Modernisation of the IPR System in the Russian Federation P4M-IP

Transcription

1 Modernisation of the IPR System in the Russian Federation P4M-IP Guidelines for Examination of Trade Mark Applications

2 Project Component Number: C2 Activity Cluster: Key Activity Code: Title: Trade Mark Examination Guidelines Beneficiary/ies: MANAGEMENT AND STAFF ROSPATENT Subject(s): Guidelines for Examination of Trade Mark Applications Proposed Location(s): ROSPATENT/FIPS, Russia Timing: August 2013 September 2015 SUMMARY This document proposes draft Russian Guidelines on Examination of Applications for Trade Marks elaborated by the Team of Rospatent and FIPS experts in collaboration with Mr Gregor Schneider, OHIM s expert. The contents of this document do not necessarily reflect the position or opinion of the European Union. 2

3 Appendix to Rospatent Order of 201. GUIDELINES FOR EXAMINATION OF APPLICATIONS FOR TRADE MARKS 3

4 INTRODUCTION... 8 SECTION I EXAMINATION OF THE LIST OF GOODS AND SERVICES General The Nice Classification (International Classification of Goods and Services) Recommendations on the Drafting of the List of Goods and Services Clarity and Precision of Terms General Principles of Indicating Goods and Services Use of expressions (e.g. namely, in particular ) to determine the scope of the list of goods/services Punctuation Inclusion of abbreviations and acronyms in lists of goods and services Terms and expressions lacking clarity and precision General indications of the class headings of the Nice Classification which are deemed not to be sufficiently clear and precise Vague terms, not used in the Nice Classification The claim for all goods/services in this class Trade marks in a list of goods/services Inclusion of the terms parts and fittings; components and accessories in lists of goods and services Use of the terms and the like; ancillary; associated goods; etc. and related goods Amendments to the List of Goods and Services. Added Classes Clarifications on the Classification of Certain Goods and Services SECTION II EXAMINATION OF CONFORMITY OF THE CLAIMED SIGN WITH THE REQUIREMENTS OF STATE REGISTRATION Examination under Article 1477, Civil Code Examination under Article 1483, Par. 1, Civil Code Signs Lacking Distinctiveness Single letters Combinations of Letters Numerals Lines, basic geometric figures Combination of lines and basic geometric figures Representations of Goods Distinctive Character of Signs Consisting of 3D Objects Simple Indication of Goods

5 Customary Abbreviations of Organizations, Companies, Industries or their Shortened Names Terms which have become customary for denoting goods of a certain kind (Article 1483, Par. 1, subpar.1) Commonplace Symbols Article 1483, Par.1, subpar Common Terms (Article 1483, par.1, subpar.2) Signs characterizing the goods. General Provisions (Article 1483, par.1, subpar.3) Marks Indicating the Kind of Goods Signs indicating the quality of the product Signs indicating the quantity of the product Signs indicating properties of the goods Signs describing the intended purpose of the product Signs describing the value of the product Signs describing the time of production Signs describing the geographical origin Signs describing the method of production Certain cases under Article 1483, Par. 1, Subpar. 3, Civil Code Signs Consisting of the Product s Shape which Results from the nature of purpose of the product (Subpar.4, Par.1, Article 1483, Civil Code) Inclusion of elements listed in Article 1483, Par.1, into a trade mark as unprotected elements Non-dominant unprotected elements Dominant unprotected elements Examination of signs consisting of a combination of unprotectable elements (Article 1483, par.1.1) Signs which acquired distinctiveness through use Examination of the Applied for Signs under Article 1231, Civil Code (protection of official emblems, names and insignia) Examination under Article 1483, Par. 3, Civil Code Signs consisting of or containing deceptive or misleading elements General Analysis of an applied for mark (and its elements) as to its false or misleading character Marks consisting of or containing false elements Marks consisting of or containing elements liable to mislead the public as to the nature of the product, its properties or quality Marks consisting of or containing elements liable to mislead the public as to the manufacturer Examination of marks (and their elements), containing geographical names

6 Signs which could evoke in the consumers minds some impressions/expectations as to the geographical origin of the goods which do not correspond to reality Examination of signs consisting of or containing elements presented in other than Cyrillic alphabets Conditions which allow to overcome the objections to registration set by Article 1483, par.3, subpar Signs consisting of or containing elements which are contrary to public interests, principles of humanity and morality Marks which are contrary to public interests Marks which are contrary to the principles of humanity and morality Signs which are contrary to both, public interest and principles of humanity and morality Examination as to compliance with the requirements of Article 1483, Par Examination of signs which are identical or similar to the degree of confusion to official names and images of particularly valuable objects of the cultural heritage of the peoples of the Russian Federation or objects of the world cultural or natural heritage Particularly valuable objects of the cultural heritage of the peoples of the Russian Federation Objects of the world cultural or natural heritage Examination of marks identical or confusingly similar to representations of cultural valuables stored in collections, museums and funds Examination as to compliance with the requirements of Article 1483, Par Examination as to compliance with the requirements of Article 1483, Par Assessment of the degree of similarity between the applied for sign and signs found during the search General principles of establishing identity and similarity Comparative analysis of signs Comparison of word signs (а). Phonetic similarity of word signs (б). Graphic similarity of word signs (в). Conceptual similarity of word signs Comparison of figurative and 3d signs Comparison of other signs Comparison of combined signs Assessment of similarity of goods and services International Classification of goods and services (Nice Classification) as a tool for comparing goods and services

7 Definition of goods and services (Terminology) Indication of goods and services Criteria for assessing similarity of goods and services Similarity in the case of use of identical terms and synonyms Practice on the use of general indications of the class headings Similarity in the case of use of non-identical terms The specific similarity factors Relation between different factors Similarity of goods and services and similarity of signs Additional factors affecting the finding of a likelihood of confusion Application of Article 6-quinquies (С), Paris Convention Similarity with a family of trademarks Coexistence of trade marks on the same territory Evidence of actual confusion of trademarks Reputation of the earlier mark Assessment of the actually used altered trade mark Earlier decisions by Rospatent Relevant public and degree of attention Recommendations on the application of provisions of the Civil Code relating to the rightholder s consent to the registration of a similar mark General Requirements to the documents containing consent to registration Recommendations in respect of correspondence and document processing in the event of consent by the proprietor of an identical trade mark Recommendations in respect of correspondence and document processing in the event of the rightholder s request to withdraw his consent Recommendations in respect of correspondence and document processing in the event of consent from the proprietor of a duly recognized well known mark Recommendations in respect of correspondence and document processing in the event of consent of a proprietor of a collective mark General approaches to the possibility of registering the applied for sign on consent from the proprietor of the conflicting mark Examination as to compliance with the requirements of Article 1483, Par Examination as to compliance with the requirements of Article 1483, Par. 9, subpar.3, Civil Code (industrial designs) Examination as to compliance with the requirements of Article 1483, Par. 10 (individualization and industrial designs) Examination of Collective Trademarks

8 Introduction 1. The present Guidelines for Examination of Trade Marks by the Federal Service for Intellectual Property (hereinafter the Guidelines) have been drafted for the purpose of providing methodological guidance during the examination of applications for trade marks in accordance with the following regulatory documents: Part IV of the Civil Code of the Russian Federation of December 18, 2006, Federal Law # 230, with revisions of March 12, 2014, FL #35 (hereinafter referred to as the Code), the Administrative Regulations on the Rendering by the Federal Service for Intellectual Property of Public Services Relating to the Receipt, Registration and Examination of Applications for State Registration of Trade Marks and Service Marks and on the Issue of Certificates and Duplicates thereof, approved by the order of the Ministry of Education and Science of the Russian Federation #..., registered by the Ministry of Justice of the Russian Federation #... (hereinafter the Regulations, in force as of., Rules on Drafting, Filing and Examining Documents which Serve as Basis for Executing the Legally Valid Action of State Registration of Trade Marks, as approved by Order #... (hereinafter the Rules), Requirements to Documents Contained in an Application for State Registration of a Trade Mark and attached thereto, as approved by the Order (hereinafter the Requirements). The purpose of the Guidelines is to ensure a consistent approach to the application of the Code, the Regulations, the Rules and the Requirements during examination. The provisions of these Guidelines are of an advisory nature. 2. The following documents were used when drafting these Guidelines: - Methodological Recommendations on the Recognition of Applied for Signs and Trade Marks as Having Become Customary for Certain Goods or Services, approved by Rospatent Order of March 27, 1997, #26; - Recommendations on Certain Issues Relating to the Examination of Applied for Marks, approved by Rospatent Order of March 23, 2001, #26; 8

9 - Recommendations on Certain Issues Relating to the Examination of Signs Consisting of Labels or Printed Packaging, approved by Rospatent Order of November 31, 2009, #170; - Recommendations on the Application of Provisions of the Civil Code of the Russian Federation Relating to the Rightholder s Consent to the Registration of a Similar Trade Mark, approved by Rospatent Order of December 30, 2009, #190; - Methodological Recommendations on the Examination of Claimed Signs as to Identity or Similarity, approved by Rospatent Order of December 31, 2009, #197; - Methodological Recommendations on the Assessment of Similarity of Goods or Services During the Examination of Applications for State Registration of Trade Marks, approved by Rospatent Order of December 31, 2009, #198; - Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks (OHIM TM Guidelines). The Guidelines are also based on the examination practice that has been established in the Federal Institute for Industrial Property (FIPS) and in the Patents Disputes Chamber. 3. These Guidelines consist of two sections: Section I Guidelines on the Examination of the List of Goods and Services, Section II Guidelines on the Examination of Compliance of the Claimed Sign with the Requirements for State Registration. Section I deals with the examination of the list of the claimed goods and services, in particular, it checks whether the terms used allow to identify the goods and services in accordance with the Nice Classification. Section II contains recommendations on assessing the protectability of the claimed sign, namely: whether it complies with the requirements provided under Article 1477 CCRF, para.1-7, and Article 1483, subpar. 3 par.9 (in respect of designs) and par.10 (in respect of means of individualization and designs). Section II deals, in particular, with the examination of claimed marks which: - are not distinctive, 9

10 - have become customary in denoting goods of a certain type; - consist of commonplace symbols, terms; - characterize the goods; - represent the shape of the product which is determined exclusively or primarily by the nature or purpose of the products; - contain unprotectable elements; - contain, reproduce or imitate official symbols, names or insignia; - consist of or contain elements which are misleading or may confuse the consumer as to the product or its manufacturer; - consist of or contain elements which are contrary to public interests, principles of humanity and morality. Furthermore, Section II deals with: - assessment of distinctiveness acquired through use; - assessment of degree of similarity of trade marks, of similarity of goods or services; - Procedures for examining collective marks. Section II also sets out recommendations on the application of Para. 4, 5, 7, 9 (in respect of designs) and Par.10 (in respect of means of individualization and designs) of Article 1483, CC RF during the examination of applications. 4. The Guidelines are intended for employees of the Federal Service for Intellectual Property (Ropatent), whose duties cover the granting of legal protection to trade marks, primarily for state examiners on intellectual property. The Guidelines may also be used by applicants, patent specialists, patent attorneys or other representatives of applicants before Rospatent in connection with the examination of trade mark applications. 5. The examiners competence covers the formal examination of trade mark applications, the search on the application, substantive examination, consideration of oppositions or appeals in the Patents Disputes Chamber and drafting of relevant documents, including the search report, queries, notices, conclusions, on the basis of which Rospatent carries out legally valid ( relevant ) actions, including adoption of decisions. Examiners are guided in their work by the Civil Code, Regulations, Rules, Requirements and other normative acts of the Russian Federation, and by the present Guidelines. 10

11 If defects in the presentation of documents do not allow to carry out a substantive examination or to adopt a decision, or if they raise doubts as to the scope of protection in the event of grant of certificate, or infringe upon the rights and legal interests of third parties, the examiners should not leave unnoticed such significant incompliance by the applicant with the requirements set to application documents. At the same time, the comments and suggestions, provided by examiners in their queries, should be constructive and useful, and conclusions presented by them in their notices and opinions should be unbiased. 6. The text of the Guidelines is posted at Rospatent s web site at: The Guidelines may be revised from time to time, depending on amendments made in the Code, the Regulations, the Rules and depending on practical requirements. Any recommendations on improvements to the Guidelines will be taken into account during revision if sent to: Роспатент, Бережковская наб., 30, корп. 1, Москва, Россия, Г-59, ГСП-5, rospatent@rupto.ru 11

12 Section I Examination of the List of Goods and Services 12

13 1. General Article 1483 Par.3 CC RF states that an application for a trade mark must contain a list of goods (services) in respect of which state registration of the trade mark is claimed, which are grouped into classes in accordance with the Nice classification. The list must be worded in such a way as to indicate clearly the nature of the goods and services, and allow each item to be classified in only one class of the Nice Classification. When examining the list of goods and services the Office checks that: - each term used by the applicant to indicate the goods and services identifies a specific good or service of one or another class under the Nice classification; - the goods and services are properly grouped under the Nice classes. If there is a need to correct the wording in the list of goods and services presented by the applicant, the examiners may request the applicant to make the respective clarification. Thus, when examining the list of goods and services the examiner performs the following tasks: - checks that each of the terms, used to indicate the goods and services, is clear and precise; - checks that each term belongs to the proper class; - notifies the applicant of any deficiency; 2. The Nice Classification (International Classification of Goods and Services) The International Classification of Goods and Services used for the registration of trade marks was established by the Nice Agreement on June 15, 1957, at the Nice Diplomatic Conference (hereinafter the Nice Agreement). Eventually, the NCL was revised and amended. More information about the NCL, including its various revisions, may be found on the web sites of WIPO, Rospatent and FIPS. 13

14 The Russian Federation, being a party to the Nice Agreement, uses the NCL as its main classification system. The NCL consists of a List of Classes of goods and services, the Alphabetical List of goods and services and the General Remarks. Each class in the list contains a heading and explanatory notes. The class headings are general indications relating to the field to which, in principle, the goods or services belong. The class heading may be considered as a brief description of the content of the class. For this reason, the class heading may not serve as a replacement of the list of goods, contained in the class. The explanatory notes list the generalized names of the main groups of goods in the class. The explanatory note may also cite some specific goods belonging or not to the class. For example, Class 3 heading runs as follows: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. The explanatory note to Class 3 states, that Class 3 includes mainly cleaning preparations and toilet preparations. Then it goes on to list certain goods that are included in the Class, and certain goods that are not included. According to this explanation Class 3 includes, in particular: deodorants for human beings or for animals; sanitary preparations being toiletries. According to the explanatory note Class 3 does not include, in particular: chemical chimney cleaners (Cl. 1); degreasing preparations for use in manufacturing processes (Cl. 1); deodorants other than for human beings or for animals (Cl. 5); sharpening stones and grindstones (hand tools) (Cl. 8). The alphabetical list allows to classify goods and services with the help of information about their purpose, material or other characteristics. 14

15 For example, using the alphabetical list one can easily establish that table napkins of paper belong to Class 16, whereas table napkins of textile belong to Class 24, and neck scarves 1 belong to Class 25. The general remarks explain what criteria should be applied if a term cannot be classified in accordance with the class headings or alphabetical list. For example, the General Remarks explain that cases adapted to the product they are intended to contain are in principle classified in the same class as the product. 3. Recommendations on the Drafting of the List of Goods and Services 3.1. Clarity and Precision of Terms General Principles of Indicating Goods and Services The purpose of the list of goods and services is to determine the goods and services in respect of which state registration of the TM is sought. The Requirements state in Par. 29, subpar.1, that the goods and services grouped into NCL classes should be indicated in clear terms that allow to identify them. The list of goods and services may not consist only of fields of activities or general names of groups of goods or services to which the good or service belongs (subpar.3, par.29, Requirements). The wording used in the list should clearly identify the goods or services already available on the market or just being introduced onto it and should relate to one of the generic terms used in the NCL in the field to which the goods or services belong. The terms used to identify the goods or services must not be ambiguous. They should be suitable for comparative analysis and should be easily understood by a wide range of users. The names of the goods and services used in the TM application will be interpreted, during examination, within the meaning they have in the Russian Federation. 1 In Russian the same word platky is used for napkins and scarves. 15

16 In accordance with Par.29, subpar. 11, the Requirements, where the name of a good or service may be used in several classes, the following should be further indicated: - in respect of a product its purpose, function, material which it is made of, or its principle of action; - in respect of a service its purpose or field which corresponds to the selected class. Where the list of goods and services contains a product for which there is no term in the NCL, the name (indication) of the product should also contain the generally accepted term for the generic notion (Requirements, Par. 29, subpar.12) Use of expressions (e.g. namely, in particular ) to determine the scope of the list of goods/services The use of the words namely or being is acceptable, but must be understood to be a restriction to the specific goods and services which are listed thereafter. For example, pharmaceutical preparations, namely analgesics in Class 5 means that the application only covers analgesics and not any other type of pharmaceuticals. The expression in particular can also be accepted as it serves to indicate an example of the goods and services which are applied for. For example, pharmaceutical preparations, in particular analgesics means that the application covers any kind of pharmaceuticals, with analgesics being an example. The same interpretation applies to the use of the terms including, including (but not limited to), especially or mainly as in the example pharmaceutical preparations, including analgesics. A term that would normally be considered unclear or imprecise can be made acceptable provided that it is further specified, e.g. by using namely and a list of acceptable terms Punctuation The use of correct punctuation is very important in a list of goods and services. When the goods belong to different types of groups (generically), they are separated by a semi-colon (Requirements, Par.29, subpar.8). 16

17 For example, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder in Class 30 must be interpreted that the terms honey and treacle are independent from the other terms and do not form part of preparations made from The use of commas serves to separate items within a similar category (Requirements, Par.29, subpar.8). For example, flour and preparations made from cereals, bread, pastry and confectionery in Class 30 must be read as that the goods can be or are made from any of those materials. The separation of terms with incorrect punctuation can lead to changes in meaning and incorrect classification. For example retail services in relation to clothing; footwear; headgear in Class 35. The use of a semi-colon renders the terms footwear and headgear as goods, which are separate and not included in the retail services. In such cases, the examiner will separate the terms by commas and inform the applicant. The use of oblique strokes is acceptable in lists of goods and services; the most common use is in the phrase and/or, meaning that both goods/services referred to fall in the same class. For example: Services in the field of chemistry/biochemistry Inclusion of abbreviations and acronyms in lists of goods and services Abbreviations within lists of goods and services should be accepted with caution. Trade marks could have an indefinite life, and the interpretation of an abbreviation could vary over time. However, provided that an abbreviation has only one meaning in relation to the class of goods or services applied for, it can be allowed. The very well-known examples CD-ROMs and DVDs are acceptable in Class 9. If the abbreviation is well known in the field of activity it will be acceptable, however the examiner should carry out a search for the abbreviation in, for example, special dictionaries relating to specific fields of art to determine whether it needs to be expanded into words. Acronyms can be accepted in a list of goods or services as long as they are comprehensible and appropriate to the class applied for. 17

18 3.2. Terms and expressions lacking clarity and precision General indications of the class headings of the Nice Classification which are deemed not to be sufficiently clear and precise The following headings of the NCL are considered to lack the clarity and precision to specify the scope of protection that they would give, and consequently cannot be accepted without further specification. Class 6 Goods of common metal not included in other classes Class 7 Machines and machine tools Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes Class 16 Paper, cardboard and goods made from these materials [paper and cardboard], not included in other classes Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes Class 18 Leather and imitations of leather, and goods made of these materials [leather and imitations of leather] and not included in other classes Class 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics Class 37 Repair Class 37 Installation services Class 40 Treatment of materials Class 45 Personal and social services rendered by others to meet the needs of individuals These terms do not provide a clear indication of what goods or services are covered. The applicant will be asked to specify the terms which raise doubt as to which class they belong to, because the use of general or unclear terms in the list will make it difficult to determine the scope of claims or similarity of goods and services, both during examination and in the process of the rightholder s defence of his exclusive right. For example, the wording Personal and social services rendered by others to meet the needs of individuals is general to the degree of losing definiteness and needs to be specified, because, consisting of a part of the heading of Class 45, it indicates a field of activities, to which the services may belong, but does not contain their 18

19 clear names, hence, in light of the need for clarity and precision, this term does not give a clear indication of the services being provided. There are many individual and public services, which can be classified not only in Class 45, but in other Nice Classes. For example: restaurants; retirement homes Class 43; cleaning of clothing - Class 37, nursery schools - Class 41, transport of travellers - Class 39, medical care, hygienic and beauty care - Class 44. The wording Personal and social services rendered by others to meet the needs of individuals should either be specified to indicate the specific services, belonging to Class 45, or should be followed by the word namely and a list of the exact services. The following is a non-exhaustive list of acceptable specifications. Not a clear and precise term Example of a clear and precise term Goods of common metal not included in Construction elements of metal other classes (class 6) (060339) Building materials of metal (060291) Machines (class 7) Agricultural machines (070008) Machines for processing plastics (070278) Milking machines (070367) Goods in precious metals or coated Works of art of precious metal therewith (class 14) (140109) Goods made from paper and cardboard Paper coffee filters (160324) (class 16) Goods made from rubber, gutta-percha, gum, asbestos and mica, not included in other classes (class 17) Class 18. Leather and imitations of leather, goods made of these materials and not included in other classes Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, Rings of rubber (170004) Briefcases [leather goods] (180083) Figurines of wood, wax, plaster or plastic (200239) Door bolts, not of metal (200280) 19

20 mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics (class 20) Repair (class 37) Shoe repair (370025) Installation, maintenance and repair of computer hardware (370116) Installation services (class 37) Installation of doors and windows (370128) Installation of burglar alarms (370016) Treatment of materials (class 40) Treatment of toxic waste (400097) Air purification (400003) Personal and social services rendered by others to meet the needs of individuals (class 45) Adoption agency services (450193) Clothing rental (450081) Personal background investigations (450199) Note that vague terms would not be made specific, or acceptable, by the addition of such terms as including or in particular. The example machines, including milking machines would not be acceptable as it remains vague Vague terms, not used in the Nice Classification The Nice classification does not contain an exhaustive list of goods and services, in respect of which protection may be sought. The applicant may indicate a good or a service in the list by a term, which is not contained in the Nice Classification. However the above principles of clarity and precision should also apply to this term. All vague terms should be specified in such a way as to allow their clear identification and classification in one of the Nice Classes The claim for all goods/services in this class If the applicant intends to protect all goods or services included in the list of a particular class, it has to expressly indicate this by listing these goods or services explicitly and individually. 20

21 Applications are sometimes submitted for all goods in Class X, all services in Class X, or, after a listing of some goods/services, the words and all other goods/services in this class are added. In such cases the examiners must require a list of the specific goods or services in respect of which the registration is requested Trade marks in a list of goods/services Article 2, Par.4, Nice Agreement, states that The fact that a term is included in the alphabetical list in no way affects any rights which might subsist in such a term. The purpose of this norm is to prevent the conversion of subject matter, the rights to which belong to third parties, i.e. trade marks, indications of origin, into generic terms. In practice there are inadmissible cases, when applicants include trade marks into the list of goods and services, thus infringing on the rightholder s rights. For example, a list of goods under Class 30 including aromatic preparations, condiments, flavorings and spices for Hussar sausages is inadmissible, because it turns the name into a generic term. In such cases, the examiners will object to the inclusion of the term, and request its deletion or replacement by a generic term for the goods or services For example: Electronic devices for transmission of sound and images; video players; CD players; ipods Since ipod is a trade mark, the applicant will be requested to replace it by a synonym such as a small portable digital audio player for storing data in a variety of formats including MP Inclusion of the terms parts and fittings; components and accessories in lists of goods and services The terms parts and fittings; components and accessories are, on their own or in combination with each other, neither clear nor precise enough for classification purposes. Each of the terms requires further qualification by identifying factors such as characteristics, purpose and/or identifiable market sector. For example: 21

22 Parts and fittings for motor vehicles is acceptable in Class 12; Building components made of wood is acceptable in Class Use of the terms and the like; ancillary; associated goods; etc. and related goods The use of qualifiers such as and the like, ancillary, and related and etc. in a list of goods or services is unacceptable, as the goods or services have not been fully listed and thus the examiners won t be able to determine the scope of claims, nor, later, the scope of protection. 4. Amendments to the List of Goods and Services. Added Classes Article 1497, Par.2, Civil Code, allows for amendments, corrections, clarifications and additions in the application materials during the examination stage, prior to the decision on the application, in particular by way of filing additional materials. However, if the additional materials contain a list of goods, not indicated in the application on the filing date, such additional materials will not be accepted. They may be filed as an independent application. In case of need to, for instance, specify the scope of claims or clarify certain wording, the examiners may send a request to the applicant, indicating the identified deficiencies. At the same time the examiners should propose a certain wording for future correct classification. An amendment may be introduced only if the new wording does not in fact constitute an extension of the list of goods and services. For example, tea indicated in Class 30, may not be replaced by medicinal tea from Class 5. It is possible to add a class or classes to an application, but only where the goods or services detailed in the original application were clearly included in the wrong class. For example, assume the original list of goods reads: Class 33: Alcoholic beverages including beer, wines and rice spirits. Since beer is proper to Class 32, the applicant will be requested to transfer the term to Class

23 5. Clarifications on the Classification of Certain Goods and Services The purpose of this Section is to clarify the classification of certain problematic terms. It also provides notes on classification practice (including words or phrases that should not be used). Air freshening and perfuming preparations There are preparations which serve to merely mask unpleasant smells (perfume) and there are also preparations which chemically wrap-up and remove unpleasant odours (deodorisers). For example: Class 3: deodorants for human beings or for animals aromatics Sachets for perfuming linen Class 5: deodorants for clothing and textiles Air purifying preparations. Other goods which may release pleasant odours include perfumed candles which are proper to Class 4 (the release of perfume is a secondary characteristic) and perfumed drawer liners (proper to Class 16 as being analogous to packaging material and usually made of paper). Precious metal goods The general indication goods of precious metals or coated therewith, not included in other classes in Class 14 is not clear and precise enough. The applicant needs to specify the wording of the term. The following needs to be taken into account when classifying precious metal goods. Historically, virtually all goods which were made from, or coated with, precious metals were grouped together in Class 14. It was considered that the material had an influence on why the goods were bought. 23

24 Since 1 January 2007, the classification of many goods that would have been in Class 14 has been re-classified. The reclassification of the goods is based upon their function, rather than the material from which they are made. The following are examples of goods which are classified according to their function or purpose. Class 8: Cutlery of precious metal. Class 16: Pen nibs of gold. Class 21: Teapots of precious metal Candlesticks of precious metal Containers of precious metal. Protective clothing The main purpose of protective clothing is protection against the effects of adverse factors. Protective clothing may substitute or complement regular clothing. Woven or nonwoven materials, impregnated with special solutions, may be used for such clothing. The protective action of such clothing is based on the absorption of harmful components by the impregnating substance. These goods are proper to Class 9. Aprons, smocks and overalls which merely protect against stains and dirt are not proper to Class 9 but to Class 25 as general clothing. Protective sporting articles (except helmets) are proper to Class 28: none of these protect against loss of life or limb. Curtains and blinds Blinds, in all their forms, can be used on windows both internally and externally. The classification of these goods depends upon the purpose of the product and its material composition. Curtains are normally found in use indoors and they are similarly classified according to their material composition. Examples of acceptable entries are: Class 6: Outdoor blinds of metal 24

25 External metal blinds as part of a building for security purposes. Class 17: Curtains of asbestos (safety-) Class 19: Blinds [outdoor] not of metal and not of textile. Class 20: Blinds (indoor window) [shades] [furniture] Curtains (bamboo-) Curtains (bead-)[for decoration]. Class 24: Outdoor blinds of textile. Computer games and computer games apparatus Special attention should be paid to computer games and computer games apparatus. The terms computer games / video games, as such, are only acceptable in Class 9, because the term game is primarily the final product of software. Since January 1, 2012, all games (irrespective of type) became proper to Class 28. However, most devices come loaded with games, as finished products. Therefore, Computer game consoles can be accepted in Class 9 based on the technologies used to create the toy and its points of sale. Dietetic Goods Dietetic foods, i.e. dietetic milk, dietetic cottage cheese, are proper only to Class 5. Food Additives The use of the term food additives in the list of goods and services is inadmissible. Article 1, Federal Law of the Russian Federation of January 2, 200, #29, On the Quality and Safety of Food Products, states that food additives are natural or artificial substances and compounds added to food products during the manufacturing process for the purpose of lending certain properties to the food products and/or preserving the quality of food products. Food additives have about 50 different functions, based on which they may be broken into 11 groups: - nutritional additives (natural food components); - additives preserving freshness; 25

26 - additives facilitating processing and production; - preservatives; - seasonings; - colouring agents; - densifiers - sweeteners; - fillers; - additives decreasing calorie content; - other additives, which cover a number of substances, i.e. aluminosilicate which is added to dietary salt. Depending on their properties and composition, food additives may belong to Classes 1, 2, 3, 29, 30. The following are some examples of their classification. Class 1: chemical substances for preserving foodstuffs; Class 2: food colorants (for butter, liqueurs, etc.); Class 3: aromatics for drinks (essential oils); Class 29: food gelatine; Class 30: binding agents for sausages. Bioactive Dietary Supplements Bioactive food supplements should be distinguished from the above food additives. Bioactive supplements may possess prophylactic, dietary and functional properties, and thus are used to achieve an intended effect on the human body: disease prevention, support of the body s physiological functions, etc., meaning that they are used as supplements for medical purposes. Given the above and given the fact that Class 5 covers food supplements for medical purposes, one must recognize that the terms food supplements for medical purposes and bioactive food supplements, though different in form, coincide in content and hence, characterize the same goods. Therefore, signs claimed for bioactive food supplements belong to Class 5. Electronic cigarettes Electronic cigarettes are just like real cigarettes except they do not produce cigarette smoke and they do not contain tar or any of the other harmful chemicals often found in real cigarettes. They can look just like real cigarettes, can taste just 26

