates of registration, making new filings etc.  Conducting searches / watching new filings by third parties / filing oppositions or cancellation actions THANK YOU FOR YOUR ATTENTION! Alexey Kratiuk Partner Trademark attorney Gorodissky & Partners B. Spasskaya Str., 25, bldg 3, Moscow 129090, Russia Phone: 7 (495) 937-6116 / 6109, Fax: 7 (495) 937-6104 / 6123 E-mail: [email protected], http://www.gorodissky.com