On 25 July 2024, the eleventh session of the Intellectual Property Consultation Point for Exporters is held
A Belarusian company, the owner of a Belarusian combined trade mark registered in respect of fast food services, was finally refused registration of the same designation in the Russian Federation due to the existence of a recent but earlier registration of a confusingly similar senior trade mark of a Russian individual entrepreneur. The head of a Belarusian company intending to develop the same business in Russia asked the consulting center what could be done in this situation.
The answer was based on the norms of Russian trademark law.
In accordance with paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, designations that are identical or confusingly similar to the trademarks of other persons protected in the Russian Federation in respect of homogeneous goods and services and having earlier priority cannot be registered as trademarks.
Since the similarity to the degree of confusion (phonetic and semantic identity and graphic similarity) between the designation claimed by the Belarusian company and the Russian trademark did not cause any doubts for the Belarusian applicant, the consultant decided not to dwell on the ways of challenging the preliminary refusal of ROSPATENT, but focused on the reason for registration of the similar designation in Russia as a trademark and the possibility of its early termination.
According to the words of the head of the Belarusian company himself, he did not find any information about the use of the registered trade mark by the Russian individual entrepreneur in the public domain.
In accordance with paragraph 1 of Article 1486 of the Civil Code of the Russian Federation, the legal protection of a trademark may be terminated prematurely in respect of all goods or part of goods and services for individualization of which the trademark is registered, due to non-use of the trademark continuously for any three years after its state registration. An application for early termination of legal protection of a trademark due to its non-use may be filed by an interested party with the Chamber of Patent Disputes after the expiration of the said three years, provided that the trademark has not been used up to the time of filing such an application.
The same article of the Civil Code of the Russian Federation establishes that the use of a trademark is its use by the right holder or by a person to whom such right is granted on the basis of a license agreement, or by another person who uses the trademark under the control of the right holder. The burden of proving the use of the trademark lies on the right holder.
Thus, the Belarusian applicant has the possibility to obtain its own trademark protection in the Russian Federation in case of non-use of a previously registered confusingly similar older trademark by a Russian individual entrepreneur.
In this case, the Belarusian applicant should decide what to do with its application: 1. Challenge the final decision of the examination by filing a motivated opposition with the Chamber for Patent Disputes and further application to the Court for Intellectual Rights. 2. To submit as part of the opposition to the Chamber of Patent Disputes a letter of consent of the owner of the similar senior trademark, which is unlikely due to the motives for registration of the unused trade mark. 3. To ‘resubmit’ the application again in order to be ‘in time’ for the preliminary refusal decision with the filing of an application to the Chamber of Patent Disputes for early termination of legal protection of the conflicting trademark due to its non-use.
For reference: In the Russian Federation, the notification of the results of the examination of the compliance of the applied-for designation with the requirements of Article 1477 and paragraphs 1-7 of Article 1483 of the Civil Code of the Russian Federation with the proposal to submit its arguments regarding the reasons given in the notification is equated to a preliminary refusal to grant registration to a trademark, as adopted in the Belarusian legislation on the examination of trademarks.
As for the Russian arguments regarding the reasons given in the notification, they are equal to a request for repeated examination in the Republic of Belarus. The only difference is that the arguments are not accompanied by a patent fee, while the Belarusian request for a repeated examination of the claimed designation is possible only upon payment of a patent fee in the amount of 10 basic units.