27 like real cigarettes, but they produce water vapour as a by-product rather than cigarette smoke. Electronic cigarettes are acceptable only in Class 34, even if they would serve a medical purpose. Non-electronic parts of these types of cigarettes, like cartridges, atomisers or (aroma) substances for these cigarettes are also classified in Class 34. The electronic parts like batteries and a microcomputer controlled circuits for electronic cigarettes are not acceptable in these classes and belong to Class 9. Lighters Lighters are found in Class 11, whereas lighters for smokers belong to Class 34. So the wording smokers articles, namely lighters is admissible in Class 34. Services Relating to Trade Activities Since the service promotion of goods for others may be related not only to sales, but to advertising, which is found in Class 35, the term promotion of products for third parties cannot be recognized as an equivalent of trade services or of goods selling services. Services relating to the selling of goods may be indicated by such terms as retail, wholesale services, retail and wholesale services of a store, delivery of sold goods services, retail services via catalogue by post, retail services via teleshops and web sites. Terms denoting sale services may be further specified in respect of range of sold products or area of activity: retail sales of food products services, construction materials wholesale services, retail services relating to plants, seeds, flower bulbs, trees, retail services of department stores relating to clothing, footwear, accessories, cosmetics and perfumes, retail services of department stores relating to furniture and home appliances, retail services relating to pharmacy products. All the above wordings are proper to Class

28 Services relating in one way or another to trade activities, may be indicated, besides promotion of products for others, by other terms, contained in Class 35, i.e.: import-export agencies, auctioneering, procurement services for others, etc. The following terms cannot be used in any Class in the Nice Classification: stores, not even those that describe the products on sale: book stores, clothing stores, services of supermarkets or of department stores such wording is too broad, may include not only services relating to trade, but other services as well, which do not belong to Class 35. trade centers, services of trade centers the activities of trade centers may include leasing of premises, which does not fall under Class 35; bakeries the wording is too broad, may include not only services relating to the sale of baked products, but other services, not belonging to Class 35, as well, for instance, custom baking for special occasions, cafeteria services, etc. Retail services may belong not only to Class 35, but to other classes as well, depending on the type of products sold. Class 35 does not cover the sale of drinks, cigarette, etc. in bars or cafes. These services belong to Class

29 Section II Examination of Conformity of the Claimed Sign with the Requirements of State Registration 29

30 1. Examination under Article 1477, Civil Code Article 1499, par.1, Civil Code, states that the claimed sign should be examined as to its compliance with the requirements of Article Article 1477 contains definitions of a trade mark and service mark, which state that these means of individualization are signs which serve to individualize the goods of legal entities or individual entrepreneurs and to individualize the works performed by legal entities or individual entrepreneurs or services rendered by them. Thus, Article 1477 requires that trade marks and service marks individualize the goods, works or services of legal entities and of individual entrepreneurs. The types of registered trade marks are listed in Article 1482, Par. 1, Civil Code: word, figurative, 3d and other signs or combinations thereof (combined signs). Other signs mentioned in Art.1482, par.1, may include sound, light, transforming, holograms, smell, taste, tactile, position and colour signs. Thus, a trade mark may be both a visual sign (word, figurative, 3D, light, motion, hologram, position, colour) and a nonvisual sign (sound, smell, taste, tactile). The majority of registered trade marks are word and figurative marks, as well as combinations thereof, including labels and printed packaging. Word marks include words, combinations of letters, combinations of words, sentences and other linguistic units or combinations. Figurative marks include flat representations of live beings, articles, natural or other objects, compositions of lines, spots, and figures. Though a steady trend is observed nowadays towards more registrations of new (nontraditional) types of marks to enhance the appeal of products or services and to promote them via radio, TV or the internet. These include, first of all, 3D signs, spatially distributed lines and figures. In the majority of cases, the shape of a product or its packaging, or of individual parts thereof, are registered as 3D marks. The following are some examples of registered 3D trade marks. 30

31 TM Representation of TM Notes registration # The trade mark consists of a vessel with a lid of an original form, in the shape of a stylized apple. The trade mark is registered for Class 3 goods: perfumery, toilet water; deodorants for personal use; perfumes; essential oils for perfumes and aromatics; eau-de-cologne The trade mark consists of a vessel with a lid. The bottleneck of the vessel is executed in the shape of a dinosaur s head. The trade mark is registered for Class 29 goods: milk, dry milk, condensed milk, aromatized milk, whipped milk; milk products, including yogurt, yogurt drinks, pressed curd; milk beverages with or without aromatic additives; milk beverages, milk predominating; milk beverages containing fruit; cultured milk products with or without aromatic additives The trade mark is a toy representing a fictional character wearing a cap and a scarf. The trade mark is registered for Class 35: advertising, interactive advertising via computer networks; procurement for others (purchasing goods and services for other businesses); promotion of goods for others; and for Class 41: publication of books; academies (education); layout (other than for advertising purposes); coaching (training); educational services. 31

32 Therefore, in the above examples the 3D trade marks may not be registered for bottles (Class 21), containers of plastic (Class 20) or toys (Class 28) (see Par and hereunder). Another popular type of trade mark is combined signs, consisting of a 3D sign bearing word and/or figurative signs or labels. Examples of such combined signs are given below. TM Representation of TM Notes registration # The trade mark is represented by a vessel of original shape in the form of a stylized firearms cartridge bearing the sign CALIBR. The trade mark is registered for goods of Class 3: bleaching and other cleaning preparations; polishing, scoring and abrasive preparations; soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices The trade mark is represented by a bottle cap of an original shape, with ribbed side walls. Stylized representations of a cupola and a dove with the sign «Святой Источник» are located on the top of the cap. The trade mark is registered for goods in Class 30: beverages based on tea; and goods of Class 32: mineral and aerated waters and other non-alcoholic beverages; fruit nectars and fruit juices; syrups for beverages. 32

33 The trade mark is represented by a bottle of an original shape, with a cap. Labels are attached on the bottleneck and the mid section of the bottle. The trade mark is registered for goods of Class 33 vodka. Holographic trade marks are, as a rule, used to safeguard the goods against imitation or counterfeit goods. Holograms are difficult to fake and, thus, holographic TMs can better guarantee a certain level of quality. Below is an example of a registered holographic TM. TM Representation of TM Notes registration # The TM consists of a pattern with a holographic effect on a tape. The TM is registered for goods of Class 11: vehicle reflectors, namely, light-reflecting adhesive tape to mark a vehicle s contour, and of Class 17: adhesive tape, other than stationary and not for medical or household purposes. Sound TMs are used primarily in radio and TV advertising. Sound trade marks may be registered as musical works, songs, accords, well known sounds or rare sounds, both natural, or synthetized. Sound marks may be represented in traditional musical notation and/or by a verbal description of the sound, by an indication of its source (origin) or its nature. 33

34 Examples of registered sound trade marks: 1) The TM, consisting of a cat s purring, was registered for goods in Class 31: agricultural, horticultural, forestry and grain products, seeds included in Class 31; live animals, poultry and fish; animal foodstuffs; bird food; fish meal; malt; dog biscuits; fresh fruit and vegetables; bedding for animals; preparations used as additives to animal meals, included in Class 31 (registration #262372). The trade mark was published as a phonogram accompanied by a sonogram. 2) A service mark, consisting of a sound identifier of the voice service of an informational portal, was registered for services in Classes 35, 38 and 41, # The mark was published as a musical notation and as a phonogram. 34

35 Movement trade marks are registered very rarely. Usually these are intro templates of film or TV companies. The moving components are usually executed in a certain combination of colors and contain word, figurative and colour elements, and are accompanied by certain sounds. Examples of registered movement marks: 1) An animated sign consisting of a stylized representation of a cylinder releasing bubbles was registered for services in Class 35 ( ). The four stills below show how the movement progressed. 2) Protection as a trade mark was granted to an animated sign, in which, according to the published verbal description, the sculpture The Worker and the Peasant Woman rotates on the background of a setting sun, then gradually disappears in the background and the word «МОСФИЛЬМ» appears in its place, as the sculpture disappears, a representation of Spasskaya Tower of the Kremlin appears in the bottom right corner and a star flares up on the tower (registration # ). The registration was for goods of Class 9: cinematographic films, video films, animated cartoons; Class 40 services: processing of cinematographic film; and Class 41: microfilming, videotape editing; videotaping, production of cinematographic films; script writing; services of recording studios; filming; movie studios. Below is a still from the representation. 3) An intro template of a TV channel with accompanying sound was registered (#249747) as a service mark for services of Class 35 TV advertising, Class 38 cable television broadcasting; television broadcasting; computer aided 35

36 transmission of messages and images ; Class 41 editing of television programs; rental of motion pictures; rental of video films. Below is one of the still frames from the sign. 4) Protection as a trade mark for Class 9 goods ( computer software for operating systems; computer software to support user s graphic interface ) was granted to a sign containing light and moving elements. The sign consists of bright glares originating from one point. Below is a still by still representation of the movement. As a rule, colours are protected as trade marks if they have acquired distinctiveness through use. Colour trade marks may consist of a colour per se or of a combination of colours. In such cases it should be clearly stated that the claimed mark is a color or a combination of colors, not a figurative sign, not, for example, a square of a certain color. A sign consisting of pink color (registration #310048) was registered as a trade mark for goods in Class 3: preparations for bleaching, cleaning carpets, stain removal, with or without disinfectants. The representation of the color trade mark is given below. 36

37 This trade mark was registered after submission of proof of distinctiveness acquired through use. During the promotion campaign consumers were exposed to the rhyming slogan «Розовый цвет, доверься ему, и пятен нет» ( Pink color, trust it and stains are gone ) and thus were likely to notice that the origin of the product was indicated not only by the name ( Vanish ), but also by the specific color of the product s packaging. The producer explicitly used the words pink color when advertising the product and, thus, the public became accustomed to the fact that this is the trade mark, consequently, when shopping, the public is looking for a cleaning preparation of pink color. When protection is claimed for position trade marks, the representation of the applied for mark should indicate the positioning of the trade mark on the product. The following are a few examples of registered position trade marks. 1) A sign consisting of a stylized representation of an arrow and a five-point star located on the representation of a shoe, indicated by a dotted line. The dotted lines belong to the unprotected elements of the trade mark. The representation of the shoe in dotted lines serves to indicate the positioning of the trade mark on the product. The trade mark is registered for goods in Class 25: footwear, slippers, half-boots, sports shoes, sandals, footwear for special use, trainers, sneakers. 2) A pattern, consisting of a stylized representation of a mosaic made of horizontal and vertical lines of varying length and width, on a schematic representation of a 37

38 shoe sole, indicated by a dotted line, was registered as a position trade mark. The schematic representation of the sole is an unprotected element of the trade mark. The trade mark was registered for goods of Class 25: footwear, shoes, half-boots, sports shoes, special shoes, sandals. 3) An original pattern in the form of two wave-like parallel intermittent lines on a schematic representation of a pocket, shown by dotted lines, was registered as a position trade mark. The schematic representation of the pocket is an unprotected element of the trade mark. The schematic representation of the pocket serves to indicate the position of the TM on the product. The trade mark was registered for goods of Class 25: jeans, trousers, pants, shorts. Taste trade marks relate, as a rule, to food products and beverages. Hence, registration of a taste TM requires proof of acquired distinctiveness through the use of the taste sign in respect of the claimed product. When using an olfactory TM the goods producer strives to individualize his product by way of a unique scent. This sent cannot be a natural characteristic of the product (i.e. smell of leather for shoes, smell of fruit for fruit juice). Nor may the smell have a functional purpose. For instance, perfume must have a scent because of its purpose, thus the scent of the perfume cannot serve as a means for individualization. Tactile TMs are to be perceived through touch, they may be executed in special high relief print, used for reading and writing by blind people. 38

39 2. Examination under Article 1483, Par. 1, Civil Code 2.1. Signs Lacking Distinctiveness Single letters Signs, consisting of single letters devoid of any characteristic rendering (i.e. А, М, Д, Ф, W, N, Z), can be considered as signs devoid of distinctiveness. Therefore, such signs will not be granted protection. However, trade mark protection for such signs is claimed very rarely. As a rule, such signs are included in a trade mark as one of the elements and are protected as part of the whole composition Combinations of Letters Combinations of letters, which are devoid of the nature of a word and of any characteristic graphic rendering, are treated as signs lacking distinguishing capability. Signs, consisting exclusively of consonants (ТПР, ЧВФД), or signs, where each letter is followed by a full stop (Т.Е.Н., I.D.N.S.), are devoid of the nature of a word. TM/application registration # Representation of TM Notes State registration of a TM was refused, due to the fact that the claimed sign lacks distinctiveness, since it is a combination of letters devoid of a characteristic graphic rendering and of the nature of a word. 39

40 The TM was registered, with all the words (including the combination of letters «ВМК») included as unprotected elements Numerals Numerals (0, 1, 2, 3, 4, 5, 6, 7, 8, 9) and numbers, composed of them (27, 49, 602), lack distinctiveness if they do not have a characteristic graphic rendering. TM registration # Representation of TM Notes The TM was registered with the numeral 4 included as an unprotected element The TM was registered with the numeral 7 included as an unprotected element Lines, basic geometric figures Signs lacking distinctiveness also include signs which consist of only one element, where this element is the representation of a line or of a basic geometric figure (triangle, circle, square, etc.). 40

41 Due to frequent use by many producers these signs have lost their distinctiveness and are unable to individualize goods or services. The following examples illustrate this Combination of lines and basic geometric figures Protection cannot be granted to a sign consisting merely of a combination of lines and/or basic geometric figures, in which the individual components are connected mechanically, without the formation of a composition that would be perceived as a new image, differing from the elements constituting it. Such a banal combination lacks distinctiveness. Examples of such simple combinations of lines and geometric figures are given below. 41

42 However, protection may be granted to such a combination of lines and/or basic geometric figures which results in an organic unity of these elements and a new impression made by the sign as a whole. Examples of such signs, which were registered as trade marks, are given below. TM registration # Representation of TM Notes The trade mark was registered for goods in Classes 7 and The trade mark was registered for goods in Classes 7, 9 and The trade mark was registered for goods in Classes 18, 25 and

43 Representations of Goods Simple representations (realistic or schematic) of the goods they are claimed for are devoid of a distinctive character. Such signs may not be registered as trade marks, because they do not serve to individualize the goods. The same type of goods may be produced by different manufacturers. Each one of them has the right to depict the produced goods on the packaging, in advertising, etc. TM registration # Representation of TM Notes Position trade mark consisting of three parallel strips on the upper part of a shoe, registered for goods in Class 25 (footwear). The schematic representation of the shoe, indicated by dotted lines, is not a protected element in the TM The trade mark was registered for goods in Class 30 (ice cream). The realistic representation of the ice cone is included in the TM as an unprotected element. However, when the representation of the product (claiming the product) is so modified that it becomes a unique representation rather than a realistic or schematic one, then such a representation may be registered as a trade mark. 43

44 TM registration # Representation of TM Notes The trade mark was registered for goods in Class 30 (ice cream, fruit ice). Protection may also be granted to a sign, consisting of an original (unique) composition of realistic representations of products, in respect of these products. TM registration # Representation of TM Notes The trade mark was registered for goods, in particular, in Class 30 (bread and bakery products) The trade mark was registered inter alia for goods in Class 31 (fresh fruit). 44

45 Simple (realistic or schematic) representations of products may be registered as trade marks if they have no direct connection to the products in respect of which they are claimed. TM registration # Representation of TM Notes The trade mark, containing a realistic representation of a motor vehicle, was registered for goods in Classes 29 and 30 (meat, fish, poultry, etc.) Distinctive Character of Signs Consisting of 3D Objects Three-dimensional trade marks can be grouped into three categories: shapes unrelated to the goods and services themselves shapes that consist of the shape of the goods themselves or part of the goods the shape of packaging or containers. Shapes which are unrelated to the goods or services themselves are usually distinctive. Examples of such registered 3D TMs are given below. TM registration # Representation of TM Notes A 3D TM, consisting of a combination of an oval fragment and a straight element, was registered for goods in Class 11 (heat exchangers, not parts of vehicles, intended, in particular for heating (heaters), cooling (coolers), condensing (condensers), evaporating (evaporators) various process media, including water, pulp, acids, alkali, hydrocarbon mixes). 45

46 A 3D TM in the form of a truncated pyramid with a square base and with straps on two opposing ridges was registered for goods in Class 41 (academies, education, book publishing, etc.) A 3D service mark, consisting of four stylized 3D geometric figures and a stylized 3D letter A, was registered for services in Class 35 (auditing, opinion polling, market studies) and Class 36 (real estate agencies, financial analysis, investments, etc.). A sign consisting of the form of the product or its part should be examined as to the applicability of grounds for refusal under Article 1483, par.1, Code, which states that state registration of TMs is impossible for signs consisting exclusively of elements that represent the form of the product, which is determined exclusively or primarily by the purpose or properties of the product. See Par of the present Guidelines for more on this examination. When assessing the distinctive character of the shape of a product the basic test is whether the shape is so materially different from basic, common or expected shapes that it enables a consumer to identify the goods just by their shape. The following criteria are relevant when examining the distinctiveness of three dimensional trade marks consisting exclusively of the shape of the goods themselves or a part thereof: A shape is non-distinctive if it is a basic shape or a combination of basic shapes. To be distinctive, the shape must depart significantly from the shape which is expected by the consumer, and it must depart significantly from the norm or customs of the sector. The more closely the shape resembles the shape that is most 46

47 likely to be taken by the product in question, the greater the likelihood that it is not distinctive. It is not enough for the shape to be just a variant of a common shape or a variant of a number of shapes in an area where there is a huge diversity of designs. Similar approaches are applied to the shape of a packaging or container of the product. The shape must significantly differ from a combination of simple or common elements. The shape must be unusual. Furthermore, the shape of the packaging or container should not be functional (see Par.2.6, Guidelines). The following is a list of examples of shapes of goods and packaging which do not have distinctiveness. 3D Sign Reasoning This shape is not distinctive and was refused as it is merely a variant of a common shape of this type of product, i.e. flashlights. This form of a wrapper for sweets does not have distinctiveness as it is a normal and traditional shape for a sweet wrapper and a large number of sweets so wrapped can be found on the market. The following are examples of registered 3D TMs which are shapes of products or their packaging (container). TM registration # Representation of TM Notes A 3D TM which is the form of the product (ginger bread) in the form of a samovar was registered for goods in Class

48 A 3D TM being a container in the shape of a lipstick was registered for goods in Class 33 (alcoholic beverages except for beer) A 3D TM being a container in the shape of a cut pear was registered for gods in Class 3: preparations for bleaching and washing; preparations for cleaning, polishing; soaps; perfumery, essential oils, cosmetics, hair lotions; dentistry. However, a standard form of a product or its container (packaging) may be registered as a 3D TM when it bears a protectable word and/or figurative element or a protectable label. TM registration # Representation of TM Notes A 3D TM consisting of a traditional form of packaging (a box) bearing figurative elements was registered for goods in Class 5: medical preparations, pharmaceutical preparations. The form of the packaging is an unprotected element of the TM. 48

49 A 3D TM consisting of a traditional form of packaging (a pack) with figurative elements and the word element TODAY was registered for goods in Class 30: Coffee, green coffee; coffee substitutes; vegetal coffee substitute; coffee beverages with milk; coffee flavorings. The form of the package is an unprotected element of the TM Simple Indication of Goods Simple indications of goods or services applied for as TMs (fruit, clothing, construction) do not have distinctiveness. Signs consisting of simple generic or standard denominations of goods or services will be perceived by the customer as information about what the goods or services actually are and not as an indication of their origin. Furthermore, various producers of the same type of goods should have the possibility of placing the customary name of the product on the product itself or on its packaging (cream, pizza, chocolate, etc.). TM registration # Representation of TM Notes The TM was registered for goods in Class 29: sour cream. The indication of the product «Сметана» is included in the TM as an 49

50 unprotected element The TM was registered for goods in Class 30: sweets. The indication of the product «конфеты» is included in the TM as an unprotected element Customary Abbreviations of Organizations, Companies, Industries or their Shortened Names Customary shortened names of organizations, industries, companies or their abbreviations (пищепром, легпром, НПО, КБ, НКО) do not have a distinctive character, nor do the customary acronyms of legal forms of incorporation (ОАО, ООО, Ltd, GmbH). Such signs may not be granted protection as trade marks. TM registration # Representation of TM Notes The customary short name of the industry «ТЯЖПРОМ» (heavy industry) is included in the TM as an unprotected element The customary abbreviation «НПО» (научно-производственное объединение) ( scientific-production association ) and the customary shortened name of the industry «ГИДРОМАШ» (гидро ( hydro гидротехнический, маш.(mach.) - машиностроение) are included in the TM as unprotected elements. 50

51 2.2. Terms which have become customary for denoting goods of a certain kind (Article 1483, Par. 1, subpar.1) Article 1483, Par. 1, subpar.1, the Code, excludes from registration signs which consist exclusively of words or indications which have become customary for denoting goods of a certain type. In this context, the customary nature of the sign may refer to something other than the properties or characteristics of the goods or services themselves. A customary designation of goods of a certain kind is a designation of a certain product which through its long use in respect of one and the same product or in respect of similar products by different producers has come to designate a specific type of goods. A designation which has become commonly used in a certain industry or by the public at large to name a certain type of product becomes a generic name of the product, undistinguishable from it. Hence, a generic term cannot serve to individualize the product or to indicate its origin. As a rule, a newly designed type of product, with special properties or qualities, needs to be made to stand out, needs to be individualized by being given a special name. This name may be applied for registration as a trade mark and get protection on the basis of its distinctiveness. Such a trade mark is usually a nomenclature one, meaning it is intended for a specific type of product rather than for a wide range. However, as a result of its long use by various producers it loses its main function, that is - to individualize the goods of legal entities or individual entrepreneurs, and becomes a customary name for the product. Hence, as a generic term it may freely be used on goods, in advertising, in documents accompanying the goods. The term is entered into dictionaries, reference books, encyclopedia, technical regulations, international and national standards, it appears in periodicals, on TV, radio, etc. The following are some examples of designations which became customary for denoting goods of a certain type: целлофан, термос, ланолин, вазелин, сахарин, целлулоид, эскалатор, примус, граммофон, магнитофон, линолеум, нейлон (cellophane, thermos, lanolin, vaseline, saccharin, celluloid, escalator, primus, gramophone, magnetophone, linoleum, nylon). At the same time, a designation which has become customary should not be recognized as a generic name if the applicant submits data proving that the sign is exclusively his trade mark and that consumers still perceive this trade mark as an 51

52 indication of a specific producer. Such an approach allows to maintain well known marks for which there is a real risk of turning into generic names. A sign has become a customary designation of a certain type of goods when: - it is used to denote the product by specialists in the industry, by the market, by consumers; - it is used as a name of a certain product or a certain type of products produced by different producers; - it has been in use for a long time. Only in the presence of all the three above factors a designation may be recognized as a customary one for a certain type of products. In such a situation it would be impossible to determine which of the three factors is the dominant one. A sign becomes a generic name of a product when it is firmly established on the market not only among consumers at large, but also among specialists in a certain industry, among trade representatives and when its usage by the latter two categories is not of a narrowly specific or jargon nature. A stable unambiguous link is formed in the minds of these categories of people between the product, possessing certain characteristics and qualities, and the sign which is used as its name. The word «эскимо» ( eskimo choc.ice) is a good example of this. This word brings to mind a strong association with a certain type of ice cream, of a specific form and glazed with chocolate; hence it cannot be registered as a trade mark for ice cream, because it directly indicates the product. The different producers named as the second factor imply producers who are independent of each other, i.e. they are not subsidiaries, not affiliated, not bound by commercial contracts (concession agreements, license agreements, etc.) One of the factors determining the conversion of a sign into a name of a product is the time during which it was used as a generic name. This time period depends on the growth dynamics of the product on the market. In any case the sign should be used repeatedly by independent producers to name the product. The reference base for establishing whether a sign has become customary for denoting a certain product are various dictionaries, encyclopedia, reference books, technical regulations, international and national standards, as well as periodicals. When conducting a search on the claimed sign care should be taken to make sure 52

53 that the sign is cited in literature without any reference to its being a trade mark, without any markings or highlightings (use of different typeface, in inverted commas, etc.). However, the use of a sign in literature as a generic term does not always point to its undeniable conversion into a customary term for goods of a certain kind. For example, the mark «памперс» (pampers) is used in the internet encyclopedia «Руссика» and «Википедия» in articles about diapers as an equivalent of the word diapers (underwear used in case of incontinence): Pampers are very easy to use and are unnoticeable under the clothing (russika.ru). Nowadays the word Подгузник is rarely used, the word «памперс» is more popular (ru.wikipedia.org). However producers of these goods do not use the word «памперс» as a generic term, but use the word «подгузник». Another source of information for establishing whether a sign has become customary for denoting a certain product are translated dictionaries or reference literature in foreign languages (primarily in the language of the applicant s country). For instance, the sign «YELLOW PAGES» was applied for as a trade mark for address books, telephone directory. Analysis of literature showed that «YELLOW PAGES» is mentioned in the English-Russian dictionary and means «желтый справочник» (telephone directory printed on yellow paper). Thus, the sign «YELLOW PAGES» was recognized as a generic term for the claimed goods. When deciding on the issue of whether the claimed sign (registered trade mark) should be recognized as having become customary for denoting goods of a certain type account should be taken of the resolution of the Presidium of the Supreme Arbitrage (Commercial) Court (SAC) of the Russian Federation of December 14, 2004, # 11580/04 (in respect of the trade mark «Левомеколь», registered certificate #162803) and of July 6, 2004, #2606/04 (in respect of the trade mark «PHENAZEPAMUM», registered certificate #64186). According to the Court s resolutions, the fact of customary usage was not proven by any of the following: - usage of the sign prior to registration as a trade mark by two producers irrespective of coverage or duration; 53

54 - statements on the usage of the sign by several producers not containing any proof of the actual circumstances of such usage (stating the coverage and duration); - letters to the rightholder with proposals to sign license agreements; -data on production volumes not supported by documents; - other documents failing to prove actual usage of the sign, duration of such usage and usage by several producers. The SAC Presidium formulated the circumstances that need to be proven to establish that a sign has become customary for denoting goods of a certain kind, in particular: - the sign should lose its distinctive character when perceived by consumers, producers or specialists in the specific field. The fact that a sign has become customary only among producers or specialists is insufficient; - assessment of the customary nature should be based on data coming from a maximum number of people, including not only specialists, but consumers of the product as well; - the TM should have become a generic term for the product, inseparable from it Commonplace Symbols Article 1483, Par.1, subpar.2 Subpar.2, Par.1, Article 1483, CC, states that a sign consisting exclusively of commonplace symbols may not be registered as a TM. These provisions of the Code apply to symbols which are typical for a certain field of goods production or for certain services. Commonplace symbols may consist primarily of figurative elements that symbolize an industry or a trade included in the list of goods and services of the applied for mark. Originally, these signs might have functioned as trade marks, but later on, due to their independent use by different producers, they lost their ability to distinguish and are now perceived as customary symbols in this or that industry or trade. The following are examples of such figurative elements and the industries they represent: 54

55 gearwheel machine-building and industrial production; ear of wheat agriculture, food industry; cow dairy industry or production of milk containing products (i.e. milk chocolate); crystal jewelry; snake and bowl medicine, pharmaceutics. Furthermore, goods are frequently marked with certain symbols to indicate their characteristics, mode of use, etc. Thus, the following may also be called commonplace symbols: - symbols used in science or technology: - designations of chemical elements Mg (magnesium), Au (gold); - denotations of various units - C (degrees of temperature), Ω (unit of resistance); - graphic symbols used in design documentation. denotation of fixed capacitor; - punctuation marks -., ;!? - denotation of currency -,, $. Pictograms symbols and signs conveying some information about goods or services or instructions on their use are also considered customary symbols. For example: The representation of a fork and knife may be considered a customary symbol of a catering service. The sign is a standard representation of high voltage Common Terms (Article 1483, par.1, subpar.2) 55

56 Subpar.2, Par.1, Article 1483, CC, states that a sign consisting exclusively of common terms may not be registered as a TM. These provisions of the Code apply to terms relating to certain activities in the production of goods or to certain services. Lexical units typical for certain areas of science or technology are considered common terms. As a rule, refusal on such grounds is justified if the term is used in the sphere of the applicant s activities. For example, the following may not be registered for publishing and printing activities: «альграфия» (method of printing), «кегль» (size of type), «ин-кварто» (publishing format). However, a term relating to a certain activity may be registered as a TM for goods not relating to that activity. For example, laser (optical quantum generator) may be registered for such goods as baby food, perfume. The reference base in such cases consists of manuals, guidebooks, encyclopedia, technical literature, dictionaries. Terms merely denoting a particular positive or appealing quality or function of the goods and services, which have lost any capacity to distinguish goods and services because of their frequent use, are considered common terms. For example, Эко (ECO) as denoting ecological ; Мульти (MULTI) as referring to much, many, more than one ; Премиум (Premium) as referring to best quality ; Плюс (PLUS), as denoting additional, extra, of superior quality, excellent of its kind ; Ультра (Ultra) as denoting extremely ; Универсал (UNIVERSAL) as referring to goods which fit for general or universal use. Plant variety names may also be regarded as customary terms. 56

57 2.5. Signs characterizing the goods. General Provisions (Article 1483, par.1, subpar.3) Article 1483, par.1, subpar.3, CC, states that registration of signs as trade marks is impossible for signs that do not have a distinguishing capability (distinctiveness) and consist merely of elements describing the goods, in particular, those that indicate the type, quality, properties, purpose, value, or time, place and method of production or sale of the goods. According to Par. 2.3, subpar , TM Rules, such elements include mere names of products, quality categories, indication of properties (including laudatory terms); indication of the material or composition; indication of weight, volume, price; production date; generic names of enterprises; addresses of producers or distributors; signs consisting fully or partially of geographical names which may be perceived as indications of the producer s geographical location. Such elements are considered as describing ( characterizing ) the goods and are unprotectable. During the examination of an applied for TM the sign or its elements must be assessed as to their descriptive nature. The sign must be assessed as to whether it or its elements may be perceived as providing information about the type, quality, quantity, property, purpose, value, or time, place and method of production or sale of the goods or services. Sometimes the applied for TMs include elements describing the goods or even consist only of them. Signs consisting only of elements describing the goods will not be granted protection, because other persons may wish to use them in their business activities. Such signs are called descriptive ( characterizing ). 57

58 Descriptive signs are signs that provide information about, among other things, the nature, quantity, quality, characteristics, purpose, kind and/or size of the goods or services, their time or place of production or rendering. Nor is protection granted to marks containing descriptive elements if these elements are the prevailing ones. However, marks, in which the descriptive elements do not prevail, may be protected. In such cases these elements will be indicated as unprotected ones. Below are some examples of registered TMs containing descriptive elements. During examination under Article 1483, par.1, subpar.3, CC, searches may be conducted in various manuals, guidebooks, dictionaries, encyclopedias and the internet to establish whether the sign or its elements are descriptive. Should the analysis of the claimed TM prove that it might be perceived as an indication of the kind, quality, quantity, property, purpose, value or the time, place and method of production or distribution of the goods or services, the application of grounds under Article 1483, par.1, subpar.3, CC, may be sufficient to refuse registration. However, par. 1, Article 1483, CC, states that elements indicating the kind, quality, quantity, property, purpose, value or the time, place and method of production or distribution of the goods or services may be included in a TM as unprotected elements if they do not occupy a dominating position in the TM (see Par. 2.7, Section II, present TM Guidelines, Inclusion of Signs Listed in Par.1, Article 1483, Civil Code, as Unprotected Elements). Furthermore, according to Subpar.1.1, Par. 1, Article 1483, CC, descriptive signs may be protectable if they have acquired distinctiveness through use or if they consist of a combination of descriptive elements, which itself possesses distinctiveness (see more on this in Par. 2.8, Section II, TM Guidelines, 58

59 Examination of Signs Consisting of Unprotectable Elements, and in Par. 2.9, Marks which have Acquired Distinctiveness through Use) Marks Indicating the Kind of Goods The kind of goods means the material out of which the product is made, the appearance of the product, etc. Elements indicating the kind of goods may be the following: milk, kefir, tea, vodka, kasha, automobile spare parts, etc. TM registration # Representation of TM Notes The trade mark was registered for goods in Class 29: tinned meat with kasha; tinned meat in kasha. The word element «каша» (porridge) points to a specific kind of product. The TM was registered with the word element «каша» included as an unprotected element The trade mark was registered for goods in Class 30: tea. The word element «чай» (tea) points to a specific kind of product. The TM was registered with the word element «чай» included as an unprotected element The trade mark was registered for goods in Class 29: kefir. The word element «кефир» points to a specific kind of product. The TM was registered with the word element «кефир» included as an unprotected element. 59

60 The trade mark was registered for goods in Class 5: herbal teas for medical purposes; and in Class 30: tea. The word element «чай» points to a specific kind of product. The TM was registered with the word element «чай» included as an unprotected element The trade mark was registered for goods and services in Classes 06, 07, 09, 12, 35. The word element «auto parts» points to a specific kind of product. The TM was registered with the word element «auto parts» included as an unprotected element Signs indicating the quality of the product The notion product quality means various quality characteristics of a product, its advantages or shortcomings. The following may be considered as elements suggesting quality: quality standard, quality multiplied by experience, etc. TM registration # Representation of TM Notes The trade mark was registered for goods and services in Classes 30, 35, 43. The word element «стандарт качества» (quality standard) indicates the quality of the product. The TM was registered with the word element «стандарт качества» included as an unprotected element. 60

61 The trade mark was registered for goods in Class 33. The word element «PREMIUM QUALITY» indicates the quality of the product. The TM was registered with the word element «PREMIUM QUALITY» included as an unprotected element The trade mark was registered for goods and services in Classes 31, 44. The word element «качество, помноженное на опыт» (quality multiplied by experience) indicates the quality of the product. The TM was registered with the word element «качество, помноженное на опыт» included as an unprotected element The trade mark was registered for goods in Class 30. The word element «THE BEST POSSIBLE QUALITY» indicates the quality of the product. The TM was registered with the word element «THE BEST POSSIBLE QUALITY» included as an unprotected element Signs indicating the quantity of the product The notion quantity of goods implies various quantitative characteristics of the product: its weight, number of pieces per package, 1 meter, 1.5 litres, 200 grams, 100 matches, etc. TM registration # Representation of TM Notes 61

62 The trade mark was registered for goods in Class 32. The element «1л» (1 l) indicates the quantity of the product. The TM was registered with the element «1л» included as an unprotected element The trade mark was registered for goods and services in Classes 16, 29, 30, 35, 43. The element «930г» indicates the quantity of the product. The TM was registered with the element «930г» included as an unprotected element The trade mark was registered for goods in Class 33 (wines). The element «3 литра» indicates the quantity of the product. The TM was registered with the element «3 литра» included as an unprotected element The trade mark was registered for goods in Class 29. The element «700 g» indicates the quantity of the product. The TM was registered with the element «700 g» included as an unprotected element. 62

63 The trade mark was registered for goods and services in Classes 30, 39, 42. The element «660 г» indicates the quantity of the product. The TM was registered with the element «660 г» included as an unprotected element Signs indicating properties of the goods The notion of properties of the goods means various properties inherent in the product, its characteristics, including those of a laudatory nature. The following are examples of terms describing the product s properties: creamy, vanilla-taste, pasteurized, natural, soft, flexible, strong, etc. TM registration # Representation of TM Notes The trade mark was registered for goods in Class 30: ice cream, fruit ice, edible ice. The word elements «сливочное», «ванильное» (cream, vanilla) describe the properties of the product. The TM was registered with the elements «сливочное», «ванильное» included as unprotected elements. 63

64 The trade mark was registered for goods in Class 30: flour and preparations made from cereals, baking powder, pastry. The word element «лимонный» (lemon) indicates a property of the product. The TM was registered with the word element «лимонный» included as an unprotected element The trade mark was registered for goods in Classes 29, 30. The word element «Натуральные» (natural) indicates a property of the product. The TM was registered with the word element «Натуральные» included as an unprotected element The trade mark was registered for goods in Class 32: beer. The word element «Живое» (live) indicates a property of the product. The TM was registered with the word element «Живое» included as an unprotected element The trade mark was registered for goods in Class 33: vodka. The word element «Мягкая» (soft) indicates a property of the product. The TM was registered with the word element «Мягкая» included as an unprotected element Signs describing the intended purpose of the product 64

65 The notion of intended purpose of a product means the product s sphere of application, its functions, its consumers. Examples of such elements are: for babies and mothers, for ladies, for boys, etc. TM registration # Representation of TM Notes The TM was registered for services in Class 35. The word element «для детей и будущих мам» ( for children and prospective mothers ) describes the intended purpose of the services. The TM was registered with the word element «для детей и будущих мам» included as an unprotected element The trade mark was registered for goods in Class 3: soap. The word element «Для Дамъ» (for ladies) describes the intended purpose. The TM was registered with the word element «Для Дамъ» included as an unprotected element The trade mark was registered for goods and services in Classes 29, 30, 31, 35. The word element «Для мальчиков» (for boys) describes the intended purpose. The TM was registered with the word element «Для мальчиков» included as an unprotected element. 65

66 The trade mark was registered for goods in Class 30. The word element «ДЛЯ ПИТАНИЯ ДЕТЕЙ ДОШКОЛЬНОГО ОТ ТРЕХ ЛЕТ И ШКОЛЬНОГО ВОЗРАСТА» (food for children from the age of 3) describes the intended purpose. The TM was registered with the word element «ДЛЯ ПИТАНИЯ ДЕТЕЙ ДОШКОЛЬНОГО ОТ ТРЕХ ЛЕТ И ШКОЛЬНОГО ВОЗРАСТА» included as an unprotected element Signs describing the value of the product Value of the product means the value characteristics of the product, its price, its perceived cost effectiveness. The following are examples of such elements: price 100 rubles, price 1000 dollars, 20 kopeks, etc. However, such signs are usually not applied for registration as TMs, nor as parts thereof Signs describing the time of production Time of production presumes a certain time period related to the product in one way or another or corresponding to the production of the product, in particular it applies to wines. Such elements are: « », «2014», etc. In practice, protection of such signs is not sought and they are rarely present in the claimed TMs as elements Signs describing the geographical origin 66

67 Geographical origin means the geographical name of the place (country, city, region, street, river, lake, etc.) where the product was produced. Examples of these are: «сделано в России» (made in Russia), «made in China», «Тула» (city of Tula), or adjectives derived from geographical names, i.e. «Костромская», etc. If the claimed TM consists of or contains a geographical term, the possibility of it being perceived as the place of the product s origin needs to be assessed; if this seems totally implausible, the sign is considered merely a fanciful term. The assessment should take into account the list of goods and services in respect of which the TM is applied for. If the claimed TM contains a real geographical name, which may be perceived as the place of production, it may be registered only if this element is not a dominating one and then it remains unprotected. TM registration # Representation of TM Notes The trade mark was registered for goods in Class 11. The word element «Сделано в России» (made in Russia) describes the geographical origin. The TM was registered with the word element «Сделано в России» included as an unprotected element. 67

68 The trade mark was registered for goods in Classes 30, 39. The word element «Костромская» describes the geographical origin. The TM was registered with the word element «Костромская» included as an unprotected element The trade mark was registered for goods in Class 30: ginger bread. The word element «ТУЛА» describes the geographical origin. The TM was registered with the word element «ТУЛА» included as an unprotected element. When the claimed TM consists of or contains a real geographical name which will not be perceived as the place of production and is merely a fanciful term in respect of the relevant goods, registration is possible without disclaimers. TM registration # Representation of TM Notes The trade mark was registered for goods in Class 1. The word element «КАМЧАТКА» is not perceived as the place of production, it is a fanciful term in respect of the relevant goods. 68

69 The trade mark was registered for goods in Class 30. The word element «Везувий» / «Vesuvius» is not perceived as the place of production, it is merely a fanciful term in respect of the relevant goods Signs describing the method of production The method of production or of sale of products means conditions or circumstances of the product s production or distribution. The following are such examples: «СДЕЛАНО ВРУЧНУЮ» (handmade), «продукция, реализуемая оптом» (wholesale products), etc. TM registration # Representation of TM Notes The trade mark was registered for goods in Classes 29, 30. The word element «СДЕЛАНО ВРУЧНУЮ» describes the method of production. The TM was registered with the word element «СДЕЛАНО ВРУЧНУЮ» included as an unprotected element The trade mark was registered for goods in Class 3. The word element «HAND MADE» describes the method of production. The TM was registered with the word element «HAND MADE» included as an unprotected element. 69

70 The trade mark was registered for goods and services in Classes 05, 35, 44. The word element «ОТ СКЛАДА» (from warehouse) describes the method of sale. The TM was registered with the word element «ОТ СКЛАДА»included as an unprotected element The trade mark was registered for goods in Class 28. The word element «ОПТОМ» (wholesale) describes the method of sale. The TM was registered with the word element «ОПТОМ» included as an unprotected element Certain cases under Article 1483, Par. 1, Subpar. 3, Civil Code If a claimed descriptive word sign has such a misspelling or omission which do not make it lose its descriptiveness, registration will be refused. For example, the sign «ELLASTIC», instead of «ELASTIC». However, if the misspelling or omission renders originality to the word sign, the sign may be registered as a TM. For example, «LIQID», derived from «LIQUID», may be granted protection Signs Consisting of the Product s Shape which Results from the nature of purpose of the product (Subpar.4, Par.1, Article 1483, Civil Code) Article 1483, Subpar.4, Par. 1, CC, states that registration is inadmissible for signs consisting merely of the product s shape, which is determined exclusively or essentially by the product s properties or purpose. However, these provisions of the Code are not applicable to signs consisting of the product s shape in combination with other elements (word or figurative) of a distinctive character, i.e. signs not consisting exclusively of the shape. 70

71 Furthermore these provisions of the Code apply not only to 3D signs, but to 2D representations of 3D shapes as well. The natural shape of a product is a shape which is determined exclusively or essentially by the nature of the product. It may be a natural product (a fruit or vegetable) or a manufactured one. The following realistic representation of a banana for the goods banana is an example of a shape determined by the product s properties (nature). A sign is considered as being a shape of a product determined by the purpose of the product if all the essential characteristics of the shape have a technical function, even if the product might have alternative shapes serving the same function. The following representation of a razor for razors is an example of the product s shape determined by the product s purpose. Shapes which are determined by the purpose of the product include shapes which, for example: fit with another article give the most strength use the least material facilitate convenient storage or transportation Inclusion of elements listed in Article 1483, Par.1, into a trade mark as unprotected elements In accordance with Article 1483, Par. 1, Civil Code, signs listed thereunder may be included in a trade mark as unprotected elements if they are not dominant in the mark. 71

72 This applies to signs which: - are not distinctive (see par. 2.1, present TM Guidelines); - have become customary for denoting goods of a certain kind (see par Guidelines); - are common symbols or terms (see par.2.3 and 2.4., TM Guidelines); - are descriptive in respect of the goods in terms of their nature, quality, quantity, properties, purpose, value or of the time, place and method of their production or sale (see par. 2.5, Guidelines); - consist of the shape of the product which is determined exclusively or essentially by the product s nature or purpose (see par. 2.6, present Guidelines); This provision of the Code is intended to prevent the grant of an exclusive right to an unprotectable element of the TM, but to allow the registration of the TM as a whole. Thus, unprotected elements are elements of a trade mark which do not enjoy protection. These elements may be used by others without any restraint. An element of a trade mark may be disclaimed by the applicant at filing or later, in response to the examiner s notification on compliance with protectability requirements Non-dominant unprotected elements The fact that protection is granted to a trade mark, but certain elements in it are recognized as unprotected, is stated in the resolution on the public registration of the TM in a respective column, with the relevant international digital code on bibliographic data (526). If the unprotected elements are not connected grammatically, they are indicated in the registration by listing the word, letter, figurative elements, the digits, symbols, or other unprotected elements (see examples below). 72

73 (526) Unprotected elements of the trade mark: Representation of sausages, the words: «Натуральный продукт» (natural product), «ГОСТ» (state standard). (526) Unprotected elements of the trade mark: Letters «НБК» When there are many unprotected elements, they may be indicated in the following way: (526) Unprotected elements of the trade mark: All words except for «Кириешки», realistic representation of dried breads and sausages on salad leaves. (526) Unprotected elements of the trade mark: All words and letters. When the unprotected elements are connected grammatically, forming the unprotected part of the mark, this unprotected part is presented as a combination of words: 73

74 (526) Unprotected elements of the trade mark: The words «Мастерская декора и флористики» (Décor and floristics salon) Dominant unprotected elements Article 1483, par.1, CC, states that a trade mark cannot be registered if the unprotected element is a dominant element. When assessing the dominant character of an element account should be taken of its space and position in the mark and of the visual impression produced by the element and by the mark as a whole. The role of all the elements in the mark is to be assessed, not only of the unprotected element. Furthermore, the color of an element plays an important role in its perception. When assessing the spatial value of an unprotected element, the following should be taken into account: - the size of the element compared to other elements of the TM; - positioning of the element in the TM; - graphic (color, typeface) representation of the element An unprotected element may dominate spatially if: - its representation is larger than that of other elements; - it is positioned in the centre of the mark; - its color is bright or contrasting; - it is a word element represented in unique fanciful type or graphics; - it is represented using some unique fanciful methods. The decision on the dominant nature of the unprotected element in the claimed mark should take into account not only on the characteristics of the given element, but the overall composition of the mark and the role of the unprotected element in this composition. The following are examples of signs where the unprotected element is dominant. 74

75 The word element «СЛИВОЧНОЕ» (creamy) is dominant; the meaning of the word in respect of the claimed goods makes the element unprotectable. The word element «ХОЛОДНАЯ СВАРКА» (cold welding) is dominant and describes the purpose of the goods. There are cases, when the graphics used to represent an unprotected word element are so creative that despite the large size of the element and/or its central positioning in the mark protection may be granted to the TM, leaving the word element unprotected. Some examples are given below. (526) Unprotected elements of the trade mark: «МОЛОКО» (milk) (526) Unprotected elements of the trade mark: «Молоко», «Тюмень» 2.8. Examination of signs consisting of a combination of unprotectable elements (Article 1483, par.1.1) Article 1483, par.1.1, CC, states that protection may be granted to signs consisting exclusively of unprotectable elements, listed in para.1-4 thereunder, if these elements form a combination which is distinctive. 75

76 Unprotectable elements might be combined in such a way that in respect of the claimed goods or services the combination is perceived as unusual and striking. For example, ULTRA WHITE was registered as a trade mark for food supplements containing vitamins and minerals, nonalcoholic beverages (Registration ). Smart Power was granted protection in respect of goods from Classes 5, 29, 30, 32 and services in Class 35 (Registration ). Furthermore, registration as a TM is possible for a label consisting of several unprotectable word or figurative elements which form an imaginative graphic composition (due to the positioning of the unprotectable elements, combinations of colors, etc.). Examples of such registered TMs are given below. Registration Registration (for nonalcoholic beverages cedar milk) (for fruit drinks, juices and nectars) 76

77 Registration Registration (for frozen yogurt, edible ice) (for ice cream) 2.9. Signs which acquired distinctiveness through use Article 1483, par.1, CC, lists some of the grounds for refusal of a TM registration. However, par.1.1 makes a reservation, saying that those provisions do not apply to signs which have acquired distinctiveness as a result of their use. In establishing acquired distinctiveness the following evidence submitted by the applicant is taken into account: - data on the volumes of production and volumes of sales of goods marked with the sign; - geographical territory of use of the goods marked with the sign; - duration of the use of the applied for sign; - costs of advertizing the products marked with the applied for sign; - data on the degree of awareness of the consumers, including data of opinion polls; - publications in the media relating to the goods marked with the applied for sign, including data on published advertisements; 77

78 - data on the display of the goods marked with the applied for sign at exhibitions or fairs in the Russian Federation or abroad; - other types of data. All the above data cannot be mere statements. Every argument submitted by the applicant must be supported by documents. The above evidence may be taken into consideration by the examiners as a whole or individually depending on the circumstances of the case. Protection will be granted to the applied for mark if the evidence submitted by the applicant proves that the sign was perceived by consumers as an indication of the goods being produced by a specific producer (service provider) before the filing date. The following are examples of TM registrations based on proven acquired distinctiveness through use. TM registration # Representation of TM Notes Reckitt Benckiser (the Netherlands) proved that the sign consisting exclusively of the colour pink had acquired distinctiveness in respect of goods of Class 3: bleaching preparations; preparations for cleaning carpets; stain removing preparations; all the above with or without disinfectants. The company had submitted data on production and sales volumes, on advertising costs, on the degree of awareness among consumers and other documents СУ-155 JSC «Строительное управление 155» (Construction Company 155) applied for protection of the above sign, which consists of the commonplace «СУ» (abbreviation for construction company) 78

79 м.р м.р and the numerals 155 devoid of any unique graphic representation, in respect of services in Classes 36, 37, 42. The applicant submitted as evidence of acquired distinctiveness documents proving the duration of use of the applied for mark (since 1993), evidence of the degree of awareness of customers, including publications of the mark, evidence on the geographic coverage (54 cities in Russia) and other documents. SOREMARTEC S.A. proved the acquired distinctiveness of marks consisting of the appearance of the product (candy) in a wrapper and without. The trade marks were registered for goods in Class 30 (confectionery). Sometimes the applicant is able to prove acquired distinctiveness in respect of a more narrow list of goods and services than initially claimed in the application (for example, only in respect of several positions out of the list of a certain class). The trade mark in such cases may be registered only for those goods or services in respect of which acquired distinctiveness is proven. For example: TM registration # Representation of TM Notes м.р Х5 Bayerische Motoren Werke Aktiengesellschaft claimed the mark for a broad list of goods in Classes 06, 07, 09, 11, 12, 14, 16, 18, 20, 25, 28 Based on the submitted documents proving acquired distinctiveness the mark was registered for goods in Class 12: automobiles. 79

80 Quite often applicants present photographs of billboard posters, promotional souvenirs (watches, T-shirts, caps, etc.), or brochures with representations of the applied for mark. As a rule these materials do not contain compelling evidence that the applicant is the person who placed the respective advertisements or ordered the manufacture of goods bearing the mark. Furthermore, this evidence does not allow to establish the date or territory of the mark s use. However, such evidence may be taken into account in conjunction with the following documents: contracts for the placement of advertisements showing the sign (indicating the geographic coverage); contracts for the publication of brochures, catalogues, manufacture of souvenirs, extracts from financial statements. There are cases when the applicant is able to provide reliable evidence of the use of the mark in only one subject of the Federation (a city or region). Such evidence does not allow to conclude that the mark has acquired such distinctiveness through use which would justify its protection as a trade mark, because the exclusive right to the trade mark would be valid throughout the whole Russian Federation (Article 1479, CC). 80

81 3. Examination of the Applied for Signs under Article 1231, Civil Code (protection of official emblems, names and insignia) 1. When granting protection to an applied for TM, it must be ascertained that the sign does not contain an official state emblem or insignia, a name of an international or intergovernmental organization or its official emblem, or any recognizable parts of these emblems or names, and that the mark is not a reproduction or imitation thereof. Official state emblems and insignia, names of international or intergovernmental organizations and their official emblems and signs are protected in the Russian Federation by the norms of the Civil Code and by the Paris Convention When applying the norms of the Code and of the Paris Convention, account should be taken of the fact that the Paris Convention sets minimal barriers to the registration as a trade mark or an element thereof of official emblems, names and insignia, allowing each member state of the Paris Convention to set more stringent national requirements to the protection of the rights of states and of international or intergovernmental organizations to such emblems, names or insignia in cases of trade mark registration. The norms of the Code and of the Paris Convention ensure protection of official state symbols and insignia, of names of international and intergovernmental organizations, of their official emblems and signs in totality in cases of trade mark registration. This fact should be taken into account in the reasoning stated in the examination documents. 3. Article , par.1, Code, states that protection as trade marks is not granted to signs which include, reproduce or imitate official symbols, names or insignia or recognizable parts thereof. The following are called official symbols, names and insignia in Article , par.1: 2 Конвенция по охране промышленной собственности от 20 марта 1883 года, ратифицированная Указом Президиума Верховного Совета СССР от 19 сентября 1968 года 3104-VII «О ратификации Стокгольмского акта Парижской конвенции по охране промышленной собственности и Конвенции, учреждающей Всемирную организацию интеллектуальной собственности» // Ведомости Верховного Совета СССР, 1968, 40, ст. 363 (далее - Парижская конвенция). 81

82 1) state symbols and signs (flags, coats of arms, orders, banknotes, etc.); 2) abbreviated or full names of international and intergovernmental organizations, their flags, coats of arms, other emblems and signs; 3) official hallmarks indicating control and warranty, seals, medals and other insignia. In accordance with Article , par.1, Civil Code, official symbols, names and insignia, their recognizable parts or imitations may be included in a trade mark as unprotectable parts provided that the relevant competent state authority or the relevant international and intergovernmental organizations have given their consent. 4. The competent authorities mentioned in Article , CC, are the bodies of state power of the country to which the respective flag, coat of arms, emblem, warranty hallmark or other official signs belong. In the case of flags, coats of arms, abbreviated or full names of international and intergovernmental organizations these are the supreme bodies of such organizations. These bodies have the right to allow the use of the official symbols listed in Article , CC, in trade mark registrations, in particular, in the interests of their nationals. In the Russian Federation, the competent authority that may grant consent to the use of state symbols, orders of decoration or other insignia in TMs is the Heraldic Council under the President of the Russian Federation which is in charge of all issues relating to the use of state symbols, as stipulated in the Presidential Decree of June 29, 1999, #856, On the Heraldic Council under the President of the Russian Federation. 5. Article is based on the provisions of Article 6-ter of the Paris Convention 3. Article 6-ter establishes international norms which stipulate the obligation of every member state of the Paris Convention to exclude the registration and use of trade 3 Конвенция по охране промышленной собственности от 20 марта 1883 года, ратифицированная Указом Президиума Верховного Совета СССР от 19 сентября 1968 года 3104-VII «О ратификации Стокгольмского акта Парижской конвенции по охране промышленной собственности и Конвенции, учреждающей Всемирную организацию интеллектуальной собственности» // Ведомости Верховного Совета СССР, 1968, 40, ст. 363 (далее - Парижская конвенция). 82

83 marks or elements thereof that are identical or in some way similar to state emblems (flags, coats of arms and other state emblems) of the member states or to the emblems, abbreviations and names of international intergovernmental organisations of which one or more parties to the Paris Convention are members. Article 6-ter also excludes any imitation of these signs from a heraldic point of view. Thus, Article 6-ter guarantees the support of the right of every member State of the Paris Convention to control the use of symbols of its sovereignty. Furthermore, Article 6-ter precludes the misleading of the public in respect of the origin of the goods to which official state symbols and signs, names and abbreviations of international and intergovernmental organizations or their emblems are applied. Origin in this regard must be understood as coming from or endorsed by the relevant administration, not as being produced in the territory of that state. Protection of official symbols, names and signs of states and international and intergovernmental organizations, except for protection of flags, is based on the system of communication by the member states of the Paris Convention and by international intergovernmental organizations to the WIPO IB of the official symbols, names and signs they want to have protected. 6. Compared to Article 6-ter of the Paris Convention, Article of the Civil Code sets more stringent requirements to the protection of official symbols, names and signs, which are taken into account during examination. Article protects official state symbols of other countries irrespective of whether they are members of the Paris Convention, including state symbols of WTO member states. Furthermore, Article , CC: 1) applies not only to trade marks, but to service marks as well; 2) protects names and official symbols not only of intergovernmental organizations, but of other international organizations too; 3) allows, based on an authorization of the respective competent state body, or of the international or intergovernmental organization only to include the official 83

84 symbol, name, sign, recognizable parts or imitations thereof into a trade mark as unprotectable elements, but not to register them as trade marks. 4) prohibits imitations of official symbols, names and signs, or their recognizable parts, whereas Article 6-ter prohibits only heraldic imitations. 7. During examination under Article , CC, the following provisions of Article 6-ter, PC, are also taken into account: а) Prohibition on the use of international intergovernmental official symbols, names and signs, elements and imitations thereof in trade marks only if this use or registration is of such a nature as to mislead in respect of the origin of the goods; б) Exception of names or symbols which already are the subject matter of international agreements, for example, the Geneva Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces of 12/08/1949, Article 44 of which protects the emblems of the Red Cross on a white ground, the words Red Cross or Geneva Cross, and analogous emblems. в) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind. 8. Imitation of official symbols and signs means their confusingly similar reproduction. Assessment of similarity to the degree of confusion with an official symbol, name or sign is conducted in accordance with the same rules as applied to the assessment of similarity to the degree of confusion between trade marks. Heraldic imitation means the reproduction of an official symbol or badge from a heraldic point of view, i.e. the reproduction of the heraldic characteristics of the symbol. Assessment of heraldic imitation is of special importance when the applied for sign contains an official symbol or sign, or a recognizable part thereof (or their imitation) as an element, especially if this element is not the dominant one in the composition. When making a comparison from a heraldic point of view, account must be taken of the heraldic description of the emblem concerned. 84

85 A heraldic description is a relatively simple description of the layout and background colour that also lists the different elements (such as a lion, an eagle, a flower, etc.) constituting the emblem and gives information on their colour and position within the emblem. However, a heraldic description does not give details of the design of the emblem and the specific elements that constitute it, with the result that a number of artistic interpretations of one and the same emblem on the basis of the same heraldic description are possible. Although there may be differences in detail between each of those interpretations, the fact remains that they will all be imitations from a heraldic point of view of the emblem concerned A heraldic description is different from a detailed (geometric) description. For example, an examiner should take into account the heraldic description of the European emblem on an azure field a circle of twelve golden mullets, their points not touching and not its geometrical description: the emblem is in the form of a blue rectangular flag of which the fly is one and a half times the length of the hoist. Twelve gold stars situated at equal intervals form an invisible circle whose centre is the point of intersection of the diagonals of the rectangle. The radius of the circle is equal to one third of the height of the hoist. Each of the stars has five points which are situated on the circumference of an invisible circle whose radius is equal to one eighteenth of the height of the hoist. All the stars are upright that is to say, with the one point vertical and two points in a straight line at right angles to the mast. The circle is arranged so that the stars appear in the position of the hours on the face of a clock. Their number is invariable. Indeed, if the geometric description of the emblem were taken into account, this would lead to the majority of claimed marks containing heraldic elements of this emblem being granted protection. Since official symbols and signs often consist of common symbols, such as a lion, eagle, the Sun, imitations from a heraldic point of view are forbidden under Article 6-ter only if they reproduce the heraldic characteristics of the respective coat of arms of a state. If the characteristics are reproduced, a conclusion on heraldic imitation may be drawn which preclude the registration of the applied for mark under Article 6-ter PC. 85

86 However, heraldic imitation may be found even if only a part of the protected official symbol is reproduced, but this reproduced part is an important element of the protected sign and a unique heraldic feature. This is because any difference between the element in the claimed mark and the state emblem detected by an expert in heraldry would not necessarily be perceived by the average consumer who, despite some differences in heraldic details, can see in the mark an imitation of the emblem. In accordance with Article 123.1, CC, the perception by the public of an element in an applied for mark as an imitation of an official symbol serves as absolute grounds for a refusal to register it in the absence of an authorization from competent authorities. 9. Article 6-ter, PC, also allows the application of Article 6-quinquies(в)(3), PC, to refuse or to invalidate the registration of marks incorporating, without authorization, armorial bearings, flags, other State emblems, or official signs. Hence, registration of a TM containing an official symbol or name, protected under Article 6-ter, PC, may be refused or invalidated under the national legislation on the grounds that they are contrary to morality or public order, and, in particular, of such a nature as to deceive the public. In the Code, the provision precluding the registration of TMs which are contrary to public interest and are capable of deceiving the public, is contained in Article 1483, par.4., which may also be applied to refuse the registration of signs reproducing, imitating or containing official symbols, names and signs. 10. Thus, examination of the applied for sign as to compliance with the requirements of Article , Code, entails examination as to compliance with Article 6-ter, Paris Convention. If the examination concludes that there is incompliance of the claimed sign with Article , CC, and Article 6-ter, PC, or incompliance with only Article , then there are grounds to conclude that there is no compliance with Article 1483, par.3, subpar.1, either. 11. Official representations of state, international intergovernmental and other official symbols, names and signs may be found in the WIPO data base IPDL «Article 6-ter» (StateEmblems, OfficialHallmarks, and Emblems of 86

87 Intergovernmental Organizations), which includes information for the purposes of applying Article 6-ter. Two types of search are possible in this data base: Simple search Structures search More information about searches in this data base is provided in Annex A to these Guidelines. Search may also be conducted in other information resources containing representations of state symbols and signs, in particular, official web sites of foreign countries or sites listed on the web site of the Heraldic Council under the President of the Russian Federation: - the educational resource on contemporary Russian coats of arms ; - Internet project on heraldics and vexillology: ; - web site of the Union of Heraldists of Russia: Printed sources may be used, including encyclopedia and dictionaries in the Russian Patent/Technical Library, in particular: Shepelev L.E., Russian Heraldics in the XVIII early XX centuries, Aurora Publishers, 2003; Encyclopedia of Symbols, Signs, Emblems, compiled by V.Andreev; Lokid Publishers, The following are some examples of official symbols, names and signs State flags usually consist of a distinctive rectangular design that is used as the symbol of a nation. Flag of the Republic of Croatia 87

88 Flag of the Republic of Armenia Flag of Portugal The use of the flag of the Russian Federation is regulated by the Federal Constitutional Law On the State Flag of the RF, of State armorial bearings usually consist of a design or image on a shield Cuban armorial bearing 88

89 Austrian armorial bearing Armenian armorial bearing State symbols cover any emblems constituting the symbol of the sovereignty of a State, including the escutcheons of reigning houses as well as emblems of States included in a federative state. Danish state emblem The use of the emblem of the Russian Federation is regulated by the Federal Constitutional Law On the State Emblem of the RF, of International intergovernmental organisations (IGOs) include bodies such as the United Nations, the Universal Postal Union, the World Tourism Organization, WIPO, etc. An emblem of an international intergovernmental organization is, for example, the emblem of the International Organization for Standardization: 89

90 12.5. In this respect, the European Union may be conditionally called an international organization, though it must be considered neither as an international organisation in the usual sense nor as an association of states, but rather as a supranational organisation, i.e. an autonomous entity with its own sovereign rights and a legal order. Though, for the purposes of applying Article 6-ter of the Paris Convention the EU is treated as an international organization. The most relevant EU flags and symbols, protected by the Council of Europe, are shown here: The following have been protected for the European Central Bank: The use of hallmarks on jewelry and precious metals is regulated by the Rules on Federal Hallmarks Oversight, which is governed by the Federal Law of March 26, 1998, #41, On Precious Metals and Gems, the Decree of the 90

91 Government of the Russian Federation of June 18, 1999, #643, On the Procedures for Testing and Hallmarking of Precious Metals, Par.3, Decree of the Government of the Russian Federation of June 30, 2004, #329, On the Ministry of Finance of the Russian Federation, and by the Regulations on the Russian State Hallmarks Chamber, Ministry of Finance of the RF (hereinafter the Hallmarks Chamber). Some examples of hall marks are given below. Russian hallmarks for gold articles UK hallmark for platinum articles The purpose of official signs and hallmarks indicating control and warranty is to certify that a state or an organisation duly appointed by a state for that purpose has checked that certain goods meet specific standards or are of a given level of quality. There are official signs and hallmarks indicating control and warranty in several states for precious metals or products such as butter, cheese, meat, electrical equipment, etc. Official signs and hallmarks may also apply to services, for instance those relating to education, tourism, etc. See the following examples of old-fashioned Russian hallmarks. 91

92 12.7. Compliance signs are also one of the official control, warranty or standard signs. The use of compliance marks is regulated by the federal law On Technical Regulation. Article 2 of this law states that a compliance mark is a sign which serves to inform the consumers that the certified object satisfies the requirements of a voluntary certification system or of a national standard. Furthermore, in accordance with Article 17 of the same law, there may be standards of various organizations, such 92

93 as commercial organizations, public, scientific, self-regulated organizations, associations of companies, which may be designed and approved by these organizations independently. General information on compliance marks may be found in special guidelines drafted by ISO and the International Electrotechnical Commission (IEC). A compliance mark (in the area of certification) is a protected mark used to certify the compliance with a certain standard or normative act. Compliance marks may be applied to the product, its packaging or documentation; it may also be used on official stationary, in advertizing. There are national and transnational compliance marks. The following are Russian compliance marks used in the certification system in the RF. Compliance marks, used by various organizations or associations of legal entities, under the voluntary certification system are also official signs. The following is the compliance mark used by organizations and associations of legal entities under the voluntary certification system «ХАССП-МЯСО» (meat). Organizations working in the area of labour safety and security use the following mark: 93

94 12.8. Transnational compliance marks are used in some countries to acknowledge test and control results based on the harmonized standards of the European Committee for Standardization (СЕМ). 13. The following rules should be applied when examining an applied for sign, which contains, reproduces or imitates official state emblems and signs or recognizable parts thereof (flags, armorial bearings, orders, etc.), under Article , par.1, subpar.1, Civil Code, and Article 6-ter, Paris Convention. Article , par.1, subpar.1, Civil Code, states that protection is refused to signs which: are an identical reproduction or an imitation of a state symbol or sign; are an identical reproduction or an imitation of a recognizable part of a state symbol or sign; contain an identical reproduction or an imitation of a state symbol or sign; contain an identical reproduction or an imitation of a recognizable part of a state symbol or sign. Official symbols and signs, their imitations or recognizable parts may be included in a trade mark as unprotectable elements on condition that the relevant authority has given its consent. 94

95 If the application documents and the preliminary search suggest that the applied for sign may be recognized as containing, reproducing or imitating a state symbol or sign (or its recognizable part), the following steps must be taken: 1) Carry out a search in the special data bases and find the official representation of the state symbol or sign. 2) Compare the official representation of the state symbol or sign with the applied for sign to answer the following questions: a) is the applied for sign identical to the state symbol or sign; b) does the applied for sign imitate the state symbol or sign; c) is the applied for sign identical to a recognizable part of the state symbol or sign; d) does the applied for sign imitate a recognizable part of the state symbol or sign; e) does the applied for sign contain an element which is identical to the state symbol or sign; f) does the applied for sign contain an element which imitates the state symbol or sign; g) does the applied for sign contain an element which is identical to a recognizable part of the state symbol or sign; h) does the applied for sign contain an element which imitates a recognizable part of the state symbol or sign; 3) If none of the questions are answered positively there are no grounds to refuse registration under Article , par.1, subpar.1, Civil Code, nor under Article 6- ter, Paris Convention. 4) If at least one of the questions in points a, b, c, d is answered positively, there are grounds to refuse registration of the applied for sign under Article , par.1, subpar.1, Civil Code, and under Article 6-ter, Paris Convention. Further handling of the application will follow the procedure described in Article 1499, par.3, CC. 5) In case of a positive answer to at least one of the questions in points e, f, g, h, the availability of an authorization from the relevant authority must be ascertained. 95

96 If the relevant authority has granted its consent, there are grounds to conclude that there are no obstacles, set by Article , par.1, subpar.1, nor by Article 6-ter, Paris Convention, to register the applied for sign as a trade mark. 6) If the applicant failed to submit the authorization, it should be requested, as described under Article 1497, CC. If the authorization is still not submitted after the request to do so, there are grounds to conclude that there are obstacles, set by Article , par.1, subpar.1, and by Article 6-ter, Paris Convention, to register the applied for sign. Further handling of the application will follow the procedure described in Article 1499, par.3, CC. 7) The notification on the examination results must indicate the source referred to for official information on the cited flag. The goods and services in respect of which registration is claimed are not taken into account in this examination. 8) If the applied for sign contains, reproduces or imitates an official symbol, name or sign of an international nongovernmental organization, the examination, stipulated in Article 6-ter, Paris Convention, is not conducted. Registration of such a mark is possible, provided it does not conflict with Article , nor with Article 1483, par.3, subpar.1, CC. 9) The following examples illustrate the application of these provisions. а) The applied for sign (on the right) contains an element which reproduces a recognizable part of the Swiss flag (on the left). A heraldic imitation was found. 4 Registration of this mark without the consent of the relevant Swiss authorities would run against: 4 The Russian original actually says: As a result of the examination of the heraldic description of the Swiss flag the conclusion was drawn that a matching of unique heraldic features is identified on the images and, consequently, there is heraldic imitation. 96

97 Article 6-ter, Paris Convention (use of a heraldic imitation of the Swiss flag as an element of the applied for mark); Article , par.1, subpar.1, Civil Code (use of a recognizable part of the Swiss flag as an element of the applied for mark); Article 1483, par.3, subpar.1, CC (misleading the public as to the origin of the goods and services). Swiss flag CTMA б) The applied for black and white mark (on the right) contains as an element a reproduction of a recognizable part of the Canadian flag (on the left). Heraldic imitation was found 5. Registration of this mark without the consent of the relevant Canadian authorities would run against: Article 6-ter, Paris Convention (use of a heraldic imitation of the Canadian flag as an element of the applied for mark); Article , par.1, subpar.1, Civil Code (use of a recognizable part of the Canadian flag as an element of the applied for mark); Article 1483, par.3, subpar.1, CC (misleading the public as to the origin of the goods and services). Canadian flag CTMA Same wording as above. 97

98 On the other hand, for flags consisting only of stripes of three colours (whether vertical or horizontal) a black-and-white reproduction will not be considered a heraldic imitation because flags of that kind are quite common. As seen above, the presence of other elements in the marks is irrelevant. в) The following examples illustrate the lack of a heraldic imitation of the Italian flag. These are cases when the element has, for instance, a different shape. However, this does not lead to a universal finding of protectability. In the first case (the claimed mark is on the right, the flag on the left) it is clear that there is no matching of unique heraldic features and, hence, no heraldic imitation. The claimed sign contains an element which is confusingly similar to the Italian flag the colored band. The color and design of this part of the band reminds of a flying Italian flag. Registration of such a mark without authorization from the relevant bodies would have run against: Article , par.1, subpar.1, Civil Code (use of an imitation of the Italian flag as an element of the applied for mark); Article 1483, par.3, subpar.1, CC (misleading the public as to the origin of the goods and services). In the second example the applied for mark does not contain elements that evoke the Italian flag. Obviously, there is no matching of unique heraldic features and, hence, there is no heraldic imitation. Only the colors match. However the color combination is combined with expressive graphics, which does not give rise to direct associations with the Italian flag. Registration of such a sign without authorization from Italian authorities is possible. CTMA (first example) 98

99 Italian flag CTMA г) The example with the Finnish flag is similar to the case with the Italian flag. Registration of such a sign is possible without authorization from Finnish authorities. Finnish flag CTMA г) The example with the Israeli flag is similar to the first case with the Italian flag. Registration of such a mark without authorization from the relevant bodies of Israel is hardly possible, because the sign contains an element which imitates the flying Israeli flag in terms of color and image. 10) The same steps mentioned in relation to State flags are followed also when examining marks that consist of or contain armorial bearings, other state emblems or recognizable parts thereof. The following examples illustrate how these provisions are applied. 99

100 а) The applied for mark contains an element which reproduces the British emblem. An analysis of the heraldic description of the British emblem produces a finding of matching heraldic features the supporting animals. Slight differences in the animals attire, in particular, the crowns will not be detected by the average consumer, hence, there is a heraldic imitation. Registration of this mark without the authorization of the competent British authorities would run against: Article 6-ter, Paris Convention (use of a heraldic imitation of the British emblem as an element of the applied for mark); Article , par.1, subpar.1, Civil Code (use of a recognizable part of the British emblem as an element in the applied for mark); Article 1483, par.3, subpar.1, CC (misleading the public as to the origin of the goods and services). A similar approach may be applied to the Canadian emblem. The black and white reproduction of the emblem may be recognized as a heraldic imitation, if the protected emblem contains some unique heraldic features, for instance, the maple leaf in the Canadian emblem. Protected emblem Refused CTMA British emblem: 6ter Number: GB4 CTMA , T-397/09 Canadian emblem: 6ter Number: CA2 CTMA (CJEUC-202/08). 100

101 б)a heraldic imitation is found even if only a part of the protected emblem is reproduced, if this part is a significant element of the emblem and a unique heraldic device. For example, the claimed mark (on the right) contains an element which reproduces a significant element of a protected symbol the Emblem of the Justice Department of the USA. The element is the eagle with arrows and it is a unique heraldic device. Since this significant heraldic device is reproduced in the applied for mark, a heraldic imitation was found. Registration of this mark without the authorization of the competent US authorities would have run against: Article 6-ter, Paris Convention (use of a heraldic imitation of the emblem of the Department of Justice of the USA as an element in the applied for mark); Article , par.1, subpar.1, Civil Code (use of a recognizable part of the emblem of the Department of Justice of the USA as an element in the applied for mark); Article 1483, par.3, subpar.1, CC (the mark is capable of misleading the public as to the origin of the goods and services). Protected emblem Refused CTMA Emblem of the Justice Department of the USA; 6ter Number: US40 CTMA в) In the following example there is no heraldic imitation of a state emblem, because the significant heraldic device of the protected symbol (the shield) has a clear oval shape, which is not reproduced in the claimed mark (on the right). Nor can it be said that a recognizable part of the protected Austrian emblem is used as an element in the claimed mark, because the expressive shape of the element, contained in the claimed mark, is not associated with emblem due to the significant 101

102 difference in the shapes. Thus, the analysis shows that there are no obstacles for registration of the claimed mark as a trade mark. Protected emblem Accepted CTMA 6-ter number: AT10 CTMA Examination of a claimed mark, which contains, reproduces or imitates a full or abbreviated name of an international or intergovernmental organization, or a flag, emblem, armorial bearing thereof, as to compliance with Article , par.1, subpar.1, Civil Code, and Article 6-ter, Paris Convention, is regulated by the following rules: Article , par.1, subpar.2, Civil Code, states that legal protection as a trade mark is not granted to signs, which: reproduce identically or imitate the name, symbol or sign of an international or intergovernmental organization; reproduce identically or imitate a recognizable part of a name, symbol or sign of an international or intergovernmental organization; contain an identical reproduction or an imitation of a name, symbol or sign of an international or intergovernmental organization; contain an identical reproduction or an imitation of a recognizable part of a name, symbol or sign of an international or intergovernmental organization. The name, symbol or sign of an international or intergovernmental organization, their recognizable parts or respective imitations may be included in a trade mark as unprotectable elements, if the relevant competent body has given its authorization to do so. Once the examiner sees that a mark may be recognized as containing, reproducing or imitating a name, symbol or sign of an international or intergovernmental organization (or a recognizable part of the name, symbol or sign of an international or intergovernmental organization) the following steps must be taken: 102

103 1) Carry out a search in the special data bases to find the official representation of the name, symbol or sign of the international or intergovernmental organization. 2) Compare the found official representation of the name, symbol or sign of the international or intergovernmental organization with the applied for sign to answer the following questions: a) is the applied for sign identical to the name, symbol or sign of the international or intergovernmental organization; b) does the applied for sign imitate the name, symbol or sign of the international or intergovernmental organization; c) is the applied for sign identical to a recognizable part of the name, symbol or sign of the international or intergovernmental organization; d) does the applied for sign imitate a recognizable part of the name, symbol or sign of the international or intergovernmental organization; e) does the applied for sign contain an element which is identical to the name, symbol or sign of the international or intergovernmental organization; f) does the applied for sign contain an element which imitates the name, symbol or sign of the international or intergovernmental organization; g) does the applied for sign contain an element which is identical to a recognizable part of the name, symbol or sign of the international or intergovernmental organization; h) does the applied for sign contain an element which imitates a recognizable part of the name, symbol or sign of the international or intergovernmental organization; 3) If none of the questions are answered positively there are no grounds to refuse registration under Article , par.1, subpar.1, Civil Code, nor under Article 6- ter, Paris Convention. 4) If at least one of the questions in points a, b, c, d, e, f, g, h is answered positively, it should be ascertained that the claimed sign will not be associated in the minds of the consumers with the respective international or intergovernmental organization. If it is ascertained that the claimed sign will not be associated in the minds of the consumers with the respective international or intergovernmental organization, in particular, that the claimed goods or services are not similar with the activities of 103

104 the international or intergovernmental organization, it may be concluded that the claimed sign will not mislead the public and, hence, that the grounds for refusing registration under Article , par.1, subpar.1, Civil Code, or under Article 6- ter, Paris Convention, are not applicable. 5) If it is established that the claimed sign will be associated in the minds of the consumers with the respective international or intergovernmental organization, the following steps are taken: If at least one of the questions in points a, b, c, d is answered positively, there are grounds to conclude that the claimed sign may mislead the public and, hence, there are grounds to refuse registration of the applied for sign under Article , par.1, subpar.1, Civil Code, and under Article 6-ter, Paris Convention. Further handling of the application will follow the procedure described in Article 1499, par.3, CC. The examiner s decision must indicate the goods and services in respect of which the mark cannot be registered. In case of a positive answer to at least one of the questions in points e, f, g, h the availability of an authorization from the relevant international or intergovernmental organization must be ascertained. If the authorization has been submitted, there are grounds to conclude that there are no obstacles, set by Article , par.1, subpar.1, nor by Article 6-ter, Paris Convention, to register the applied for sign as a trade mark. If the applicant has failed to submit the authorization, it should be requested, as described under Article 1497, CC. If the authorization is still not submitted after the request to do so, there are grounds to conclude that the claimed mark may mislead the public and, hence, there are obstacles, set by Article , par.1, subpar.1, and by Article 6-ter, Paris Convention, to register the applied for sign. Further handling of the application will follow the procedure described in Article 1499, par.3, CC. The examiner s decision must indicate the goods and services in respect of which the mark cannot be registered. 6) The examination described hereunder is not carried out in cases when these names, symbols or signs are already the subject matter of international agreements. 104

105 7) The following examples illustrate the application of the above provisions in cases when it has been established that the claimed sign will be associated with respective EU bodies. An association with the EU is possible not only if the claimed goods or services are similar to EU activities, but also if the consumer thinks that the goods or services have been approved by or are under the warranty of the EU, or are in some other way connected to EU bodies. Bearing in mind that the European Union is active in numerous sectors and regulates goods and services in all fields of industry and commerce, as is clear from the wide variety of Directives that it has adopted, and that average consumers could be aware of such activities, in practice, it means that a link is very likely to be found in most cases. The examiner must take into account also the other elements of which the mark is composed. For it cannot be ruled out that all the other elements of the sign could lead to the conclusion that the public would not connect the sign with an international intergovernmental organisation. As a rule, word elements such as EURO / EUROPEAN in a claimed sign are likely to suggest a connection even more, since they could be perceived as implying an official EU agency s approval, quality control or warranty services in respect of the claimed goods and services. а) The following applied for marks couldn t have been granted protection, because they contain elements which constitute a heraldic imitation of the EU flag, protected under the code QO188 in the WIPO IB register, and they may be associated with the EU. CTMA CTMA CTMA

106 CTMA CTMA (T-127/02) CTM (1640 C) CTMA (T-413/11) Флаг Европейского союза For heraldic imitations of the European Union flag (QO188 above), it is considered relevant that there are 12 five-pointed stars, in a circle and not touching each other, and the stars contrast with a darker background. In particular, it must be taken into account that the device in the form of twelve stars arranged in a circle is the most important element of the European Union emblem ( the emblem ) because it conveys strong messages: (a) the circle of gold stars symbolises solidarity and harmony between the peoples of Europe and (b) the number twelve evokes perfection, completeness and unity. The other element of the emblem is a background suitably coloured to highlight the device. A black and white representation of the EU flag may also be considered a heraldic imitation if the stars contrast with the black background in such a manner as to produce the impression of a black and white reproduction of the EU flag. 106

107 б) The following two marks were not considered heraldic imitations. In the first example the black and white reproduction of a ring of twelve stars on a dark background does not give the impression of being a black-and-white reproduction of the EU flag. However, the coloristic and graphic presentation of this part of the sign are associated with the EU flag. In the second example the semicircle made of yellow stars on a blue background doesn t produce the impression of reproducing the EU flag per se. However, this element leaves the impression of an EU flag flying behind a house. This impression is strengthened by the use of the word element EURO. Thus, the coloristic and graphic presentation of the part of the sign, which consists of the semicircle made of yellow stars on a blue background, is also associated with the EU flag. Registration of such signs without the authorization of EU competent bodies would run against: Article , par.1, subpar.1, Civil Code (use of a recognizable part of the EU flag as an element of the claimed mark) Article 1483, par.3, subpar.1, CC (the mark is capable of misleading the public in respect of the origin of the goods or services). в) The registration of the following three marks would not run against Article 6-ter, Paris Convention, nor against Article , par.1, subpar.1, Civil Code, or Article 1483, par.3, subpar.1, CC. The absence of a dark background precludes any associations with the EU flag. 107

108 15. Examination of a claimed mark, which contains, reproduces or imitates an official control, warranty or standard hallmark, seals or decorations (hereinafter distinction signs), as to compliance with Article , par.1, subpar.3, Civil Code, and Article 6-ter, Paris Convention, is regulated by the following rules: Article , par.1, subpar.3, Civil Code, states that legal protection as a trade mark is not granted to signs, which: reproduce identically or imitate a distinction sign; reproduce identically or imitate a recognizable part of a distinction sign; contain an identical reproduction or an imitation of a distinction sign; contain an identical reproduction or an imitation of a recognizable part of distinction sign. A distinction sign, a recognizable part or imitation thereof may be included in a trade mark as an unprotectable element, if the relevant competent body has given its authorization to do so. Once the examiner sees that a mark may be recognized as containing, reproducing or imitating a distinction sign (or a recognizable part thereof) the following steps must be taken: 1) Carry out a search in the special data bases to find the official representation of the distinction sign. 2) Compare the found official representation of the distinction sign with the applied for sign to answer the following questions: a) is the applied for sign identical to the distinction sign; b) does the applied for sign imitate the distinction sign; c) is the applied for sign identical to a recognizable part of the distinction sign; 108

109 d) does the applied for sign imitate a recognizable part of the distinction sign; e) does the applied for sign contain an element which is identical to the distinction sign; f) does the applied for sign contain an element which imitates the distinction sign; g) does the applied for sign contain an element which is identical to a recognizable part of the distinction sign; h) does the applied for sign contain an element which imitates a recognizable part of the distinction sign; 3) If none of the questions are answered positively there are no grounds to refuse registration under Article , par.1, subpar.3, Civil Code, nor under Article 6- ter, Paris Convention. 4) If at least one of the questions in points a, b, c, d, e, f, g, h is answered positively, it should be ascertained that the goods or services, in respect of which the mark is claimed, are not similar to the goods or services for which the distinction sign is intended. If dissimilarity is established, it may be concluded that there are no grounds to refuse registration under Article , par.1, subpar.3, Civil Code, nor under Article 6-ter, Paris Convention. 5) If similarity is established, the following steps are taken. A positive answer to at least one of the points a, b, c, d serves as grounds to refuse registration of the applied for sign under Article , par.1, subpar.3, Civil Code, and under Article 6-ter, Paris Convention. Further handling of the application will follow the procedure described in Article 1499, par.3, CC. The examiner s decision must indicate the goods and services in respect of which the mark cannot be registered. In case of a positive answer to at least one of the questions in points e, f, g, h, the availability of an authorization from the competent state body must be ascertained. 109

110 If the authorization has been submitted, there are grounds to conclude that there are no obstacles, set by Article , par.1, subpar.3, nor by Article 6-ter, Paris Convention, to register the applied for sign as a trade mark. If the applicant has failed to submit the authorization, it should be requested, as described under Article 1497, CC. If the authorization is still not submitted after the request to do so, there are grounds to conclude that there are obstacles, set by Article , par.1, subpar.3, and by Article 6-ter, Paris Convention, to register the applied for sign. Further handling of the application will follow the procedure described in Article 1499, par.3, CC. The examiner s decision must indicate the goods and services in respect of which the mark cannot be registered. 110

111 4. Examination under Article 1483, Par. 3, Civil Code 4.1. Signs consisting of or containing deceptive or misleading elements General. Article 1483, par.3, subpar.1, Civil Code, prohibits registration of signs consisting of or containing deceptive or misleading elements. This norm is intended to protect the consumers interests. It also applies to service marks. This norm applies to marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services. A mark is considered deceptive or misleading if at least one of its elements is deceptive or misleading. A claimed mark might contain elements suggesting a certain type of product, certain characteristics of the product, information about the manufacturer, etc., and elements which evoke in the consumer s mind certain expectations or impressions based on associations. Elements of a sign directly suggesting the type of product and/or its characteristics or containing data about the manufacturer, which are not true, are called deceptive ( false ). Deceptiveness of the elements is obvious. It does not need to be substantiated. Elements of a sign which suggest the type of product or its characteristics based on the associations that appear in the consumer s mind, are called misleading. The ability of these elements to mislead is not quite obvious. It is probable. The issue of whether a mark is false (misleading) is considered with regard to the goods and services in respect of which the mark is claimed. 111

112 Analysis of an applied for mark (and its elements) as to its false or misleading character The semantic meaning of each element contained in the mark must be analyzed to determine whether or not the applied for mark is false or misleading. This analysis should take into account the data about the applicant, the applied for mark, the list of goods or services as well as other information from dictionaries, encyclopedias, reference books and the Internet Marks consisting of or containing false elements The following recommendations should be observed when examining a mark as to its deceptiveness. If the applied for mark contains elements directly indicating the type of product or service, it should be assessed whether this element is deceptive in respect of the claimed goods or services. Such a situation may occur when a mark containing an indication of a certain type of product (service) is claimed for a broad list of goods or services. Examples: 1. A mark containing the word elements «Журавли» (cranes) and «водка» (vodka) was claimed for a wide group of products (alcoholic beverages). 112

113 The word element «водка» suggests a specific type of product. As for the wording alcoholic beverages, it covers a broad range of products, including brandy, wine, beer. In this situation the examiners would conclude that the mark may be registered for alcoholic beverages, namely, vodka, and for all the other products the mark cannot be registered because it would be deceptive in respect of them. 2. A mark containing the word elements «Miller», «Genuine draft», «Cold Filtered Beer» was claimed for a wide group of products: beer, mineral and soda water, other nonalcoholic beverages; fruit drinks and fruit juices; syrups and other compositions for preparing beverages. The word element «Cold Filtered Beer» points at a certain type of product and at certain characteristics. In such a situation the examiners would conclude that the applied for mark may be registered for the product beer, but not for all the other products on the list, because it would be deceptive in respect of them. 3. A mark containing the word elements «Жасмин» (jasmine) and «химчистка» (drycleaners) was claimed for such services as: construction, repair; repair of photo cameras; repair and maintenance of watches; window cleaning; clothes cleaning; dry cleaning. The word element «химчистка» suggests a specific type of services. In such a situation the examiners would conclude that the applied for mark may be registered for some of the services, namely, clothes cleaning, dry cleaning, whereas for all the other services on the list it would be deceptive. 4. A figurative mark, containing a realistic representation of goods (sausages), was applied for registration in respect of: sausages, fish fillet, yoghurt, confectionery. 113

114 In such a situation the examiners would conclude that the applied for mark may not be registered for fish fillet, yoghurt, confectionery, because it would be deceptive in respect of them Marks consisting of or containing elements liable to mislead the public as to the nature of the product, its properties or quality During the examination of an applied for mark it should be assessed whether the mark contains any elements which may evoke in the consumers minds a certain product (service) or quality or properties thereof which may not correspond to reality. When a mark contains an indication of a specific type or quality of a product or service and is claimed for a wide list of goods or services, it may mislead the consumer in respect of the type, properties or quality of some of the goods (services) on the list. The consumer might perceive the goods (services) as being of a certain type or having certain properties or qualities, which do not correspond to reality. Examples: 1. A combined mark consisting of the word elements Camel, Natural Wool and of a figurative element represented by a stylized camel was applied for in respect of goods in Class 22: camel wool, wood wool, upholstery wool, fleece wool. 114

115 In this case the examiners would find the applied for mark to be misleading in respect of the type of product and the material of some of the claimed goods in Class 22, such as wood wool; fleece wool. 2. A mark containing a figurative element in the form of a stylized pig s head was applied for goods in Class 29: preserved meat, namely, stewed beef, stewed pork, stewed horse meat. In this case the examiners would find the applied for mark to be misleading in respect of the type of product and of the composition of some of the claimed goods in Class 29, such as, preserved meat, namely, stewed beef, stewed horse meat. 3. A service mark containing the word element «Частная пивоварня» (private beer brewery), suggesting a specific type and purpose of services, was applied for registration. 115

116 The list of goods and services in respect of which registration is sought contains, besides goods in Class 32: beer, beer wort, the following services: Class 35 - evaluation of not felled timber, evaluation of wool; Class 36 - money exchange; valuation of works of art; banking services; Class 39 - rental of wheelchairs; lifting of drowned vessels. In this case the examiners would find the applied for mark to be misleading in respect of all the above services, because such services are not rendered by beer breweries. Marks containing realistic representations of goods or of their ingredients may be recognized by the examiners as indicating the type of product/service or the ingredients. Hence, such marks may also mislead the consumer as to the type of product or the ingredients. For example, the mark below, containing a realistic representation of a pineapple may be considered as misleading the consumer in respect of the ingredients stated in the list of goods as vegetable preserves, because a pineapple is not a vegetable, but a fruit. Whereas a mark containing a realistic representation of an apple and a banana may be considered fanciful in respect of water colours. 116

117 If a mark contains elements which usually symbolize a certain area of activities or a certain industry, these elements should be assessed as to whether they are liable to mislead the public as to the nature or quality of the goods/services concerned For example the inclusion of the customary medical symbol of a chalice with a snake For such goods as alcoholic beverages or confectionery is liable to mislead the public as to the nature and purpose of the goods Marks consisting of or containing elements liable to mislead the public as to the manufacturer During the examination of an applied for mark it should be assessed whether the mark contains any elements which point at a specific manufacturer or which are likely to evoke a specific manufacturer in the consumers minds. If this information is not true in regard of the applicant the applied for mark should be declared liable to mislead the consumer as to the manufacturer. In particular, imitations of famous marks may be declared as misleading the consumer as to the manufacturer. The table below shows the marks of leading alcoholic beverages producers and automobile manufacturers in the left column. The right column shows the imitating applied for marks which were refused. 117

118 Original mark Imitating mark In some cases the applied for marks imitate signs which are not registered as trade marks, but which were put on the market by other business entities. In such cases this business entity, as a rule, informs the examiners of the improper actions of the applicant. This information is taken into account during examination if it is supported by documents. These could be documents proving that this business entity had put the respective sign on the market prior to the filing date of the opposed mark. Such documents may include excerpts from companies charters, contracts or way bills, advertizing contracts, information from the media showing goods marked with the opposed sign. Examples: 118

119 1. The following service mark was applied for by the sports club Flight Fit from the city of Podolsk Later, during examination, a written notice from the sports club Fitness One from Moscow, with reasoning against the registration of the applied for mark, was lodged. The notice stated that the applicant was their competitor and that the graphic and word elements of the applied for mark were copied from the sign which had been designed for the Fitness One club. A copy of the contract with the designer to design a sign for the Fitness One club and evidence of the sign having been used by them prior to the filing date of the application from Flight Fit were submitted as proof. In this case, taking into account the submitted documents, the examiners should refuse the registration of the applied for mark on the grounds that it might mislead the consumers in respect of the service provider. 2. Tipco Foods Public Company Ltd applied for the registration of the trade mark Tipco (see below). After examination a notice was sent to the applicant stating the finding of similarity to the degree of confusion with a mark, which had been earlier applied for by a Russian company (see below). 119

120 Tipco Foods Public Company Ltd (Thailand) sent a communication to the office on the illegitimacy of granting protection to the mark in the name of the Russian company, since the mark is liable to mislead the consumers in respect of the producer of the goods. The evidence they submitted included documents showing that Tipco Foods Public Company Ltd, which was created in 1976, was a leading producer of foodstuffs and juices in South East Asia and that their products were exported to many countries, including Russia. In this case, taking into account the submitted documents, the examiners should refuse the registration of the mark applied for by the Russian applicant on the grounds that it will mislead the consumers in respect of the service provider. The examiners may take into account information from various sources, including those open to the public. Nowadays the most popular and easily accessible source of information is the Internet, which allows to analyze data in real time. However, information, coming from web forums or conferences, or sites that do not state the full names or addresses of companies, should not be relied on. At the same time, when analyzing data from the Internet, account should be taken of the frequency of occurrences of a product or service, or the manufacturer/provider, as well as of information about the products being displayed at exhibitions, about awards and diplomas, data from non-affiliated online shops, etc. This list is not exhaustive. The examiners should try to be as objective as possible when assessing data from the internet and analyze not only concrete data, but results of the search query as a whole. The notice to the applicant on the results of the examination should indicate information on the relevant subject matter found in the internet even if there is no evidence that it appeared before the priority date. 120

121 The use of data from the internet allows to prevent the registration of trade marks in favor of distributors (without respective authorizations from manufacturers) or of trade marks which reproduce foreign marks which have not yet entered the Russian market. The following are cases when information obtained from the internet may serve as grounds to refuse registration of a trade mark. 1. A mark applied for by a Russian applicant reproduces a name of a foreign company which is known in Russia and which produces or provides goods or services similar to the ones claimed. Examples: 1) The sign was applied for by a Russian applicant in respect of goods in Class 11 (light bulbs, light systems, lanterns, lamps). According to data from the internet, «Leader Light» is the name of a Slovak company which produces lighting equipment and fixtures and is launching sales of its products in Russia. 2) The mark was applied for by a Russian applicant in respect of services in Class 38 (TV broadcasting, including cable; fiber optic communications, , etc.). According to data from the internet, «Vonage» is the name of an American company providing services in the field of telecommunications and known among Russian consumers. In the above cases the examiners will find that the applied for marks may not be registered, because they would mislead consumers as to the origin of the product or service. 2. Protection of a trade mark is sought by a Russian applicant selling goods produced by a foreign company. 1) For example: The mark was applied for registration by a Russian applicant in respect of goods in Class 7 (hammers, hydrohammers, hammers with drives). According to data from the internet, the claimed mark graphically reproduces a 121

122 mark used by a South Korean company in respect of its own similar products. Documents, submitted by the applicant during examination, show that the applicant is the official distributor of this South Korean company in Russia. However, the documents did not contain an authorization from the producer to register the mark in favor of the applicant in Russia. Thus, the examiners will find that the mark cannot be registered for goods in Class 7, because it is liable to mislead consumers as to the origin of the goods. The submitted documents could serve as grounds to register the above mark as a service mark in respect of services in Class 35 (promotion of goods for third parties). 2) Let s look at the following situation. Registration of the mark was sought by a Russian applicant selling goods produced by a foreign company. In this case the goods were produced by the foreign company exclusively for the applicant, under purchase orders from the applicant and were marked with the claimed sign in accordance with the contract. This information was supported by the submitted contract and an official letter from the foreign manufacturer with an assignment ( mandate ) to register the claimed mark in favor of the applicant. In this case the trade mark should be registered in the name of the applicant. Situations, when the applicant submits a document containing a consent of a company or person, who can be found in the internet, to register a trade mark in the applicant s name, are quite frequent in the practice of the office. However the law does not provide for a consent, which does not explicitly contain instructions (mandate) to register a trade mark for the purposes of overcoming the grounds for refusal of registration under Article 1483, par.3, subpar.1. The examiners should rely on documents (contracts, letters, agreements) which explicitly instruct to register a trade mark in the applicant s name. 122

123 In such cases the examiners should study with caution the submitted documents which contain a consent when it comes from entities or persons in respect of which the relevant mark has become known on the market in this or that field of activities Examination of marks (and their elements), containing geographical names If an applied for mark contains a geographical name, which indicates the geographical origin of the goods or services, or the address of the producer or service provider, the examiners should check whether this indication is deceptive. A geographical name is not declared deceptive if it truly is the name of the geographical origin of the goods or services, or the location of the producer or service provider. And vice versa, if the geographical name is not the geographical origin of the goods or services, nor the location of the producer or service provider, but may be perceived as such, it must be declared deceptive Signs which could evoke in the consumers minds some impressions/expectations as to the geographical origin of the goods which do not correspond to reality. An applied for mark should be examined as to whether it contains any elements suggesting a specific geographical location of the producer. In cases when the true geographical location of the applicant is not the same as the geographical indication contained in the applied for mark, such a mark may be recognized as misleading consumers in respect of the producer s location. Examples: 1. A mark, containing the word elements «Карловарская классическая» ( Karlovy Vary Classic) and a figurative element which was similar to the coat of arms of the city Karlovy Vary, was applied for in respect of mineral water (application # ). The location of the applicant was Minsk, Republic of Belarus. 123

124 In this case, registration in the applicant s name should be refused, because the trade mark may be perceived as indicating the geographical location of the producer as the city Karlovy Vary in the Czech Republic, which does not correspond to reality. 2. A mark, containing the word elements «SCANDI FISH» and a figurative element evoking an association with the Norwegian flag, was applied for registration in respect of mineralized water. The applicant was from the City of Kirov, Russian Federation. In this case, registration in the applicant s name should be refused, because the trade mark may be perceived as indicating Norway as the geographical location of the producer, which does not correspond to reality. 3. A mark, containing the word element «HOKKAIDO» (an island in the northern part of the Japanese archipelago), was applied for goods in classes 7, 09, 11 (international application #813722). The location of the applicant was Bologna, Italy. 124

125 Registration in the applicant s name was refused, because the trade mark may be perceived as indicating Japan as the geographical location of the producer, which does not correspond to reality Examination of signs consisting of or containing elements presented in other than Cyrillic alphabets. If the applied for mark consists of a word of foreign origin, it should be analyzed as to its ability to mislead the consumer in respect of the producer (its location). The following factors should be assessed: goods and services in respect of which protection is sought, the language of the sign, the commercial reputation of the country, in whose language the mark is presented. For example, when examining applied for marks in French, Italian or Spanish languages in respect of goods in Class 33 (wines), account should be taken of the reputation of these regions in the field of wine making. The examiners may find that such marks convey false information about the French, Italian or Spanish origin of the goods in Class 33. The following marks, claiming goods in Class 33 (wines), were applied for by Russian companies. Such marks should not be registered, because they may be perceived as indicating the location of the producer («TIERRA DEL SOL» - Spain, «PALAIS DES JOUISSANCES» - France), which does not correspond to reality for applicants from the Russian Federation. 125

126 When marks in French or Italian languages are applied for registration in respect of goods in Classes 3 and 25 (perfumery, cosmetics, clothing), the probability of a false impression of the goods originating from France or Italy must also be assessed. An example of such a case was an applied for mark «La belle vie», filed by a Russian applicant in respect of goods in Class 3 (perfumery, cosmetics, etc.). Another mark presented in Italian - «Ricco dono», was filed by a Russian applicant in respect of goods in Class 25 (clothing, footwear, headwear). In these cases the examiners should refuse registration of the marks because they are likely to mislead the consumer in respect of the producer of the goods. When the applied for marks consist of foreign names, the examiners will also find that the marks may mislead consumers in respect of the producers/service providers. Alberto Rocci However, when goods are claimed in Class 5 (pharmaceuticals), the examiners should take into account that the Latin alphabet is traditionally used to mark such products. In cases when the marks consist of Latin transliterations of Russian words, the examiners shouldn t doubt the protectability of these marks. 126

127 The same applies to marks containing foreign words which are well known to the average consumer (i.e. «Star», «line», «love») Conditions which allow to overcome the objections to registration set by Article 1483, par.3, subpar.1 First of all, the applicant may introduce amendments into the claimed mark (without essentially changing its perception). For example, when a mark contains descriptive elements, these descriptive elements may be deleted. The following are amended marks mentioned earlier in

128 Furthermore, since the examiners finding that a mark is likely to mislead consumers in respect of the goods is of a debatable nature, and since the applicant may override such a finding by submitting evidence that in the real market there is no likelihood of misleading consumers, the examiners must always offer the applicant a possibility to present arguments in favor of registration of the claimed mark. Examples: A combined mark (application # ), containing the word elements «Золото Франции» (the gold of France) was claimed for such goods as wine; wine from husks of grapes. The applicant s location was Moscow, Russia. Upon examination a notice was sent to the applicant saying that the claimed mark, cannot be registered because it is likely to mislead consumers in respect of the producer. In response, the applicant submitted a contract for the supply of wine ingredients from France, consignment notes and publications in the media, based on which the examiners concluded that there is no possibility of misleading consumers in respect of the producer and decided to register the trade mark. Examiners may decide to register marks which are executed in foreign languages or which imitate foreign words, upon examining various supporting documents proving, in particular, that the applicant has his own production facilities in the foreign country (if the mark is in Italian in Italy, if in French in France or Algeria, etc.), or has business relations with foreign producers who produce under contracts with him for future packaging or labeling by the applicant. For such documents to be relied on, they must precisely and clearly describe the relations between the applicant and the producer of the goods or ingredients thereof. 128

129 Customs declarations are insufficient for examiners to establish without doubt that such relations exist. In the above cases the submitted documents must clearly reflect the fact that the products were produced for the applicant, under contract with him, and that it is the applicant who is putting them on the Russian market. Another theoretically possible case of registration in favor of a Russian applicant of a mark, containing foreign word elements, is the case when the mark has become broadly known among consumers and is associated (thanks to advertizing) with a specific producer (the applicant). In such a case the applicant should submit, for purposes of registration, documents similar to the ones that are filed to prove acquired distinctiveness. The following types of data may be relied on: - production and sales volumes of goods bearing the claimed mark; - geographical coverage of the goods bearing the mark; - duration of the use of the mark on the claimed goods or services; - costs of advertizing and promoting the goods or services labeled with the mark; - data on the awareness of consumers of the claimed mark and of the producer of the respective goods, including data of opinion polls; - evidence of publications in the media relating to the goods bearing the mark; - evidence of the marked goods having been displayed at fairs or exhibitions in Russia and abroad; as well as other types of data Signs consisting of or containing elements which are contrary to public interests, principles of humanity and morality Article 1483, par.3, subpar.2, Civil Code, excludes from registration trade marks consisting of or containing elements that are contrary to public interests, principles of humanity and morality. The prohibition of such registrations is based on the need to maintain public order, to protect the historical and cultural values of the state and the public, to defend the ethical feelings and values of the public. Furthermore, this norm helps to preclude unfair conduct and competition among producers. The notion of public interests implies public order and law. 129

130 Principles of humanity are the ideas on which the implementation of human interests and values is based, such as the principle of equality, justice, the declaration of man, his rights and freedoms as the top priority. Principles of morality are such ethic requirements as humaneness, patriotism, civil consciousness. Principles of morality reflect the requirements developed by humankind in respect of man s ethics, purpose and the nature of relationships with other people. Therefore, marks that are contrary to public interests and principles of humanity and morality are marks which consist of or contain words, phrases, representations, shapes, as well as other elements or combinations thereof, which per se, as well as in the case of their use as trade marks, go against law and order and/or may raise indignation in the public Marks which are contrary to public interests In certain cases the use of a word or a phrase in respect of specific goods or services may be recognized as running against public interest. See examples below. 1. The applied for mark «ДОЛГОЖИТЕЛЬ» (long liver) in respect of goods in Classes 32 (beer), 33 (alcoholic beverages) and services in Class 42 (provision of beer and alcoholic beverages) was refused as going against public interest on the following grounds: a long-liver is a person who has reached a very old age, whereas alcoholic drinks have a very damaging effect on health. 2. The applied for mark «Свежая головушка» (fresh head) was refused registration in respect of goods in Class 33 (alcoholic beverages, except for beer) as running against public interest, because the claimed mark may form a positive attitude to alcohol consumption and it states a positive effect after the consumption. 3. The Arbitrage Court (Commercial Court) of Moscow upheld Rospatent s decision to refuse the registration of the mark «В КАЖДОМ ЕСТЬ ЧТО-ТО РУССКОЕ» (There is something Russian in everybody) for goods in Class 33 (brandy, aperitif, wines, whiskey, vodka, gin, digestives, cocktails, liqueurs, alcoholic beverages containing fruit, rum, rice spirit, etc.). The court s ruling stated that the use of such a mark for alcoholic products may evoke in the consumers 130

131 minds the idea that alcohol consumption is inherent in Russians and may imply their predisposition towards drunkenness. Such associations are of a negative nature because they discredit a nation, affect its dignity and they do not correspond to the current trend of fighting excessive alcohol consumption. Marks reproducing the titles of famous works of science, literature, art that have passed into the public domain may be refused registration in Russia as being contrary to public interests. For example, the mark «Лебединое озеро» (Swan Lake), the title of the world famous ballet by P.Tchaikovsky, was refused registration. It was applied for by an American company in respect of vodka and liqueur products. The examiners found that such a mark in respect of vodka and liqueur products would run against public interests. Conflict with public interest may serve as grounds for refusing registration of signs which are somebody else s trade marks and have become known in respect of certain products of a specific producer even if the sign is claimed by the other person in respect of dissimilar goods or services. The following case may be cited as an example. Conflict with public interest may serve as grounds for refusing registration of a sign which is a company name and is associated in consumers minds with certain products produced by this company which has been operating on the market for a long time and is the leader in the production of the respective goods, if the sign is applied for registration by another person. For example, the signs «Peg Perego», «BRINTONS», «BAYEX», «TRE-Piu», which coincide with names of foreign companies, were refused registration in the name of Russian applicants on the grounds that they would be contrary to public interests. The refusals were appealed by the applicant, but the Appeals Chamber upheld the examiners decisions. The respective decisions of the Chamber of Appeals stated that the applied for signs consist of names of foreign companies which produce goods that are well known on the Russian market (Pen Perego produces children s vehicles; Brintons produces carpets and rugs; Bayex is a manufacturer of woven and nonwoven materials; TRE-Piu manufactures doors), thus, registration of these signs in favor of a Russian company would not only mislead consumers in respect of the producer, but would also create conditions for unfair competition and, hence, is contrary to public interests. 131

132 Signs with misspellings may also run against public interests. The marks «ЦИРКОВНОЕ» and «ЦИРКОВНЫЙ» 6 applied for in respect of goods in Class 33 (alcoholic beverages except for beer) were also refused registration on the grounds of being contrary to public interests Marks which are contrary to the principles of humanity and morality Marks that are contrary to principles of humanity and morality refer to the following: - abusive, profane words and phrases, such as «мразь», «ирод», «дерьмо» (scum, shit, crap), etc.; - jargon (slang) words and phrases, evoking unpleasant associations, for example «мочиловка», «разведи (обуй, надуй) товарища» (vulgar words for to kill, to fool ). The Commercial Court of Moscow endorsed Rospatent s decision to refuse the registration of the mark «ХАЛЯВА» (vulgar word for a free ride ) in respect of goods in Classes 18, 25, 32, 33 as running against morality, because it is a vulgar jargon word, used by a relatively autonomous social group, and reflects indecent, rude speech. The Supreme Commercial Court of the Russian Federation upheld Rospatent s decision to refuse the registration of the mark «ШИРЕ ХАРИ» for goods in Class 43 (provision of catering services, cafes, cafeterias) as contradicting morality, because of the word «ХАРЯ»(vulgar for face ), which, according to Russian dictionaries, is an abusive jargon word. Marks that run against principles of humanity and morality also include: - obscene insulting images, for example, realistic or caricature representations of naked or half-naked female or male bodies in obscene poses; - 3D marks of an obscene nature resembling pornographic goods, for example, bare genitals, human or animal figures in obscene poses; - olfactory or sound marks that induce unpleasant associations, for instance, with body s functions. 6 «церковный» means «of the Church ; цирк means «circus ; the suffix -овн- is used in the word церковный». Of the circus would be цирковой». 132

133 The following mark claimed for services in Class 35 (promotion of products for third parties) was refused registration based on the above principle of running against morality. The following marks are also considered to be contrary to morality and humanity: - marks in Latin or Russian alphabet which may have an abusive meaning or may produce unpleasant associations because of their phonetic similarity with certain Russian words, for example, «UNITAS», «BLEDINA»; - names of insects or animal parasites, which may invoke unpleasant associations, for instance, «гнида» (nit), «глисты» (helminth), «вши» (lice); - words and phrases which are associated with death, suffering and other painful states, including names of mental and infectious diseases, in particular, venereal diseases. The mark «Paranoya» was refused registration as contrary to humanity and morality for goods in Class 3 (preparations for cleaning, polishing, degreasing and abrasive treatment) and Class 5 (veterinary and hygienic preparations; dietary substances for medical purposes; baby food; plasters; disinfectants; fungicides, herbicides), because the word is similar to «paranoia», a medical term meaning a chronic mental disorder. The use of marks with religious symbols (semantics) may insult the feelings of believers of this or that faith. In such a case, registration would be against morality. Marks with religious symbols include marks consisting of or containing representations of religious buildings (cathedrals, temples, mosques, synagogues), symbols (orthodox or catholic crosses, Judaic six-pointed star, etc.), words with religious connotations (Easter, Christmas, Assumption); representations and names of Gods or other divine beings (Krishna, John the Baptist, Andrew the First Called; George the Dragon Fighter, etc.). 133

134 The following mark, containing representations of a minaret, mosque cupolas and the word Islam, was refused registration in respect of goods in Classes 16, 29 and 30 and services in Class 35 on the grounds that it contradicted principles of morality, because the use of the name of one of the leading world religions for commercial purposes may offend the feelings of the faithful. The use of words and phrases with religious connotations in respect of certain goods may be viewed as insulting the feelings of the believers and as being contrary to morality. For example, the use of the mark «ВЕЛИКИЙ ПОСТ» (the Lenten fast) in respect of contraceptives, or the use of «ИСПОВЕДАЛЬНАЯ (confessional) for vodka. Conflict with principles of morality may serve as grounds for refusal of registration of marks which reproduce titles of famous works of science, literature, art, characters, citations or fragments thereof, if the use of such marks in respect of the claimed goods or services may be viewed as unethical. For example, the mark «РОЗА МИРА» (Rose of the World), which is the title of the famous religious/philosophical work by D.Andreev, was refused registration. Registration was refused on the grounds that it would be against morality in respect of some of the claimed goods: goods in Class 8 (cold arms), Class 32 (beer), Class 33 (alcoholic beverages), Class 34 (tobacco, smoking utensils, matches) Signs which are contrary to both, public interest and principles of humanity and morality Sometimes declaration of a mark as contrary only to public interest or only to principles of humanity and morality is impossible because of the close interconnection of the notions. Thus, as a rule, marks which are against humanity and morality are also contrary to public interest. 134

135 Marks which are at the same time contrary to public interest and to humanity and morality include the following: - marks which unethically use official names of the Russian state (the Russian Federation, Russia) and its subjects, official Russian state symbols (flag, anthem, coat of arms), representations and names of state decoration orders and awards, symbols, including military symbols, representations of historical and religious monuments, names and surnames (or derivatives thereof) of famous persons in politics, science, economy, culture, both of the past and contemporary; - caricatures of Russian state symbols, disparaging caricature portraits of famous persons in politics, science, economy, culture; - antihuman appeals, for example, racist ones; - slogans against the state; - names of narcotic substances, for example, hashish, marijuana, cocaine. The following mark illustrates the case of being both against public interest and humanity and morality. It consists of a representation of a five-point star, resembling the Kremlin stars, and the words «КРАСНАЯ ЗВЕЗДА» (red star). This mark was applied for registration by an individual entrepreneur in respect of goods in Classes 4 and 12 and services in Classes 36, 37, 39. The Commercial Court of Moscow endorsed Rospatent s decision to refuse registration, stating that registration of this mark would be contrary to public interest and morality, because the use of a mark containing state and patriotic symbols and having a military historic connotation for the purpose of gaining profit from economic activities may offend patriotic feelings. 135

136 5. Examination as to compliance with the requirements of Article 1483, Par.4 Article 1483, Par.4, Civil Code, prohibits the registration of signs which are identical or confusingly similar to official names and images of particularly valuable objects of the cultural heritage of the peoples of the Russian Federation or objects of world cultural or natural heritage and also of images of cultural values stored in special, general and reserve collections, if registration is sought in the name of persons who are not their owners, without the consent of their owners or of persons authorized by the owners to register such signs as trade marks. This norm contains only a general indication of the objects which may not be registered as trade marks. Hence, examiners should be guided by a number of specific normative acts, which are described in Par.5.1 and 5.2 of the present Guidelines. According to the above norm, registration of the above signs is possible in the following cases: - if it is sought in the name of persons who are the owners of these objects; - if the applicant, who is not the owner of the relevant object, submits a written consent from the owner or from a person authorized by the owner to register the sign as a trade mark. Furthermore, such signs may be registered as trade marks only if they also comply with all other provisions of Article As for the degree of similarity between the claimed mark and the objects listed in Par.4, Article 1483, CC, the examiners should be guided by the criteria and approaches described in Par.7.1 of the present Guidelines. The following should be said about the consent of the owner or of the person authorized by the owner to register the sign as a trade mark. If the owner is an individual, the consent for registration is granted by him or by his authorized person. As for objects belonging to the state, the following should be kept in mind. 136

137 Consent for registration is not the subject matter of public services rendered by executive bodies of power and hence cannot be obtained by Rospatent under the interagency cooperation. The law grants authority to allow the use, for commercial or other purposes, of state symbols and images of particularly valuable objects of the cultural heritage of the peoples of the Russian Federation or of objects of world cultural or natural heritage and also of images of cultural values stored in museum collections and funds to the following legal entities: - organizations, which by decrees of the President of the Russian Federation are recognized as particularly valuable objects of cultural heritage of the peoples of the RF, including those which are on the List of the World Heritage; - state natural reserves and national parks, including those from the World Heritage List; - the nature parks Lena Pillars (Yakutia) and Kamchatka Volcanoes (both on the World Heritage List), the state directorates of which are granted the relevant rights under respective Russian normative acts; - cultural organizations, including museums (or their directorates). The consent is granted on a contractual basis. The above listed entities may be considered as having been authorized by the owner Examination of signs which are identical or similar to the degree of confusion to official names and images of particularly valuable objects of the cultural heritage of the peoples of the Russian Federation or objects of the world cultural or natural heritage Particularly valuable objects of the cultural heritage of the peoples of the Russian Federation Article 3 of the law of the Russian Federation of October 9, 1992, #3612-I, Basis of the Legislation of the Russian Federation on Culture, states that the cultural heritage of the peoples of the Russian Federation are the material and spiritual values created in the past, as well as monuments and historic/cultural territories 137

138 and sites, which are vital for the preservation and development of the unique identity of the Russian Federation and of all its peoples, of their contribution to world civilization. The particularly valuable objects of the cultural heritage of the peoples of the Russian Federation are historic, cultural and natural sites, architectural ensembles and structures, cultural enterprises, organizations and institutions, as well as other objects constituting material, intellectual and artistic values, which are of model or unique nature in terms of history, archeology, culture, architecture, science and art (Par.1, Provisions on particularly valuable objects of the cultural heritage of the peoples of the Russian Federation of November 30, 1992, #1487, hereafter Provisions on Particularly Valuable Objects). An object acquires the status of a particularly valuable one based on a Decree of the President of the Russian Federation (par.2, Provisions on Particularly Valuable Objects). A list of the particularly valuable objects of the cultural heritage of the peoples of the Russian Federation is attached to the current Guidelines as Annex Objects of the world cultural or natural heritage Protection of the world cultural or natural heritage is regulated by the Convention Concerning the Protection of the World Cultural and Natural Heritage of November 16, 1972 (hereinafter the Convention of 1972), which entered into force in the USSR on January 12, The Russian Federation, being the legal successor of the USSR, is a party to the Convention. Article 8, Par. 1 of the Convention established the Intergovernmental Committee for the Protection of Cultural and Natural Heritage of Outstanding Universal Value, the so-called World Heritage Committee within the United Nations Educational, Scientific and Cultural Organization (UNESCO). Every State Party to the Convention submits to the World Heritage Committee an inventory of property forming the cultural and natural heritage, situated in its territory. On the basis of these inventories the Committee establishes, updates and publishes the World Heritage List (Article 11, par.1, 2, World Heritage Convention). 138

139 Article 1, 1972 Convention, describes cultural heritage as: monuments: architectural works, works of monumental sculpture and painting, elements or structures of an archeological nature, inscriptions, cave dwellings and combinations of features, which are of outstanding universal value from the point of view of history, art or science; groups of buildings: groups of separate or connected buildings which, because of their architecture, their homogeneity or their place in the landscape, are of outstanding universal value from the point of view of history, art or science; sites: works of man or the combined works of nature and man, and areas including archeological sites which are of outstanding universal value from the historical, ethnological or anthropological point of view. Natural heritage is described in Article 2 of the 1972 Convention as: Natural features consisting of physical and biological formations or groups of such formations, which are of outstanding universal value from the aesthetic or scientific point of view; geological and physiographical formations and precisely delineated areas which constitute the habitat of threatened species of animals and plants of outstanding universal value from the point of view of science or conservation; natural sites or precisely delineated natural areas of outstanding universal value from the point of view of science, conservation or natural beauty. Examiners can use the Russian part of the World Heritage List, which is attached hereto in Annexes 3, 4, and the Table of Objects of World Heritage from the Russian part of the List with cross references to the particularly valuable objects of the cultural heritage of the peoples of the Russian Federation, state reserves, national and natural parks, museums. More information about this can be found on UNESCO s official site. Examples: 1. The following combined mark was refused registration on grounds of noncompliance with requirements of Article 1483, par.4, CC, because it contains a representation of a group of historical buildings in the center of the city of Lvov, Ukraine, which is on the World Heritage List, and the applicant failed to submit a 139

140 consent to registration from the owner of from a person authorized by the owner (application # ). 2. Examination of the following mark (application ) established that it contains representations of ancient representations of ancient Egyptian monuments: Pyramid of Cheops and the Great Sphinx, which are on the World Heritage List. The applicant (a Russian individual entrepreneur) did not submit a consent to registration from the owner of from a person authorized by the owner. Hence, under Article 1483, par.4, registration was refused. Furthermore, the examiners cited par.3, Article 1483, as additional grounds for refusal, because the mark was likely to mislead consumers as to the producer and place of origin Examination of marks identical or confusingly similar to representations of cultural valuables stored in collections, museums and funds According to Article 3, Federal Law of May 26, 1996, #54 On the Museums Fund of the Russian Federation and Museums in the Russian Federation", cultural valuables are items of religious and secular nature, having historic and cultural 140

141 significance and belonging to the categories defined in Article 7, Law of the RF of April 15, 1993, # 4804-I, On the Export and Import of Cultural Valuables (hereinafter Law #4804-I). According to Article 7, Law 4804-I, the following categories of items are considered cultural valuables: 1. historical valuables, including those related to historic events in the life of the peoples, to the evolution of society and the state, to the history of science and technology, as well as to the lives or activities of outstanding persons (state, political or public figures, philosophers, men of science, art, literature); 2. archeological items as described in Article 3, Law of June 25, 2002, #73, On Objects of Cultural Heritage (Monuments of History and Culture) of the Peoples of the Russian Federation ; 3. artistic valuables, including: fully handmade paintings and drawings on any base and of any materials; original sculptural works of any materials, including reliefs; original artistic compositions and installations of any materials; artistically presented church items, including icons; engravings, etchings, plates, lithoprints and their forms; works of applied art, including works made of glass, ceramics, wood, metal, bone, fabric and other materials; articles of traditional folk artisans; parts or fragments of architectural, historic or artistic monuments, and of works of monumental sculpture and painting; ancient books, publications of special significance (historical, artistic, scientific or literary), separate or in collections; rare manuscripts and documents; archives, including photo, sound, film and video archives; unique and rare musical instruments; post stamps, separate or in collections; ancient coins, decoration orders, medals, seals and other collector s items; rare collections and samples of flora and fauna, items having significance for mineralogy, anatomy, paleontology; other movables, including copies of historical, artistic, scientific or cultural significance, as well as those protected by the state as monuments of history and culture. 141

142 Cultural valuables stored in collections and funds may be of any type of ownership (state, municipal, private). Museum items and museum collections that are included in the Museums Fund of the Russian Federation may be under its public (state-owned) part or under the private (not public) part of the fund. The owner of the items or collections is given a respective certificate. Example: Examination of the mark below (application ) established that it contains a figurative element reproducing the portrait of the Russian Emperor Peter the Great, which is a cultural valuable of the Russian Federation and is kept in the State Hermitage Museum (St. Petersburg). The application was filed in the name of a Russian legal entity, which had nothing to do with the State Hermitage, hence, the applicant was informed of the impossibility to register the sign without the consent of the owner of the portrait or of a person authorized by him. The examiners also assessed the compliance of the mark with other requirements under Article 1483, CC, and established further grounds for refusal. It was found that the claimed mark contains the word element «Петр I» ( Peter I ) which reproduces the name of a famous historical person. Consequently, registration of the mark in the name of the applicant would be contrary to public interests (Article 1483, par.3, subpar.2). Furthermore, it was established that the word element «Петр I» (and the mark as a whole) is similar to the degree of confusion with an earlier registered word mark 142

143 for similar products (cheese - Class 29 класс) «ПЕТР ВЕЛИКИЙ» (Peter the Great) (Article 1483, par.6). Application was refused based on the above mentioned grounds. 143

144 6. Examination as to compliance with the requirements of Article 1483, Par.5 Article 1483, par.5, Civil Code, prohibits the registration as trade marks of signs which are intended to identify wines and spirits that do not come from the territory of the respective geographical site. This requirement is provided in the international treaty to which the Russian Federation is a party, which prohibits registration as trade marks of signs consisting of or containing elements, which are protected in one of the member states as signs identifying wines and spirits as originating from its territory (produced within the borders of a geographical site) and having a particular quality, reputation or other characteristics that are mainly determined by their geographical origin. This norm reflects the provisions of Articles 22, 23 of the TRIPS Agreement, to which Russia is a party. These articles, as well as par. 5, Article 1483, CC, refer to the protection of geographical indications for wines and spirits and are aimed at preventing the use of geographical indications identifying wines or spirits for wines and spirits not originating in the place indicated in the geographical indication, even where the true origin of the goods is indicated, or the geographical indication is used in translation or accompanied by expressions such as kind, style, imitation or the like. Today the multilateral system of notifications about registrations in the TRIPS member states of geographical indications for wines and spirits is not functioning. This complicates the application of the norms of par.5, Article 1483, CC, and favours the use of other provisions of the Article to protect geographical indications. Thus, when the geographical indication, contained in an applied for mark, identifies the place of production, provisions of Article 1483, par.1, subpar.3, CC, are applied. Examples: 144

145 # of protection document Representation trademark of Right holder Notes Certificate Camus La Grande Marque- 29 Rue Marguerite de Navarre, Cognac, France Unprotected element of the TM: COGNAC Certificate GH Mumm et Cie Societe Vinicole de Champagne Successeur, 29 Rue du Champ de Mars, Reims, France Unprotected element of the TM: CHAMPAGNE When the applied for mark contains elements which identify wines or spirits with specific qualities, and if such identification is false (is misleading in respect of the applicant and his location), provisions of Article 1483, par.3, subpar.1, CC, are applied, and the mark is refused protection in Russia because it is deceptive and likely to mislead consumers as to the product or the producer. Examples: Application # Representation of trademark Applicant ССИ ДЕ БРУА, Ле Бруа, Тузак, Франция SCI Des Broix, Les Broix, Tousac, France Notes Reasoning behind refusal: the claimed sign is likely to mislead consumers as to the producer and the properties of the claimed goods (Article 1483, par.3, subpar.1) LG Electronics Inc., 20, Yeouido-dong Yeongdeungpo-gu, Seoul , Korea Reasoning behind refusal: the claimed sign is likely to mislead consumers as to the producer and the properties of the claimed goods (Article 1483, par.3, subpar.1) 145

146 When the applied for sign consists of or contains elements which identify wines or spirits which have specific qualities, and the examiners find that this sign has the status of a protected geographical denomination (PDO) in the Russian Federation, but the applicant is not the holder of the exclusive right to the PDO, provisions of Article 1483, par.7, CC, are applied and protection as a trade mark in the RF is refused. Examples: Application # Representation of applied for sign Applicant Notes Closed Joint stock Company Beer Brewery Moscow Ephesus, , Moscow Tomislav Vintar 1. Vidovиica 25 HR Zagreb (Croatia) Reasoning behind refusal: the applied for mark contains the word element «ТЕКИЛА» (Tequila), similar to the degree of confusion to the PDO #126 (par.7, Art.1483,CC) and is likely to mislead consumers as to the product or its producer (Art.1483, par.3, subpar.1). Reasoning behind the refusal : the applied for mark contains the word element «TEQUILA», similar to the degree of confusion to the PDO #126 (par.7, Art.1483,CC) and is likely to mislead consumers as to the product or its producer (Art.1483, par.3, subpar.1). 146

147 7. Examination as to compliance with the requirements of Article 1483, Par.6 Article 1483, par.6. Civil Code, prohibits the registration as trade marks of signs which are identical or similar to the degree of confusion to: 1) trade marks of other persons applied for registration in respect of similar goods and having an earlier priority, if the application for registration has not been withdrawn, has not been recognized as having been withdrawn nor has been refused; 2) trade marks of other persons protected in the Russian Federation, including those protected under international agreements of the RF, in respect of similar goods and having an earlier priority; 3) trade marks of other persons recognized under the Code as well known marks in the Russian Federation, in respect of similar goods, starting from an earlier date than the priority of the claimed sign. The Rules contain definitions of an identical sign and of a sign similar to the degree of confusion. A sign is considered identical to another sign if all the elements coincide. A sign is considered similar to the degree of confusion if as a whole it is associated with another sign, irrespective of certain differences. A sign is considered similar to the degree of confusion if the consumer perceives it as being another sign or if the consumer realizes that it is a different sign, but thinks that both signs belong to one and the same producer. However, there is no similarity to the degree of confusion when a sign used by one producer only reminds of another sign, used by a different producer, but the consumer does not believe that the marked goods or services are of the same commercial origin. Similarity is assessed on the basis of the overall impression produced by the whole sign, including unprotected elements. The overall impression is formed by all the elements of a sign, including the dominant ones, by the word, the graphic elements, 147

148 the positioning and colors. Depending on the type of the sign (word mark, figurative, sound, etc.) and the manner of its use, the overall impression may be visual and/or acoustic. Russian dictionaries define the word similar ( homogenous ) as belonging to the same category, genus; similar in all its parts, consisting of same parts; same, like the other. In the context of registration or use of identical or similar to the degree of confusion trade marks, similar goods are goods which may be perceived by the consumer as originating from one and the same producer. The risk of confusion of the compared trade marks and signs is assessed on the basis of an analysis of all the factors and circumstances that may entail such a confusion. In particular, this includes the degree of similarity of the trade marks and signs, the degree of similarity of the goods and services, the reputation or visibility of the earlier mark on the market, the presence of a family of TMs, the relevant consumers and the level of their attention when choosing goods. This assessment of the risk of confusion of the compared TMs and signs, which is based on the analysis of the totality of factors and circumstances that may affect the confusion, takes into account the interdependencies of these factors and circumstances. For example, a low degree of similarity between the goods and services may be offset by a high degree of similarity of the trademarks and vice versa. It is impossible to predict which factor will bear more weight in this or that case. Depending on the specific circumstances, any of the factors or their combination may result in a finding of likelihood of confusion. For example, the degree of visual similarity will bear more weight in the case of goods which are inspected visually, whereas phonetic similarity will be more relevant for goods which are ordered verbally. A finding of likelihood of confusion need not be based on proof that all actual or potential consumers of the respective goods or services will confuse the compared marks. It is sufficient that a significant part of consumers of the respective goods or services is likely to confuse the marks. 148

149 The current legislation does not require the submission of evidence on actual confusion of the compared marks. The general rule is that a finding of the risk of confusion of the compared marks is to be based on the assessment of the likelihood of confusion of the TMs and signs in the form in which they are registered or applied for. At the same time, Article 6 quinquies, par.c, subpar.1, Paris Convention, states that in determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration. Thus, if evidence is provided on actual circumstances, which may be relevant for a finding of similarity between signs and homogeneity of goods and services, such evidence must be taken into account when deciding on the issue of likelihood of confusion of the compared TMs. In particular, in accordance with Article 1493, par.1, Civil Code, information about the actual circumstances may be submitted to Rospatent by any person after the publication of data about the application or, administratively, in the course of opposition against the grant of protection to a trademark. Furthermore, any available public information sources, including encyclopedias, reference books, manuals, dictionaries, data bases, the internet, may be used when deciding on the issue of similarity between the goods and services and between the trademarks Assessment of the degree of similarity between the applied for sign and signs found during the search General principles of establishing identity and similarity Identity or similarity is assessed by comparing the applied for sign with trademarks of other owners, registered in respect of similar goods and having an earlier priority. Actual or potential use of the sign in a different form is irrelevant for the analysis as to identity or similarity of the applied for sign and the earlier registered trade mark. 149

150 According to the Rules, a sign is considered identical to another sign if it coincides with it in all its elements. In other words, the compared signs are considered identical if they coincide fully, if they are the same. As a rule, a finding of identity between signs is not difficult. For example, the following marks were considered identical: Sign/mark applied for/opposed Cited sign International registration International registration AUER AUER In terms of the distinguishing function of trademarks, signs are considered identical if they are perceived as one and the same sign. Thus, the above word signs, all executed in standard typeface, are identical. As for similarity of signs, the Rules stipulate that a sign is considered similar to another sign to the degree of confusion, if it is associated with it as a whole, despite certain differences. In other words, signs, which as a whole produce a similar impression, despite certain differences between elements (see more in par.7.1.2, section II, present Guidelines), are considered similar. When assessing similarity the compared signs are to be analyzed as a whole. A finding of similarity between signs should be based on the general impression produced by them, which is formed, depending on the type of sign, by the shape or color, or by dominant word or figurative elements. It should be kept in mind that the consumer, as a rule, doesn t have the possibility of comparing the two signs directly, but is guided by the general impression, often indistinct, produced by the sign seen earlier. As a rule, the distinctive elements are imprinted in the memory. 150

151 Examples: International mark applied for protection in Russia International mark granted protection in Russia earlier In the above example the dominant elements in the signs are identical and are positioned identically. The addition of the word elements in small type, «powerbike» in one case and «authorised training centre» in the other, does not affect the perception of the mark as a whole. Thus, the signs were found similar. The finding of similarity to the degree of confusion is also related to the similarity of goods or services in respect of which the TMs are registered/applied for (see more in par.7.2, section II, present Guidelines). According to the Rules, when similarity of goods is established, it should be assessed whether the consumer is likely to perceive the goods as originating from one and the same producer. Similarity of goods is assessed taking into account the nature of the goods, their purpose, the material which they are made of, marketing conditions, the circle of their consumers and other features. Similarity of services is assessed using the same principles. Thus, even if the signs themselves differ slightly, but the goods or services are identical or very similar, which may lead to the expectation that the marked goods or services are derived from the same origin or from economically associated undertakings, a finding of similarity to the degree of confusion of the applied for mark and the trade mark will be made. Likelihood of confusion also depends on the repute of the analyzed signs, on other trade marks owned by the same proprietor (see par.7.3, Guidelines). Furthermore, the consent of the owner of the cited registration may be taken into account. 151

152 Comparative analysis of signs In accordance with the Rules, word signs are compared with word signs and with combined signs containing word elements. Figurative and 3D signs are compared with figurative and 3D signs and with combined signs containing figurative and 3D elements. Combined signs are compared with combined signs and with signs which are contained in combined signs as elements. It should be kept in mind that word signs may contain strong elements, as well as weak elements. A strong element is unique (original), not descriptive and sometimes serves as the basis of a family of TMs belonging to one entity which are formed by adding certain forms or unprotected signs to it (for example, «ЛИОТОН», «ЛИОТОН ГЕЛЬ», «ЛИОТОН 1000»). A new applied for sign having the same strong element may be considered confusingly similar to the respective family of marks. Weak elements may consist of, inter alia: - letter combinations which are regularly used in TMs (formants), such as: - мат, -трон, -ол, -дент, карб- etc.; - unprotected words (ЭКО, ИНФО, ПЛЮС, AUTO, SOFT, FORTE), - numerals and symbols (+,!,?, For example, in AUTOSCRIPT, AUTO is the weak element, and SCRIPT is the strong element. In MEGASPELL, MEGA is a weak element, and SPELL is a strong element Comparison of word signs According to the Rules, similarity of word signs may be acoustic (phonetic), graphic (visual) or semantic (meaning). When comparing two word signs, all the above mentioned types of similarity should be assessed both separately and in totality. 152

153 Where a word mark consists of two or more words, each word should first be examined separately and then the mark as a whole. Exceptions are set expressions and phrases; in such cases similarity of the mark as a whole is examined, and not similarity of individual elements. For example, «шапка Мономаха», «божья коровка». Sometimes word marks contain weak elements (parts of words) or unprotectable words or symbols. In such cases similarity of the strong elements should be assessed first of all. However, if a mark consisting of the above mentioned elements has a semantic meaning (for example, ПЛАЗМОН, СЕЛЕНИТ), it should be assessed as a whole, without breaking into parts. At the same time it should be kept in mind, that identity or similarity of unprotectable elements may enhance the similarity of marks (for example, KALPOL INTERNATIONAL KOLPAL INTERNATIONAL; BEГA КОСМЕТИКА VEGAS COSMETICS) (а). Phonetic similarity of word signs Phonetic similarity is established on the basis of the following: - presence of similar or coincident sounds in the compared signs; - similarity of sounds making up the signs; - sequence of similar sounds and their arrangement; - presence of common syllables and their arrangement; - number of syllables in the signs; - place of the common sound combinations within the signs; - similarity of vowels; - similarity of consonants; - nature of common parts of the signs; - inclusion of one sign in the other; - stress. Using the above approach, phonetic similarity was established for the following word signs: Applied for/contested Sign/mark Compared sign International registration International registration EUROPLEX EUROFLEX 153

154 International registration International registration TIGOTA' DICOTA International registration International registration ALTO ALTA Certificate International registration Vagisan International registration International registration ISONNECTOR ICONNECTOR Application Certificate Application Certificate Application Certificate Certificate International registration Application Certificate Application International registration desparin 154

155 The following word signs were found to be phonetically dissimilar: Applied for/contested Sign/mark Compared sign Certificate International registration BENECOL International registration Certificates and и The overall phonetic impression produced by a sign is particularly influenced by the number and sequence of its syllables, the common rhythm and intonation. When assessing signs phonetically, it should be kept in mind that word signs in Latin letters may be pronounced differently, depending on the letter combinations. Pronunciation of words of foreign origin should be especially taken into consideration when dealing with borrowed words or customary terms which are known to Russian consumers. For example, English words «one» («уан», rather than «оне»), «baby» («бейби», not «баби»), «home» («хоум», not «хоме»), «management» («менеджмент», not «манагемент»), «time» («тайм», not «тиме») etc. Furthermore, the phonetic comparison should take into account the symbols or numerals in a sign, which are reproduced phonetically. For example, the use of the & symbol («Black&White», Certificate , «BLACK & DECKER», Certificate ) (б). Graphic similarity of word signs Graphic similarity is assessed on the basis of the following: - common overall visual impression; - typeface; 155

156 - nature of the letters (for example, printed or handwritten, uppercase or lowercase letters); - arrangement of letters in respect to each other; - alphabet in which the letters are written; - color or color combinations. Based on the above approach, the following signs were found to be graphically similar: Applied for/contested Sign/mark Compared sign Certificate International registration Certificate Certificate International registration Certificate Pursept The following word signs were found to be graphically dissimilar: Applied for/contested Sign/mark Compared sign Application International registration HYOGEN The use of a standard typeface or of the same alphabet may increase the graphic similarity of signs. Presentation of the word elements in an original graphic manner will, on the contrary, weaken similarity. 156

157 However, it should be kept in mind that the presentation of a word sign in an original graphic manner may deprive the sign of its word nature and, hence, the sign should be examined as a figurative one (в). Conceptual similarity of word signs Conceptual similarity is assessed on the basis of the following: - similarity of the semantic content of the signs; in particular, coincidence of the sign s meaning in several languages; - coincidence of one of the sign s elements, which bears the logical stress and has a meaning of its own; - opposite meanings of the signs. Based on the above approach, the following signs were found to be conceptually similar: Applied for/contested Sign/mark Compared sign Application Certificate International registration International registration FUTURA The meaning of the signs may render them dissimilar. The following signs were found to be semantically dissimilar: Applied for/contested Sign/mark Compared sign Application Certificate It should be kept in mind, that the conceptual criteria may act as an independent feature, on the basis of which the word marks in their entirety may be found dissimilar. 157

158 Where the compared signs have no meaning, they cannot be compared conceptually. Where the compared signs have a semantic content, this semantic content should be assessed as to identity or similarity. The fact that a sign may have many meanings should be taken into account. If the sign is an expression (sentence, logo, phrase), the semantic content of the expression and of the individual words should be distinguished. Special care should be taken when assessing signs consisting of word elements which cannot be found in dictionaries or other information sources, but which, because of their nature, have a certain semantic content. In such cases it should be assessed to what degree this semantic content is obvious when the sign is perceived. The following is an example of such a sign: Applied for/contested Sign/mark Compared sign Application Certificate Semantic similarity was found: «Будь хорошим» (Be good) and «Я хороший» (I m good) Comparison of figurative and 3d signs According to the Rules, figurative and 3d signs are compared with figurative, 3d signs and with combined signs which include figurative or 3d elements. Similarity of figurative and 3d signs is assessed on the basis of the following criteria: - external shape; - presence or lack of symmetry; - meaning; - nature and type of representation (realistic, stylized, caricature, etc.); - combination of colours. The above criteria are taken into account both, individually, and in combinations. All the above means that when comparing figurative and 3d signs, similarity may be found, for instance, if they share a certain element, which significantly affects the impression produced by them, or if the signs have the same or similar outlines, 158

159 structural design, or if they similarly depict one and the same object and are thus associated with each other. The first impression produced by figurative and 3d signs, when they are being compared, is most important for assessing their similarity. This impression is the closest to the perception of the trade marks by consumers who are purchasing the products. Therefore, if at first sight the TMs are perceived as similar, but further analysis identifies differences in certain elements, it would be wise to be guided by the first impression in the assessment of similarity. Based on the above approach, the following figurative signs were found to be similar: Applied for/contested Sign/mark International registration Compared sign International registration и International registration Certificate Certificate и Application Certificate

160 Dissimilarity of figurative signs is demonstrated in the following examples: Applied for/contested Sign/mark Compared sign Certificate Certificate When comparing 3d signs the same principles apply as for figurative signs. Thus, the following 3d signs were found similar: Applied for/contested Sign/mark Compared sign Certificate certificates и and Dissimilarity of 3d signs is demonstrated in the following examples: Applied for/contested Sign/mark Compared sign Application Certificate

161 Application Certificate When comparing figurative and 3D signs, the significance of the elements composing them should be taken into account. For instance, when comparing two 3D signs in the shape of bottles, the fact that the bottoms of the bottles are similar, whereas there are significant differences in the shapes, proportions, colors, convex or concave elements, would be of secondary importance and would not lead to a finding of overall similarity. When assessing the significance of an element in a figurative or 3D sign, account should be taken of the function of a TM, i.e. the element should be assessed in terms of its contribution to the distinguishing function of the sign. Thus, overall similarity of the compared signs may be found, if there is identity or similarity of the following elements: - spatially dominant elements; - eye-catching elements (images of people, animals, plants, representations of letters or numerals); - memorable elements (for example, symmetric elements, images of specific objects). The above is demonstrated in the following example: 161

162 Applied for/contested Sign/mark Compared sign Finding The sign in application was considered similar to the TM under certificate Comparison of other signs. Article 1482 CC contains an open list of types of TMs, and the Rules, accordingly, provide for the filing of not only word, figurative and 3D signs, but also of sound and other signs, as well as of combined signs. For example, the specification of a sound sign provides the characteristics of the sound(s), or notation sheets, or frequency diagrams, with phonograms attached. Examination of such signs as to their protectability is quite difficult. However, such signs must also be analysed in terms of their compliance with Article 1483, par.6. No doubt, sound signs should be compared with sound signs, as well as with combined signs which include sound elements (i.e. animation). TMs, belonging to one and the same entity, may serve as examples: moving and combined, consisting of figurative and word elements (see below). Moving mark, consisting of a rotating pink ball with the sign TV in a circle, with the word RU to the left of the ball. 162

163 Combined sign, consisting of a horizontally elongated rectangle with rounded corners, with a circle inside to the right. The sign TV is located in the center of the circle. The word RU is located to the left from the circle Comparison of combined signs According to the Rules, combined signs are compared with combined signs and with those types of signs which are included in the examined signs as elements. Comparisons of the following types of signs deserve more attention: - word signs and combined sign including word elements; - figurative or 3D sign and a combined sign which includes figurative or 3D elements; - other signs and combined signs that include such other elements; - combined signs with combined signs in their entirety. As stated above (par ) a finding of similarity must be based on a comparison of signs in their entirety. Thus, analysis of similarity between an applied for sign or a contested sign and a combined sign is of crucial importance. First of all, the overall visual impression produced by the compared signs is to be assessed. Since combined signs consist of several elements, the next step would be to establish which components of the compared signs are similar, what is the role of this or that component in the combined sign. When assessing the significance of this or that element account should be taken of whether it is visually dominant (due to size or positioning). 163

164 Comparison of combined signs is illustrated below: Applied for/contested Compared sign Sign/mark Finding No similarity was found between the sign in application and the compared internationally registered TM , because the word elements were deemed to be the most significant ones. и Application was refused, because the sign was deemed similar to the TM and to the internationally registered TM и Sign in application was found similar with TMs and The contested TM was found similar to the earlier registered TM of another entity. The significance of an element in a combined sign also depends on its contribution to the TM s main function: distinguishing goods and services of one enterprise from those of other enterprises. 164

165 Thus, in a sign consisting of a figurative element and a word element, the main element, as a rule, is the word element, because it is easier imprinted in the memory and it is the focus of the consumer s attention. For example, where the dominant word element in a combined sign is identical or similar to the dominant word element of another combined sign, such signs would usually be found similar. Comparison of a word sign and a combined sign including a word element: Applied for/contested Compared sign Finding Sign/mark Application refused because of similarity to TM Sign in application was found similar to TM However, other elements of the combined sign, which may significantly alter the impression (including conceptual impression) produced by the word element, should also be taken into account. The figurative element in a combined sign may also play an essential role in distinguishing the product. 165

166 The degree of significance of the figurative element in a combined sign depends on the degree of its originality, on its size, positioning and its interrelation with the whole sign. These factors should be taken into account both separately, and as a whole. When assessing whether a figurative element in a combined sign is dominant or not, the sign should be compared with combined and figurative signs which include elements identical or similar to the degree of confusion with the element from the examined sign. If identity or similarity is established for figurative elements, which contribute the most to the sign s execution of its distinguishing function, the signs may be found similar even if the word elements differ. At the same time the degree of distinctiveness of the figurative element in a combined sign should also be taken into account, for instance, the representation of the globe is a frequent device in TMs, which decreases the significance of this element in combined signs. Comparison of a figurative sign and a combined sign with a figurative element: Applied for/contested Sign/mark Compared sign Finding Sign in application was found similar to a registered TM belonging to another person, , due to similarity of figurative elements. и Contested TM was found similar to TMs and

167 Contested TM was found similar to TM , belonging to another person, because, the figurative element in the contested combined TM is identical to the compared TM and it plays a significant role in distinguishing the rightholder s products. The most complex is the analysis of similarity of combined signs, in which the dominant position is occupied by unprotectable elements (letters, numerals, lines, simple geometric figures, customary names, basic indications of products or their images, names of companies, characteristics of products or of manufacturers). In such a case it is important to assess through what means the sign is performing the distinguishing function, through the combination of which elements? The above can be demonstrated using labels as examples. Spatial domination of an element in a label may be achieved by its positioning, its color, the use of stylized typeface for a word or by other means. If comparison of combined signs reveals that they have a similar design, similar or the same positioning of elements, same or similar graphic presentation of words or numerals, which altogether leads to a probability of confusion of the signs, than such signs may be recognized as similar, despite differences in details. Whereas, similarity in the positioning of certain elements is not sufficient for a finding of overall similarity between the combined signs. The above is demonstrated in the examples below: Applied for/contested Compared sign Sign/mark Finding 167

168 Examination of opposition filed against TM on the grounds of its similarity to TM resulted in a finding of similarity between the compared signs in terms of the overall general impression, despite certain variations. Examination of opposition filed against TM on the grounds of its similarity to TM , resulted in a finding of dissimilarity between the two signs, because, the overall visual impression produced by each mark is significantly different. 7.2.Assessment of similarity of goods and services. Assessment of identity of TMs or their similarity to the degree of confusion is conducted in respect of similar ( homogenous ) goods. Russian dictionaries give the following definitions of the term homogenous : belonging to one and the same type, category; similar in all aspects; consisting of similar parts; similar to smth., looking like smth. In the context of TM registration, homogenous (similar) goods also imply goods which the consumer may perceive as originating from the same source or from economically related sources International Classification of goods and services (Nice Classification) as a tool for comparing goods and services Goods and services are broken into categories in accordance with the Nice Classification. Today there are 34 (1-34) Classes for goods and 11 (35-45) Classes for services. 168

169 More information about the Nice Classification is available in Par.2, Section 1 of the present Guidelines, as well as on the websites of WIPO, Rospatent and FIPS. Though the Experts Committee is continuously improving the classification, still it cannot keep up with the rapid development and marketing of new goods and services. Furthermore, the Class heading are sometimes not precise and clear enough. The Nice Classification does not provide in itself a basis for drawing conclusions as to the similarity of goods and services. The fact that the respective goods or services are listed in the same class of the Nice Classification is not, in itself, an indication of similarity. For example, live animals and flowers, both belonging to Class 31, have nothing in common. Similarly, advertising from Class 35 is not related to office functions, also from Class 35. Class 9 contains such dissimilar goods as mouse pads, fire extinguishers, electric irons, photo cameras, etc. Not even the fact that two specific goods/services fall under the same general indication of a class heading makes them similar per se: cars and bicycles although both fall under vehicles in Class 12 are not considered similar. Furthermore, goods and/or services listed in different classes are not necessarily considered dissimilar. For example, medicinal soap (Class 3) and detergents for medical purposes (Class 5) are similar. Below is an indicative list of corresponding classes, containing similar goods. 1-2,3,5,17, ,7,9 2-1,3, ,9 3-1,2,5, ,2,6, ,3, ,17 6-7,9,11,17,20, , 9,11, ,6 8-7, ,7,10,11, ,

170 Examples of similar goods in corresponding classes: Class 1: sweetening substances (chemical preparations); Class 2: colorants for beverages. Class 1: chemical substances for leather treatment; Class 3: compositions for leather polishing. Class 1: microelements preparations for plants; Class 5: preparations for destroying vermin. Class 2: ink for leather; Class 3: preparations for bleaching leather. Class 3: tissues saturated with cosmetic lotions; Class 5: hygienic tissues and pads. Class 3: pumice; Class 21: abrasive sponges for leather. Class 5: medical dressings; Class 10: supportive bandages. Class 6: springs (hardware); Class 7: springs (for cars). Class 6: aluminum foil; Class 17: insulation metal foil. Class 7: bulldozers; Class 12: tractors. Class 12: pumps for bicycles. Class 9: electric make-up removing apparatus; Class 10: cosmetic massage apparatus. Class 29: tomato paste; Class 30: tomato sauce. Class 32: beer; Class 33: alcoholic beverages. Since services in the Nice Classification are classified in accordance with the activity, it is difficult to find corresponding classes that contain similar services. As a rule, similar services belong to one and the same class. For example, in Class 43 the services of cafes, cafeterias, canteens, restaurants may be considered similar. However, in some cases similar services may be listed in different classes. Thus, renovation of clothing from Class 37 may be considered similar to clothing alteration from Class 40. Many classes of the Nice Classification are structured according to factors such as function, composition and/or purpose of use which may be relevant in the comparison of goods/services. Class 1 comprises chemical goods primarily based on their chemical properties (nature), rather than on their specific application. In contrast, Class 3 covers all items either being cleaning preparations or for personal hygiene or beautification. Although they can by their nature also be classified as chemical products, it is their specific purpose that allows a distinction and thus a different classification. 170

171 Equally, it is due to their nature that most items made of leather are classified in Class 18, whereas clothing made of leather fall under Class 25 since they serve a very specific purpose, namely that they are intended for wear by people. The structure of the class headings is not uniform and does not follow the same logic. Some classes only consist of one general indication which by its definition already covers nearly all the goods/services included in this class (Class 15 musical instruments; Class 38 telecommunications). Some others include many general indications, some being very broad and others very specific. For example, the heading of Class 9 includes more than 30 terms, ranging from scientific apparatus and instruments to fire-extinguishing apparatus. Exceptionally, there are class headings containing general indications which comprise another general indication and thus they are identical, e.g. materials for dressing in Class 5 include plasters in Class 5. This is especially the case when a specific indication in a class heading is only mentioned to clarify that it does not belong to another class, although it is already included in another broader indication of the class heading. Example: Adhesives for industrial use are included in chemicals used in industry in Class 1. Its reference is mainly thought to distinguish them from adhesives classified in Class 16 and which are for stationery or household purposes. During examination it should be kept in mind that the Nice Classification only gives indications that can be used in the assessment of identity or similarity of goods/services. However, its structure and content is not coherent. Therefore, each heading or specific term has to be analysed according to the specific class under which it is classified. It should also be kept in mind that with each revision of the Nice Classification there are changes in the classification of goods/services (in particular transfer of goods/services between various classes) or the wording of headings changes. In such cases the list of goods and/or services of the earlier but also the contested mark must be interpreted according to the edition of the Nice Classification at its moment of filing. Example Legal services were transferred from Class 42 to Class 45 with the 8th edition of the Nice Classification. The nature of these services has not changed. 171

172 Definition of goods and services (Terminology) A good is any kind of item which may be traded. Goods comprise raw materials (unprocessed plastics in Class 1), semi-finished products (plastics in extruded form for use in manufacture in Class 17) and finished products (plastic household container in Class 21). They include natural and manufactured goods, such as agricultural products in Class 31 and machines and machine tools in Class 7. A service is any activity or benefit that one party can offer to another that is intangible and does not result in the transfer of ownership of any physical object. Example Car repair is a service. In contrast to goods, a service is always an intangible asset. Services comprise economic activities provided to third parties which do not fall under the initial production, manufacture or sale of goods. Being a pianist (the activity of playing piano) is not a service whereas giving piano lessons (service rendered to the pupil) is. Giving a piano concert is a service rendered by the pianist to the organizer and the piano concert is a service rendered by the organizer to the public. Advertising one s own goods is not a service but running an advertisement agency (designing advertisement campaigns for third parties) is. Terms appearing in the list, such as advertisement, must therefore be meant to cover only the above definition of services. Selling or distributing one s own goods is not a service. Retail services are meant to cover the services around the actual sale of goods, such as providing the customer with an opportunity to conveniently see, compare or test the goods. One indication for an activity to be considered a service under trade mark law is its independent economic value, i.e. that it is usually provided subject to some form of (monetary) compensation. Otherwise, it could just be a mere ancillary activity provided together with or after the purchase of a specific good. 172

173 Example Delivery, including the transport of furniture which has previously been purchased, is not an independent service falling under transport services in Class 39. However, the intention to make profit is not necessarily a criterion for defining whether an activity can qualify as a service. It is more a question of whether the service has an independent market area and customers rather than the way or form the compensation is finally made. By their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities Indication of goods and services. As a preliminary matter, the correct wording of the lists of goods and/or services under consideration must be identified. Once the wording of the goods and services to be considered has been identified, their meaning must be determined. In some cases the exact meaning is immediately obvious from the list of goods and/or services of the marks where a more or less detailed description of the goods and services will often be given. For example, the wording belts, being articles of clothing excludes by definition safety or industrial belts. In cases of doubt about the exact meaning of the terms used in the list of goods and/or services, these terms have to be interpreted both in the light of the Nice Classification and from a commercial perspective. Therefore, belts in Class 25 are due to their classification articles of clothing. 173

174 Where the meaning of terms in a semantic context, a commercial context and /or under the Nice Classification are ambiguous or leave some doubts, the meaning it has under the Nice Classification prevails. Clothing, for instance, refers to clothes collectively (see e.g. Oxford English Dictionary) and thus to items worn to cover the body, such as shirts, dresses, pants, etc. Although the definition found in standard dictionaries does not explicitly exclude footwear the fact that it appears in the Nice Classification as a separate item in the same Class 25 leads to the conclusion that clothing and footwear are not identical but similar. The comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination. Furthermore, an analysis of the wording of the list of goods and/or services might be required to determine the scope of protection of those goods and services. This is especially true where terms such as in particular, namely, or equivalents are used in order to show the relationship of an individual product with a broader category. The term in particular (or for example, such as, including or other equivalent) indicates that the specific goods/services are only examples of items included in the category, and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples On the other hand, the term namely (or exclusively or other equivalent) is exclusive and restricts the scope of the registration only to the specifically listed goods. For example, in the case of chemicals used in industry, namely raw materials for plastics only the raw materials for plastics need to be compared with the goods of the other mark Criteria for assessing similarity of goods and services Similarity in the case of use of identical terms and synonyms Similarity is obvious when goods or services are identical. Identity is generally defined as the quality or condition of being the same in substance, composition, nature, properties, or in particular qualities under consideration (Oxford English Dictionary). 174

175 Identity exists not only when the goods and services completely coincide, but also when synonyms are used. Identity between the goods/services in dispute must be established on the basis of the wording of the relevant parts of the lists of goods and/or services of the two marks that have been identified in accordance with the principles set out above. Identity is obvious where the goods/services to be compared are listed in exactly the same terms. Example Vehicles are identical to vehicles. Where this is not the case, the terms of the respective lists of goods and/or services must be interpreted in order to show that they are in fact synonyms, i.e. that their meaning is the same. The interpretation can be made based on dictionary definitions, expressions from the Nice Classification and in particular taking into account the commercial perspective. Examples Bicycle is a synonym for cycle. The goods are identical. From a commercial perspective health spa services and wellness services are the same and are therefore identical. However, if an identical wording is used but the goods are classified in different classes, this generally means that these goods are not identical: Examples Drills (machine tools) in Class 7 are not identical to drills (hand tools) in Class 8. Lasers (not for medical treatment) in Class 9 are not identical to lasers (for curative purposes) in Class 10. Even though they might be similar, the classification in different classes indicates that they have a different nature, purpose or method of use etc. The same reasoning does not apply if the different classification is only due to a revision of the Nice Classification or the goods/services are obviously wrongly classified due to an obvious mistake, e.g. a transcription error. 175

176 Examples Playing cards (Class 16 7th edition) are identical to playing cards (Class 28 10th edition). Let s look at different types of similarity. 1. The earlier mark includes the goods/services of the contested mark Where the list of goods and/or services of the earlier right includes a general indication or a broad category that covers the goods/services of the contested mark in their entirety, the goods and services will be similar. Earlier mark Contested mark Examples Temporary accommodation (earlier right, Class 43) includes youth hostel services (contested mark, Class 43). Therefore, the services are similar. Pasta (earlier right, Class 30) includes spaghetti (contested mark, Class 30). The conflicting goods are considered similar. 2. The contested mark includes the goods/services of the earlier mark If the goods/services designated in the earlier mark are covered by a general indication or broad category used in the contested mark, these goods/services must be considered similar since the Office cannot dissect ex officio the broad category of the applicant s/holder s goods/services. 176

177 Contested mark Earlier mark Examples The earlier mark s jeans (Class 25) are included in articles of clothing (contested mark, Class 25). The goods are considered similar. The earlier mark s bicycles (Class 12) are included in vehicles (contested mark, Class 12). The goods are considered similar. The applicant/holder may however restrict the list of goods/services in a way that excludes similarity. Examples The earlier mark s bicycles (Class 12) are included in vehicles (contested mark, Class 12). The applicant/holder restricts the specification to vehicles, namely automobiles. The goods are no longer similar. If the applicant/holder does not restrict the list of goods/services, or does so in an insufficient way, the Office will treat the contested mark s general indication or broad term/category as a single unit and find similarity. If the contested mark covers a general indication or a broad term/category as well as specific items included therein, all of these will need to be compared with the specific earlier goods/services. The result of identity found with the general indication or broad term/category does not automatically extend to the specific items. Example The contested mark covers vehicles (general indication) as well as bicycles, aircraft, trains (included in vehicles). Where the earlier mark is protected for bicycles, similarity will be found with respect to vehicles and to bicycles but not for aircraft or trains. 177

178 However, if the contested mark covers a general indication or broad term/category and specific terms which are not listed independently but only as examples, the comparison differs in so far as only the general indication or broad term/category has to be compared. Example The contested mark covers vehicles, in particular bicycles, aircraft, trains. The earlier mark is protected for bicycles. The goods in conflict are considered similar. The applicant/holder can avoid this result by deleting the general indication vehicles, the expression in particular, and the specific category bicycles. Where the list of goods and/or services of the contested mark reads: vehicles, namely bicycles, aircraft, trains, the comparison differs in so far as only the specific items have to be compared. In this case only the contested bicycles are identical to the earlier goods. 3. Overlap. If two categories of goods/services coincide partially ( overlap ) there might be identity if: a. they are classified in the same class, b. they fall under the same general indication of the class heading, and c. it is impossible to clearly separate the two goods/services. Earlier mark Contested mark Examples: 178

179 Earlier goods Contested goods Coinciding part Outdoor clothing for women. Clothing made of leather Components and spare parts for land vehicles Vehicle seat Outdoor clothing for women made of leather Seats for land vehicles Bread Long-life bakery products. Long-life bread Electric kitchen utensils Thermometers Electric kitchen thermometers The same applies when one general indication in a class heading is partially included in another general indication of the same class heading. Examples: Earlier goods Contested goods Coinciding part Soap Cleaning preparations Soaps for cleaning purposes Scientific instruments Fungicides Optical instruments Pharmaceutical preparations Scientific optical instruments, e.g. microscopes Fungicidal pharmaceutical preparations In such cases, it is impossible for the Office to filter these goods from the abovementioned categories. Since the Office cannot dissect ex officio the broad category of the applicant s/holder s goods, they are considered to be similar. In the first example given above, the outcome changes of course if soap is limited to soaps for personal use. In this case the goods are no longer included in the heading cleaning preparations in Class 3 since the latter is only for household use Practice on the use of general indications of the class headings Recommendations on the use of class headings in the list of goods and services are given in par.2, Section 1, Guidelines. When assessing the similarity of goods and services the examiners interpret all goods and services covered by the marks on the basis of the natural and usual meaning of the general term of the heading. Only those goods or services deemed to be included in the respective general terms will be considered when making the comparison between the goods/services. 179

180 Similarity in the case of use of non-identical terms. Two items are defined as being similar when they have some characteristics in common. In assessing the similarity of goods all the relevant factors relating to those goods themselves should be taken into account. When assessing the similarity of goods the following factors should be taken into account: nature, intended purpose, method of use, material of which they are made, complementarity, in competition, distribution channels, relevant public, the usual origin of the goods/services, etc. A conclusion on similarity is drawn based on an analysis of the above factors in their totality, if the goods, because of their nature or purpose, may be perceived by the customers as having the same origin. The main criteria for assessing similarity are: nature, type of product intended purpose, method of use, complementarity, in competition, material. There are also additional (auxiliary) factors: For example: distribution channels, relevant public, the usual origin of the goods/services. The main factors of similarity may be taken into account, both, each separately, or together with each other and with the additional factors. The main factors may turn out to be secondary in some cases. 180

181 The comparison should focus on identifying the relevant factors that specifically characterize the goods and/or services that are to be compared. Therefore, the relevance of one factor purely depends on the conflicting goods and/or services. Example When comparing skis and ski-boots it is evident that they do not coincide in their nature, method of use and they are not in competition. Therefore, the comparison should focus on their purpose, their complementary character, their distribution channels, their usual origin and/or the relevant public. Therefore, the relevant factors and features characterizing a good or a service may be different depending on the goods and services they have to be compared against. It is not necessary to list all possible factors. What does matter, however, is whether the connections between the relevant factors are sufficiently close to find similarity. The following questions could be asked: How will the goods/services be used? What is their purpose? How likely is it that they coincide in producer? Are they usually found in the same outlet, department store or in the same section of a supermarket? The specific similarity factors. The following sections define and illustrate the various factors for similarity of goods and services. 1. Nature (essence)+type Nature of a good/service can be defined as the essential qualities or characteristics by which this good/service is recognized. Nature often corresponds to a particular type or sort of good/service or a specific category to which this good/service belongs and which is usually used to define it. In other words, it is the answer to the question What is it? 181

182 Examples Yoghurt is a milk product. Car is a vehicle. Body lotion is a cosmetic. 2. Indicative value of class headings and categories The fact that the goods/services to be compared fall under the same general indication of a class heading or broad category does not automatically mean that they have the same nature. An example of such a broad category is foodstuffs for human consumption. Examples Fresh fruit on the one hand and coffee, flour, and bread on the other hand have a different nature despite being foodstuffs. Meat, fish, poultry and game are foodstuffs of animal origin. Fruits and vegetables are foodstuffs of plant origin. This slight connection, namely all being foodstuffs does not preclude that their nature is different. The fact that the goods/services to be compared fall under a sufficiently narrow general indication of a class heading weighs in favour of an identical or similar nature. Examples Condensed milk and cheese share the same nature because they belong to the same product family, namely milk products which are a sub-category of foodstuffs All drinks are liquids, but this does not mean that milk has the same nature as an alcoholic beverage. Goods belonging to one and the same generic group may be considered dissimilar. Examples: Goods in Class 25, Clothing, and goods in Class 9 fire protection clothing belong to the same generic group, but have a different purpose. Electric juice making machines from Class 7 and nonelectric juice making machines from Class 21 may be found dissimilar, because they have some essential differences. The electric machine is a complex 182

183 household utensil. It is sold in stores specializing in home appliances or in respective departments in shopping centers. Whereas a nonelectric juice making device is a simple device. It is usually sold in departments where kitchenware is sold. Furthermore, the two products differ significantly in price. 3. Features (properties) of goods defining their nature A variety of features of the goods in question may be useful for defining their nature. These include the following. А) Composition: e.g. ingredients, materials of which the goods are made. Example Yoghurt is a milk product (the nature of yoghurt may be defined by its basic ingredient). Composition may be the most relevant criterion to define nature. However, an identical or similar composition of the goods is not per se an indicator of the same nature. Example A chair and a doll can both be made of plastic, but they do not have the same nature since one is a piece of furniture and the other is a toy. They belong to different categories. Goods belonging to different types (categories), but made of the same material, may be found similar. For example, such goods from Class 14 as figurines made of precious metal and boxes made of precious metal, though of different natures, may be considered similar. Both are made of precious metal. This material is very expensive and is rarely used for product manufacturing. Both products are of very high value. Furthermore, their distribution channels are similar (jewelry stores). Whereas, rubber bags for packaging (Class 17) and rubber shoes for swimming (Class 25) shouldn t be considered similar. Unlike precious metals, rubber is an inexpensive, widely used material. In this case, other factors should 183

184 be taken into account when assessing similarity (nature, purpose, distribution channels). Another example, illustrating the significance of material in the similarity analysis, is the comparison of metal boxes (Class 6) and wooden boxes (Class 20). Though these goods belong to the same category, they are not similar. The use of a different material for their manufacture affects their price, their properties and purpose. The use of metal makes the product more expensive, more durable, renders certain qualities to the product (fire resistance, strength). Thus, metal boxes may be used, for example, for the transportation or storage of valuables. B) Functioning principle: e.g. mechanical functioning, with or without engine/motor, optical, electrical, biological, or chemical functioning. Example Telescope is an optical device (the nature of a telescope may be defined by its functioning principle which is optical). Although the functioning principle may help to define the nature of some goods, it is not always conclusive. There are cases where goods, in particular technology related, with the same functioning principle have a different nature. Example A blender and an electric toothbrush have the same functioning principle of rotation, but they do not have the same nature. By contrast there are goods with different functioning principles but the same nature. Example The functioning principle of washing machines using washing powder is chemical, which is not the same as the functioning principle of washing machines using magnetic waves. However, these goods have the same nature as they are both washing machines. 184

185 C) Physical condition: e.g. liquid/solid, hard/soft, flexible/rigid The physical condition is another feature of the goods that may be used to define nature, but like the functioning principle it is not conclusive. Examples Water is a liquid substance. Yoghurt is marketed both in solid and liquid form. These goods share the same nature despite their different physical condition. 4. Nature of services. When defining the nature of services the features (composition, functioning principle, physical condition) cannot be used since services are intangible. The nature of services can be defined, in particular, by the kind of activity provided to third parties. In most cases, it is the category under which the service falls which defines its nature. Example Taxi services have the same nature as bus services as they are both transport services. Promotion of products (for third parties) and advertising: Promotion of products is a set of measures, actions and efforts aimed at increasing demand for the product, raising sales, increasing the market share. Advertising is one of means of promoting products. It is one of the services rendered for product promotion. 5. Intended purpose of goods and services. A variety of features of the goods in question may be useful for defining their nature. These include the following. Composition: e.g. ingredients, materials of which the goods are made. 185

186 Example Yoghurt is a milk product (the nature of yoghurt may be defined by its basic ingredient). Composition may be the most relevant criterion to define nature. However, an identical or similar composition of the goods is not per se an indicator of the same nature. Example A chair and a doll can both be made of plastic, but they do not have the same nature since one is a piece of furniture and the other is a toy. They belong to different categories. Functioning principle: e.g. mechanical functioning, with or without engine/motor, optical, electrical, biological, or chemical functioning. Example Telescope is an optical device (the nature of a telescope may be defined by its functioning principle which is optical). Although the functioning principle may help to define the nature of some goods, it is not always conclusive. There are cases where goods, in particular technology related, with the same functioning principle have a different nature. Example A blender and an electric toothbrush have the same functioning principle of rotation, but they do not have the same nature. By contrast there are goods with different functioning principles but the same nature. Example The functioning principle of washing machines using washing powder is chemical, which is not the same as the functioning principle of washing machines using magnetic waves. However, these goods have the same nature as they are both washing machines. Physical condition: e.g. liquid/solid, hard/soft, flexible/rigid The physical condition is another feature of the goods that may be used to define nature, but like the functioning principle it is not conclusive. 186

187 Examples Water is a liquid substance. Yoghurt is marketed both in solid and liquid form. These goods share the same nature despite their different physical condition. When defining the nature of services the features (composition, functioning principle, physical condition) cannot be used since services are intangible. The nature of services can be defined, in particular, by the kind of activity provided to third parties. In most cases, it is the category under which the service falls which defines its nature. Example Taxi services have the same nature as bus services as they are both transport services. Purpose is generally defined as the reason for which something is done or created or for which something exists (Oxford Dictionary Online). Example A plastic bag can be used as protection against the rain. However, its intended purpose is to carry items. Purpose is generally defined as the reason for which something is done or created or for which something exists (Oxford Dictionary Online). The purpose is defined by the function of the goods/services. In other words, it answers the questions: What need do these goods/services satisfy? What problem do they solve? As in the case of defining the nature, the purpose must be defined in a sufficiently narrow way. Example In the case of vinegar, the intended purpose should not be defined as human consumption which is the general purpose that all foodstuffs share, but as everyday seasoning. 187

188 When assessing similarity of goods on the basis of their purpose, the field of application of the goods must be taken into account. For example, chemical preparations for protection of grains against smut, from Class 1, and chemical preparations for treatment of smut affected grains, from Class 5, may be considered similar goods. These goods have the same field of application (agriculture) and belong to the same category (chemical preparations). Moreover they are both intended to treat grains against one and the same disease smut, produced by parasite fungi. Whereas, weeding machines, from Class 7, and cultivators, grubbers and hoes for large weeds, from Class 8, cannot be considered similar goods. These goods, though having the same purpose (weeding), belong to different categories (machines and hand tools). They also differ in price and distribution channels. Disinfectant soaps, Class 3, may be considered similar to disinfectants for hygiene purposes, Class 5, because they have the same field of application (disinfection elimination of infectious agents) and belong to the same category (chemical goods). However, apparatus for disinfection, Class 11, are not similar to the above goods, because they belong to another category (instruments, technical devices). The field of application of a product may narrow its functional purpose. For example, the general purpose of gloves is to protect hands. In the Nice Classification we find divers gloves, Class 9, gloves for medical purposes, Class 10, household gloves, Class 21, gloves-accessories for games (boxing, baseball, golf, Class 28. All these goods differ in their sphere of use and, hence, may be considered dissimilar. When analyzing the similarity of services, the first thing to be taken into account is the purpose of the service, if the service is intended for a specific type of activity (advertising, insurance, education). Services belonging to the same category, but rendered in different businesses, cannot be considered similar. For example, insurance information, Class 36, building information, Class 37, transportation information, Class 39, education information, Class 41, and meteorological information, Class 42 cannot be considered similar. 6. Method of use. The method of use determines the way in which the goods/services are used to achieve their purpose. 188

189 Method of use often follows directly from the nature and/or intended purpose of the goods/services and therefore has no or little significance of its own in the similarity analysis. Example The method of use of newspapers and books is the same in the sense that they are both being read. However, similarity can already be concluded from the facts that they are both printed matter (same nature) and that they both serve to entertain or to inform (same purpose). Notwithstanding the explanation above, the method of use may be important, independent of nature and purpose, where it characterises the goods: Example Pharmaceutical preparations for treating skin diseases in Class 5 can take the form of creams. They have the same method of use as cosmetic creams in Class 3. However, even where the method of use characterises the goods under comparison and where it is identical for both goods, this fact alone will not be sufficient to establish similarity. Example Chewing gum and chewing tobacco have an identical method of use. However, this fact alone does not render them similar. 7. Complementarity. Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other. The complementary relation between the goods/services can be, for example, functional. Although a degree of complementarity may exist, this is not conclusive on its own for finding a similarity between goods and/or services. However, when the complementarity between goods/services has been identified, in combination with other factors, such as usual origin and/or distribution 189

190 channel, similarity may be found (examples 2, 3, 4). Goods intended for different publics cannot be complementary. Example 1 Wine and wineglasses are complementary because one is important for the use of the other. However, they are not similar because they do not have the same usual origin nor do they share distribution channels Example 2 Skis and ski boots are complementary because the use of one is indispensable for the use of the other. The relevant public may think that the production of these goods lies with the same undertaking. These goods are consequently considered similar. Example 3 Teaching material (such as, printed matter, pre-recorded data carriers and audio/video cassettes) is essential and thus complementary to educational courses and generally the material is issued by the same undertaking. These goods are similar to the services in question Example 4 Services of an architect (designing of buildings) (Class 42) are indispensable for building construction (Class 37). These services are often offered together (distribution channel). Consequently, these services are complementary and similar. Complementarity has to be clearly distinguished from use in combination where goods/services are merely used together whether by choice or convenience (e.g. bread and butter). This means that they are not essential for each other. In such cases similarity can only be found on the basis of other factors, but not on complementarity. Certain goods, which are often coordinated with each other but do not fall within the scope of other similarity factors, fall outside the existing definition of complementarity. Example 190

191 Handbags and clothing are closely connected, but not complementary since one is not essential for the use of the other. They are merely often used in combination. They are, however, similar because of the fact that they may well be distributed by the same or linked manufacturers, bought by the same public and these goods can be found in the same sales outlets. The same applies when certain goods and/or services only support or supplement another good or service. Ancillary goods are typically those used for packaging (e.g. bottles, boxes, cans, etc.) or for promotion (e.g. leaflets, posters, price lists, etc.). Equally, goods/services offered for free in the course of a merchandising campaign are usually not similar to the primary good or service. Example Organisation and conducting of exhibitions is not similar to printed matter, including event notes, since the goods in Class 16 merely serve to promote and announce the specific event. Where the goods concern raw materials the criterion complementarity is not applicable in the analysis of similarity. Raw materials as a significantly important basic component of a final good may be found similar to that good, but not on the basis of complementarity. Example Milk (Class 29) and cheese (Class 29) are not similar on the basis of complementarity although milk is the raw material for making cheese. The similarity should be found, however, on the basis of the fact that they share the same nature, distribution channels, relevant public and producer. 8. In competition Goods/services are in competition with each other when one can substitute the other. That means that they serve the same or similar purpose and are offered to the same actual and potential customers. In such a case, the goods/services are also defined as interchangeable. Examples 191

192 Wallpaper (Class 27) and paints (Class 2) are in competition, because both cover or decorate walls. Rental of movies (Class 41) and services of a cinema (Class 41) are in competition because they both allow you to watch a movie. Goods and/or services that are in competition with each other frequently are in the same price range or their global price does not differ substantially if properly calculated. Example Electric shavers and razor blades are in competition as they serve the same purpose. Taking into account the life span of an electric shaver, it might be cheaper overall than the number of razor blades that are needed to substitute it. The initial difference in price is paid off by its longer durability. However, in some cases the price of goods/services in competition may differ significantly. Example Jewellery made of gold and fashion jewellery are in competition even though their price (and value) may greatly differ. 9. Distribution channels. Distribution channels are auxiliary factors of similarity. For example, paints, drying oils, varnishes may be sold alongside with preparations for cleaning, polishing, degreasing and abrasive treatment. Thus, lacquers, Class 2, and polishing pastes, Class 3, may be recognized as similar. When assessing this factor, the method of sale should also be taken into account. Likelihood of confusion is higher for goods sold in retail shops, rather than for goods sold on a wholesale basis under contracts. If the goods/services are made available through the same distribution channels, the consumer may be more likely to assume that the goods or services are in the same market sector and are possibly manufactured by the same entity and vice versa. 192

193 The term distribution channel does not refer so much to the way of selling or promoting a company s product but rather to the place of distribution. For the analysis of the similarity of goods/services the distribution system whether direct or indirect is not decisive. The question to be asked is rather: Do the goods/services have the same points of sale or are they usually provided or offered at the same or similar places? However, not too much emphasis should be placed on this factor as modern supermarkets, drugstores and department stores sell goods of all kinds. The relevant public is aware that the goods sold in these places come from a multitude of independent undertakings. Therefore, the point of sale is less decisive when deciding whether the relevant public considers that goods share a common origin merely because they are sold at the same outlet. Only where the goods in question are offered in the same section of such shops where homogeneous goods are sold together will this weigh in favour of similarity. In such cases it must be possible to identify the section by its territorial and functional separation from other sections (e.g. dairy section of a supermarket, the cosmetic section of a department store). Similarly, the factor may be valid in cases in which goods are sold exclusively or commonly in specialised shops. In that event, consumers may tend to believe the origin of the goods to be the same if they are both sold in the same specialised shops and may tend to deny that mutual origin if they are not usually sold in the same shops. Conversely, different sales outlets may weigh against the similarity of goods. Example Wheelchairs versus bicycles: Although both fall under vehicles in Class 12 they will not be found at the same sales points. Bicycles are usually sold either in specialist bicycle stores or in a retail store where sporting equipment is available. In contrast, the distribution channels of wheelchairs are specialised distributors of medical equipment and devices supplying hospitals and specialised shops where devices for disabled or physically handicapped people are sold. 193

194 10. Relevant public. The relevant public, i.e. the actual and potential customers of the goods and services in dispute, constitutes another factor to be dealt with in the analysis of their similarity. The relevant public can be composed of: the public at large (also called the general consumer); or business customers (with specific professional knowledge or expertise). Depending on the relevant public, all goods may be broken into two categories: consumer goods and goods of industrial/technical purpose. In respect of consumer goods, the approaches to defining similarity are not very clear-cut. The following recommendations should be taken into account, depending on the specific circumstances. When assessing similarity of goods, note should be taken of whether they are durable goods or short-life goods and of their price. When purchasing long-life goods or expensive goods (cars, refrigerators, computers, furniture, jewelry, delicatessen food, exclusive cosmetics) consumers tend to be more attentive, and likelihood of confusion in such cases is not high. And vice versa, in respect of short-life products or inexpensive products the degree of attention of the consumers is low. This applies to such products as food products and beverages (bread, cereals, vegetables, milk and dairy products, etc.), goods for hygiene purposes, periodicals, stationary, etc. At the same time, if a consumer is regularly buying one and the same product of a certain producer (i.e. baby food) he is likely to remember well the packaging or label and the respective TM. In such a case the likelihood of confusion is not high. In respect of goods of industrial/technical purpose the likelihood of confusion is low, because these goods are intended for a small circle of consumers, including experts who are usually aware of the various manufacturers in the respective sector. Such goods include industrial machinery, instrumentation, raw materials, etc. The mere fact that the potential customers coincide does not automatically constitute an indication of similarity. The same group of customers may be in need 194

195 of goods or services of the most divergent origin and nature. The fact that, for example, television sets, cars and books are bought by the same relevant public, namely the public at large, has no impact on the similarity analysis. In many cases either one or both lists of goods/services under comparison are targeted at the public at large, but the purpose (customers needs covered) in each case is different. Such circumstances weigh against similarity. While a coincidence in the relevant public is not necessarily an indication of similarity, largely diverging publics weigh heavily against similarity. Diverging customers can be found in the following cases where: (a) the goods/services of both lists are directed at the public at large which can however be clearly categorised by their different (personal) needs, ages, etc. Example: wheelchairs versus bicycles (Class 12). (b) the goods/services of both lists are directed at business customers, however acting in a very different market sector. Example: chemicals used in forestry versus solvents for the lacquer industry (Class 1). (c) one relevant public consists of the general consumer and the other of business customers. Example: containers for contact lenses versus surgical apparatus and instruments (in Class 10). 11. Usual origin (producer / provider) There is a strong indication of similarity when, in the mind of the public, the goods/services have the same usual origin. Origin, in this context, relates mainly to the manufacturing sector or kind of undertaking producing the goods or offering the services in question rather than to the identity of the producer. For example, such goods as mineral water for medical purposes (Class 5) and mineral water (beverages) (Class 32) may be considered similar, as well as diabetic bread (Class 5) and bread (Class 30). 195

196 The geographic origin is irrelevant for a finding of similarity. Goods and services can have the same origin if it is common that the same type of company is responsible for the production/provision of both. Educational textbooks were considered of having the same origin as provision of correspondence courses since undertakings offering any kind of course often hand out those products to pupils as support learning materials The following goods may be considered similar to the following services: computer programs (Class 9) and computer software design (Class 42); clothing Class 25 and clothing alteration Class 40; glasses (optics) Class 9 and opticians services Class 44; printed matter Class 16 and printing Class 40, book publishing Class 41. The criterion usual origin has to be applied in a restrictive way in order not to dilute it. If all kinds of goods/services deriving from one big (multinational) company or holding were found to have the same origin, this factor would lose its significance. Example Cosmetics and foodstuff might be produced under the umbrella of one company but this does not reflect common trade custom according to which these types of goods have different producers. When determining the usual origin of a good/service the following features might be relevant. Manufacturing sites Example Varnishes, lacquers colorants and mordants (Class 2) are typically produced in the same production enterprises, normally by specialised chemical companies. The place of production can be a strong indicator that the goods/services in question come from the same source. However, while the same manufacturing sites suggest a common usual origin, different manufacturing sites do not exclude that the goods come from the same or economically-linked undertakings. For instance, 196

197 books and electronic media (goods in competition, e-media substituting books) are both goods of a publishing house. Methods of manufacture Example Leather belts (Class 25) and leather handbags (Class 18) are not only manufactured in the same sites, e.g. leather workshops, but also using the same tools and machines for the treatment of leather. (Technical) know-how Example Computer virus protection services (Class 42) and software design (Class 42) involve similar technical know-how in the field of information technology. Established trade custom known to the public An established trade custom, such as when manufacturers expand their businesses to adjacent markets, is of particular importance for concluding that goods/services of different nature have the same origin. In such situations it is necessary to determine whether such expansion is common in the industry or, conversely, whether it may occur in exceptional cases only. Example where extension has become customary Shoes and handbags: It is customary on the market that the producers of shoes are usually also involved in the manufacture of handbags. Example where extension is not (yet) common Clothing and perfumes: Even though some couturiers that make fashion clothes nowadays also sell perfumes under their marks, this is not the rule in the clothing industry, and rather applies to (economically) successful designers Relation between different factors Some criteria are interrelated and some criteria are more important than others. As a result of weighing all these factors in accordance with their respective 197

198 importance in relation to the goods/services at issue, any similarity may differ in degree. 1. Interrelation of factors It must be noted that in many cases there will be relations between the factors in the sense that where one is shared another one might coincide as well. There are cases in which a distinction between various factors will be difficult to draw. This is particularly true as far as nature, purpose and method of use are concerned. Where the examiner encounters such difficulties, it is sufficient to treat these factors jointly. Example An engine is a machine for converting any of various forms of energy into mechanical force and motion. In such a case, it is difficult to distinguish the nature from the purpose of this good. Therefore, a distinction is not necessary. 2. Importance of each factor In assessing the similarity of goods and services all relevant factors characterising the relationship between them should be taken into account. However, depending on the kind of goods and services a particular criterion may be more or less important. In other words, the various criteria do not have a standard value, but rather their specific importance should be determined in the context of each individual case. In general, the weight of each factor will depend on the impact it has on a possible confusion of the origin. Criteria clearly suggesting that the goods/services come or do not come from the same undertaking or economically linked undertakings should take precedence over criteria that seem to have only a secondary bearing Generally strong factors Usual origin (because it has a strong impact on likelihood of confusion) Purpose (because it is decisive for the choice of the customer to buy or select goods/services). 198

199 Nature (because it defines the essential qualities and characteristics of the goods/services) Complementarity (because the close connection between the use of the goods/services makes the public believe that they share the same source) In competition (usually goods/services that are in competition have the same purpose and are targeted at the same public) Less important factors Method of use (even dissimilar goods can be used in the same manner, e.g. baby carriages and shopping trolleys) Distribution channels (even dissimilar goods can be sold in the same section of stores depending on different display practices, e.g. chewing gum and cigarettes) Relevant public (especially when goods/services are directed at the general public). 3. Different types of comparisons: goods versus goods, services versus services and goods versus services. The same factors for comparing goods with goods are relevant for the comparison of services with services. However, in applying these factors, the basic differences between goods and services (tangible vs. intangible) must be considered. Furthermore, the same principles that apply for the comparison between goods and goods and between services and services apply in cases where goods are compared with services. By their nature goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found. 4. Degree of similarity. 199

200 Goods and/or services can be found similar to different degrees (low, average, high) depending on how many factors they share and the weight given to each of them. The degree of similarity found between the goods and services is of relevance when finally deciding on the likelihood of confusion. Generally, one factor on its own is not sufficient to find a low degree of similarity between the goods/services, even if it is a strong factor. Examples for dissimilarity: Cars and bicycles both share the same purpose (taking oneself from A to B), but this does not render them similar. Although window glass and glasses for spectacles have the same nature, they are not similar, since they do not coincide in other relevant factors, such as purpose, producer, distribution channel and relevant public. It is the combination of various factors and their weight which allows the final conclusion on similarity. The combination of two strong factors, such as nature and producer, or the combination of one strong and two weak factors will often lead to a similarity. In contrast, the combination of two weak factors, such as distribution channel and relevant public are, in principle, not conclusive for a finding of similarity between the goods and services. Examples for similarity Milk and cheese have a different purpose and method of use; they are not in competition or complementary. However, the fact that they share the same nature (dairy goods) and usual origin (dairy company) is decisive for a finding of similarity. Although pharmaceuticals and plasters have a different nature, they share a similar purpose, i.e. the cure of diseases, disabilities or injuries. Furthermore, they have the same distribution channels and relevant public. Therefore, they are similar. The amount of coinciding factors found together with their importance/weight establishes the degree of similarity. Generally speaking, the higher the number of common factors the higher the degree of similarity. A similarity found on the basis 200

201 of two factors only would normally not be high, contrary to cases where the goods/services coincide in four or more relevant factors. However, there is no mathematical analysis possible since it always depends on the specific circumstances of each case Similarity of goods and services and similarity of signs The degree of similarity of the goods is closely connected to the degree of similarity of the signs. The higher the degree of similarity - the higher the likelihood of confusion and, hence, the wider the range of products that can be found similar. In situations when the applied for sign and the cited TM (or sign) are identical or almost identical, the respective goods and services may be recognized as similar. For example, goods from Class 12 cars, and services from Class 37 automobile servicing may be considered similar. The range of goods recognized as similar may be extended in case of a cited trade mark or a family of trade marks belonging to one and the same rightholder and registered for a wide variety of goods (in one class or in several classes). Examples: 1. A sign was applied for vending machines; cash registers in Class9. The cited TM was registered for the following goods in Class 9: sound transmitting apparatus, projection, telegraph, telephone, facsimile apparatus; astronomical, geodesic instruments, instruments for weighing, navigation, optical, physical, chemical; measuring instruments, meteorological; computers, printers, modems; TV sets, rescue equipment. Thus, the owner of the cited mark holds the exclusive right to use in respect of many groups of goods. In this case the use of identical or confusingly similar trade marks by different undertakings in respect of the above goods may lead the consumer to think that the goods come from and the same undertaking. Hence these goods may be viewed as similar. 2. A sign was applied for goods in Class 21: shoe brushes, shoe polishing sponges; and Class 26: shoe laces. During examination three confusingly similar trade marks, belonging to one and the same rightholder, were 201

202 revealed. The earlier TMs were registered for goods in the following Classes: - one TM was registered for goods in Class 3: cosmetic creams; soaps, perfume; deodorants for personal use; - another TM was registered for Class 18: wallets; umbrellas; purses, leather belts, ladies bags; suitcases; - the third TM was registered for goods in Class 25: shoes, clothing. In this situation the claimed goods in Classes 21, 26 may be viewed as similar to the goods in Classes 3, 18, Additional factors affecting the finding of a likelihood of confusion Application of Article 6-quinquies (С), Paris Convention In accordance with Par. 1, Article 6 quinquies, C-1, Paris Convention, in determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use. This provision of Par. 1, Article 6 quinquies, C-1, Paris Convention, is of a rather general nature, its application covers, inter alia, the granting of protection under Par.6, Art. 1483, Civil Code. In particular, the factual circumstances may show that there is no likelihood of confusion by the consumers of the compared marks or signs and that the respective goods or services are not perceived by the consumers as similar and coming from the same undertaking. When assessing the similarity of signs and the similarity of goods or services, the following factual circumstances should be taken into account: reputation of the sign on the market, long conflict-free use of the compared signs on the same territory, actual use of a family of trade marks, proof of actual confusion of the compared signs, earlier resolutions of law enforcement bodies, relevant public, marketing conditions and other circumstances of the marks and signs actual use. The specific circumstances of the case and the combinations of various factors 202

203 affect the finding whether or not marks are confusingly similar and whether the goods are similar Similarity with a family of trademarks The use of a family of trade marks, all based on one and the same element, is a factor which increases the risk of confusing trademarks and signs. In such a situation a new applied for sign including the same element may be perceived by the consumers as a continuation of the family of TMs. A family of TMs may be formed by adding various formants to a strong element various formants (INDASFORM, INDASPAD, INDASLIP, INDASEC) or unprotectable signs (VIZSPA, VIZPOWER, VIZCARE, VIZCLEAN). The applied for sign with the same strong element (for example, INDASTEN and VIZSOFT) may be found confusingly similar to the respective family of TMs. A finding of a family of TMs requires the use of at least three TMs based on the same element. Two TMs sharing a similar element cannot be considered a family of TMs. The basic element of a family of TMs may be a word element, a figurative element, or a combination of both. Consumers are likely to recognize an element as forming a family of TMs belonging to one and the same undertaking, only if this element has distinctiveness, either initial, or acquired through use. Coincidence of unprotectable elements or of elements with a weak distinctiveness, which are frequently used by various undertakings, is insufficient for a finding of a family of TMs, belonging to one and the same undertaking. Resolution of the 9 th Arbitrazh (Commercial) Court of Appeals of March 13, 2013, А / : As correctly noted in Rospatent s decision, the element «ГАММА/GAMMA», included in the trademarks, belonging to the applicant, is not a strong element (has weak distinctiveness). The meaning of «гамма» implies a certain system of elements in a logically structured consistent interdependent development. Hence, in the context, the element «гамма» points not at the specific features of an object or phenomenon, but at their being part of a system. For example, gamma (range) of chamomile medications, gamma of medical ointments against radiculitis, gamma of medical perfumes, etc. 203

204 Evidence, that the medical preparations registered by the Company (Milgamma, Folgamma, Simgamma, Bisogamma, Каптогамма, Метфогамма, Бисогамма) form a system of preparations, sharing some common feature and at the same time differing from all other medical preparations, has not been submitted. Hence, we uphold Rospatent s decision that the element «гамма/gamma» in the TMs belonging to the Company cannot be recognized as a dominant one. Consequently, distinctiveness is rendered to the compared TMs by their initial elements. Based on the above and taking into account the existence of TMs of other manufacturers with the element «гамма/gamma», the applicants argument that the TMs of the Company form a family of trademarks cannot be found grounded. The recognition of the existence of a family of TMs requires that their common element be identical or vary only slightly. Insignificant graphic variations in the common element, as a rule, do not lead to a finding of no family of TMs, if they may be perceived by consumers as an updated representation of the same line of goods or services. At the same time, differences in the number or placement of letters in a word element, which serves as the basis of several TMs, precludes a finding of a family of TMs. As a rule, to form a family of TMs, the common element must be located in the same position in all the TMs, for example, always in the beginning or always in the end of a word, and it should bear the same meaning. If in the applied for sign the common element holds a position differing from that in the earlier marks, the conclusion would be that the consumers would not perceive this sign as belonging to the said family. For example, the opposed mark TENINDAS will hardly be associated with the family of TMs INDAS-, in which the element INDAS is always positioned in the beginning of the marks forming the family. As a rule the earlier marks forming a family are registered trademarks. However, the consumers perception the existence of a family of TMs belonging to the same undertaking is affected by the actual use of unregistered signs as well Coexistence of trade marks on the same territory Very often, arguments in favor of no risk of confusion of the compared TMs and signs by consumers refer to the actual conflict-free coexistence for some time of the TMs and the signs on the same territory. When assessing such arguments the following should be taken into account. 204

205 A finding of similarity to the degree of confusion between TMs and signs is based on the application of the norms of the Civil Code, of the Rules and of the present Guidelines. The simple fact that some TMs and signs coexisted for some time on the same territory does not testify in favor of absence of similarity to the degree of confusion, because this coexistence could have resulted from various reasons which do not preclude the risk of confusion by consumers. Therefore, peaceful coexistence of trademarks in the same territory cannot be viewed as an independent precondition for a finding of absence of similarity to the degree of confusion. This coexistence may be viewed only as an additional factor testifying to the absence of an actual risk of confusion, and it may be decisive only when similarity to the degree of confusion is debatable. On the other hand, if similarity of TMs to the degree of confusion is obvious, it is recognized irrespective of any factual circumstances of the marks use. Resolution of the Moscow Arbitrazh (Commercial) Court of February 15, 2006, А / : As for the applicant s arguments on the absence of use of the opposing TM before the priority date of the contested registration and the use by the applicant of the contested TM, it must be noted that they do not override the abovementioned reasoning on the existence of similarity to the degree of confusion in respect of similar goods defined on the basis of similarity features envisaged in the abovementioned legal norms. Evidence of peaceful coexistence of conflicting marks on the market may be taken into account only if it truly proves that there is no risk of confusion. Only evidence of actual use of signs which are identical to or just slightly dissimilar from the compared TMs will be taken into consideration. Only the coexistence in the marketplace can be taken into account. The mere fact that both trade marks exist in the national register (formal coexistence) is insufficient. The applicant has to prove that the trade marks were actually used in the same territory for a certain period of time. Resolution of the Supreme Arbitrazh (Commercial) Court of the Russian Federation of June 17, 2008, 4173/08: In accordance with Par. 1, Article 6 quinquies, C-1, Paris Convention, in determining whether a 205

206 mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use. The trademark «ZLATOPRAMEN 11» first obtained national registration in the Czech Republic and has for several years been actively used not only in the Czech home market, but in other countries as well, including Austria, Montenegro, Switzerland, Germany, Spain, France, Italy, the UK, Sweden, Finland, etc. Neither in the Czech Republic, nor in other countries where «ZLATOPRAMEN 11» beer was sold, the trademarks «ZLATOPRAMEN 11» and «STAROPRAMEN» were not considered similar to the degree of confusion. The proprietor of the TM «STAROPRAMEN» («Pivovary Staropramen a.s.») never opposed the registration of the mark neither in Russia, nor in other countries. The conflicting trademarks have peacefully coexisted for many years both in their country of origin, and in other countries; no evidence of their confusion has been submitted. Another argument in favor of absence of the risk of confusion of the conflicting signs could be evidence that the common element of the signs is also used in trade marks belonging to third parties. The fact that the common element of the marks is used by many entities will be taken into account when assessing the value of these elements in the marks. Taking into account the specific circumstances, a conclusion may be drawn that the common element shared by many trademarks is a weak one and thus, the fact that it coincides in the compared signs does suggest similarity to the degree of confusion. Resolution of the Moscow Arbitrazh (Commercial) Court of May 5, 2006, А40-934/ : Combinations of the words «LIFE» and «STUDIO» are often used in the Russian market of sports-related services, in particular for fitness centers, beauty salons, sports magazines, and hence, have lost any originality, and the meaning is perceived by consumers as an indication of the type of services provided. All the above precludes the definition of the element LIFESTUDIO as a strong one. Whereas the meaning of the word element HEAD is strengthened by the reputation of the sports products bearing the sign Evidence of actual confusion of trademarks Similarity of TMs to the degree of confusion may be proven by evidence of such actual confusion. The current legislation does not require such evidence to be submitted for a decision on the existence of a likelihood of confusion to be passed. A finding of 206

207 similarity to the degree of confusion may be based on the comparison of the signs, as applied for and as registered, based on the respective criteria for establishing similarity. However, actual incidences of confusion by consumers may weigh in favour of likelihood of confusion and play a decisive role in cases when similarity is debatable. It must be assumed that in actual everyday life there will always be individual people who confuse and misconstrue everything and others who are extremely observant and entirely familiar with every trade mark and therefore there is no legal value in pointing to the existence of both such people because they do not reflect the overall situation on the market. The general rule is that the assessment should be based on the probable perception of the average consumer, who is assumed to be reasonably well-informed and reasonably observant and circumspect. Therefore, incidences of actual confusion can influence the finding of likelihood of confusion only if it is proven that such incidences usually accompany the existence of the conflicting trade marks in the market in the typical situation in trade involving the goods and/or services concerned. It is not possible to say how many incidences of actual confusion would be sufficient to arrive at a finding of a risk of confusion. To properly weigh evidence on the number of occasions when actual confusion has arisen, the assessment must be made in the light of the number of opportunities for confusion. If the business transactions are voluminous but the instances of confusion are sparse, such evidence will have little weight in the assessment of likelihood of confusion. The following may be presented as proof of actual confusion: findings of sociological polls, letters and complaints from consumers and competitors, data from the media and the internet, including data from forums and blogs. The findings of a well conducted poll can give a good understanding of the customers perception of the compared marks and indicate whether there is a likelihood of confusion. Resolution of the Supreme Arbitrazh (Commercial) Court of the Russian Federation of July 18, 2006, 3691/06: The fact that there is a risk of confusion is evidenced by the findings of sociological polls. The polls were conducted on the initiative of, both, the plaintiff and the third party. 207

208 In the first case about 30% of the respondents said that the trademarks belong to the same undertakings, 29% were at a loss for an answer. This shows that the consumers have doubts. In the second case 6% of the respondents gave positive answers, 12% were at a loss. Thus, from 20 to almost 60% of the polled consumers were not able to definitely distinguish the trademarks of the competitors, which is a very significant result affecting promotion of the products on the relevant market. However, in practice, due to certain errors or deficiencies in the manner the polls are conducted or interpreted, the real perception of the public may turn out to be distorted. Thus, when responding to the questions of a poll, the respondents are more focused and attentive in their perception of the marks, furthermore, they have a chance to directly compare the marks and to think over their answers. In practice, as a rule, there is no possibility to perceive the compared marks simultaneously; the comparison is against an image imprinted in the mind; and the consumers are not concerned with confusing the marks. It should also be kept in mind that during an opinion poll respondents tend to distinguish a mark known to them from other similar signs easier, whereas in reality, when they are choosing spontaneously the reputation of the earlier mark enhances the risk of confusion. Furthermore, the results of opinion polls may be distorted intentionally by putting the questions in a certain order, by wording them in a certain manner or otherwise. Resolution of the Court on IP Rights of November 11, 2013, СИП-66/2013: Rospatent noted that the tools used during the poll were aimed at deliberately forming the respondents opinion and that the answers were predictable. In particular, signs with the word «ELLE», which were put on the demonstration cards presented to the respondents, were per se undoubtedly similar, but a conclusion on their similarity irrespective of the specific goods cannot lead to a finding of the confusing nature of the contested trademark in respect of the manufacturer of the specific goods. Leading questions were asked during the poll, as well as sequences of questions which make people change their assumptions, opinion and assessments to make them consistent; all this affected the credibility of the obtained data. The applicant has failed to override these arguments of Rospatent. The original questionnaires have not been presented neither to Rospatent, nor to the Court, which makes it impossible to verify the data and the computations. 208

209 Polls conducted without taking into account all the circumstances, which must be considered in accordance with the legislation, should also be dealt with cautiously. Such circumstances include neglect of the goods and services, for which the marks are registered, findings of the surveys on similarity of compared marks to the degree of confusion, whereas the questions asked related to other signs. Resolution of the Federal Moscow Region Arbitrazh (Commercial) Court of March 17, 2010, А / : Analyzing the materials of the case, the courts correctly noted that, judging by the submitted questionnaires, the respondents were presented not with the whole conflicting marks, but only with their word elements «ЗОЛОТОЙ ФАЗАН» and «GOLDENER FAZAN». Therefore, the courts concluded that the compared marks were not assessed by the respondents in the form they were registered, i.e. as combined marks; a focus group beer drinkers was not formed for the survey, though the conflicting marks are registered in respect of similar goods beer from Class Reputation of the earlier mark One of the factual circumstances that impacts a finding of likelihood of confusion of the compared trade marks is the reputation of the earlier trade mark. The higher the reputation of the registered mark the more likely it is that the use of similar signs in respect of similar goods will lead to confusion and, hence the scope of protection of such a mark is larger. Resolution of the Supreme Arbitrazh (Commercial) Court of the Russian Federation of July 18, 2006, 3691/06: The risk of confusion depends on, firstly, the distinctiveness of the earlier mark, secondly, the degree of similarity of the conflicting marks, thirdly, the similarity of the respective goods and services. The courts have failed to carry out an overall assessment of the trade marks, taking into account not only the visual and graphic similarity, but also their distinctiveness; nor did they assess the similarity of the goods bearing the conflicting marks. The trade marks of the company in respect of cosmetic products have a significant distinctiveness, they are one of the most popular cosmetic brands in Russia, holding a big share of the market, and are easily recognized by consumers. This distinctiveness is impacted by the existence of a family of marks with the said word and figurative elements belonging to the company Bayersdorf AG, as well as by the long duration of their use in the Russian market. 209

210 However, even a high reputation of the earlier mark does not expand its scope of protection in respect of goods and services which are not obviously similar to the goods for which it was registered; otherwise it would contradict the current legislation. Such a scope of protection in respect of dissimilar goods may be granted only to a trade mark which is recognized as a well known mark in the Russian Federation as per the established procedures. However, in cases when a finding of similarity of the trade marks to the degree of confusion or a finding of similarity of goods and services is debatable, the reputation of the trade mark may serve as an argument weighing in favor of a risk of confusion. The well-known status of a mark or its reputation acquired through use may be taken into account only in respect of specific goods and services for which it has acquired its reputation. Other factual circumstances may concern the use of only one of the elements of the earlier mark. Thus, for example, an initially weak element of a mark may acquire distinctiveness through use and become the main individualizing element of the mark; and similarity to such an element may lead to the consumers confusion Assessment of the actually used altered trade mark In certain cases substantiation of likelihood of confusion of marks is submitted in the form of evidence relating to actual use of sign which differs from the applied for sign or the contested trade mark. According to the law a finding of similarity to the degree of confusion must be based on the comparison of trade marks as applied for and as registered. However, in certain cases, evidence relating to the use of an altered sign may also be taken into account. The following needs to be kept in mind in such situations: When the difference between the actually used sign and the applied for or contested mark is not significant and does not entail a different perception by the customers, the evidence relating to such use may be taken into account in the assessment of similarity. Likelihood of confusion depends not only on the compared signs, but also on how 210

211 they are used on the market. In cases when similarity is not definite, but rather arguable, the risk of confusion is also impacted by the good (or bad) faith actions of the person using the contested sign. When the factual circumstances show that the contested sign is intentionally used so as to confuse the consumers, this may lead to a final conclusion on the existence of the risk of confusion. At the same time, if the actually used sign differs so significantly from the applied for mark or the contested mark that it changes the perception of the public, evidence relating to such use should not be taken into account when assessing the similarity of the signs Earlier decisions by Rospatent The current legislation does not stipulate that decisions on similarity to the degree of confusion and on similarity of goods should be based on previous decisions of Rospatent in similar cases. Each case has to be dealt with separately and with regard to its particularities, and the decision should be based on relevant provisions of normative acts and the methodological approaches to assessment of similarity. Resolution of the Supreme Arbitrazh (Commercial) Court of the Russian Federation of November 8, 2006, 8215/06: References to the establishment of a certain practice of registration of similar marks in this sphere (Classes 35 and 41) ("Человек года" (Person of the year), "Лица года" (Face of the year), "Бренд года" (Brand of the year), "Песня года" (Song of the year)) cannot be taken into consideration. Each of these trade marks should be treated separately, opposition against those marks was never the subject of the disputes chamber s consideration; decisions in respect of them were never contested. Notwithstanding the fact that previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon the case at hand. The principle of equal treatment and the principle of sound administration should be abided by. Rospatent takes into account the decisions already taken in respect of similar 211

212 applications and considers with especial care whether it should decide in the same way or not, especially if the sign under consideration belongs to the same person. However, evidence is not always available on whether the previous decision was taken under comparable factual circumstances and on a similar legal basis Relevant public and degree of attention A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. Definition of the relevant public and of the degree of its attention plays an important role in assessing the likelihood of confusion. The relevant public consists not only of actual customers of the goods and services, but the potential customers as well. The average customer is assumed to be reasonably well-informed and reasonably observant and circumspect. However, the degree of a consumer s attention when choosing goods and services differs depending on the type of goods chosen. Depending on the relevant public, all goods may be broken into two categories: consumer goods and goods of industrial/technical purpose. When assessing the similarity of consumer goods, such as, food products, household appliances, hygienic and cosmetic products, clothing, wines, etc., a stricter approach may be taken than in respect of professional/specialized goods. Customers buy the consumer goods, as a rule, from time to time, so the risk of confusion is higher. In respect of goods of industrial/technical purpose the likelihood of confusion is lower, because these goods are intended for a small circle of consumers, including experts who are usually aware of the various manufacturers in the respective sector. Such goods include industrial machinery, instrumentation, raw materials, etc. Resolution of the Federal Moscow Region Arbitrazh (Commercial) Court of August 1, 2012, А / : The courts also took into consideration the fact that services from Class 42, in respect of which 212

213 the compared marks are registered and which are rendered by both the owner of the contested mark and the opponent, are rendered in the narrow specialized field of design of metallurgical plants, where the circle of such service providers as well as the circle of customers is limited; all this points to the impossibility of confusing the marks on the market. When assessing similarity of goods, note should be taken of whether they are durable goods or short-life goods and of their price. When purchasing long-life goods or expensive goods (cars, refrigerators, computers, furniture, jewelry, delicatessen food, exclusive cosmetics) consumers tend to be more attentive, and likelihood of confusion in such cases is not high. If the compared goods belong to both categories: broad category of consumer goods and category of specialized goods (for example, if the goods are indicated by generic terms that cover both categories), the likelihood of confusion should be assessed from the perspective of consumers with a lower degree of attention. And vice versa, in respect of short-life products or inexpensive products the degree of attention of the consumers is low, and hence, the likelihood of confusion is higher. This applies to such products as food products and beverages (bread, cereals, vegetables, milk and dairy products, etc.), goods for hygiene purposes, periodicals, stationary, etc. Also, the channels of distribution should be taken into account. For article sold through retail shops the likelihood of confusion is higher than for goods sold on a wholesale basis under contracts. Depending on the conditions of purchase more attention may be paid to the phonetic or visual perception of signs when assessing likelihood of confusion. Visual similarity may have a greater importance for inexpensive goods sold in supermarkets, where consumers are to a greater degree guided by their visual perception. Phonetic similarity may have a greater importance in cases when goods are traditionally ordered orally, for example, pharmaceuticals Recommendations on the application of provisions of the Civil Code relating to the rightholder s consent to the registration of a similar mark General. 213

214 Subpara. 1, 2, 3 and 4, par.6, Article 1483, CC, stipulate that signs identical or similar to the degree of confusion to the following cannot be registered as trade marks: - trade marks of other persons applied for registration in respect of similar goods and having an earlier priority, if the application for registration has not been withdrawn or refused; - trade marks of other persons protected in Russia under, inter alia, international treaties in respect of similar goods and having an earlier priority; - trade marks of other persons, recognized as well known marks in Russia in accordance with the procedures stipulated in the Code, in respect of similar goods having an earlier priority; At the same time, subpar.5, par.6, Ar. 1483, CC, states that registration in respect of similar goods of a sign similar to the degree of confusion to one of the above mentioned marks, except for marks treated as well known marks, may be carried out in the event that of the rightholder s consent, provided that such a registration is not liable to lead to confusion. Such consent may not be withdrawn by the rightholder. Provisions of subpar.5, par.6, are not applied to signs similar to the degree of confusion to collective marks. This norm contains several important provisions. First of all, it follows that consent may be granted only if the older mark is similar to the degree of confusion to the applied for mark. If the marks are identical, such consent may not be granted. Identity in this case means coincidence in all the elements. This norm allows the applicant, who is aware of the existence of the older confusingly similar mark, to submit at filing, or during examination, or upon the respective opposition, documents proving the consent of the earlier mark s owner to the registration of the applied for mark. However, this norm does not provide for a consent to registration from a proprietor of a mark, recognized, as per established procedures, as a well-known mark. The norm also states that the consent will be accepted only if the registration of the applied for mark is not liable to lead to confusion. 214

215 Another important feature is that the consent granted by the proprietor of the older mark may not be later withdrawn. And yet another important feature is that, if the older mark is a collective one, the consent of its proprietor will not be taken into account Requirements to the documents containing consent to registration The document that is to prove the consent of the rightholder to the registration of the applied for mark (consent document) may be in any form, for example, it can be a civil contract, stating the conditions on which the rightholder is granting consent, the obligations of the parties and actions in case of default on the obligations. The original of the consent document is filed and added to application file. A document is recognized as a consent document if it contains the following data: - complete data about the person granting consent to the TM registration, which allow to identify the person as the rightholder of the conflicting mark (name, business address or residential address); - complete data about the person receiving the consent to the TM registration, which allow to identify the person as the applicant (name, business address or residential address); - expression of consent of the rightholder to the registration of the applied for mark, stating the number of the application, if it has been assigned, a description of the sign and a representation of the sign; - list of goods and services in respect of which the rightholder gives the consent; - date and signature of authorized person. The consent document may contain other data as well. If the consent document is in the form of a contract, it must bear the signatures of the applicant and the rightholder or of their authorized representatives. The representation of the applied for mark, attached to the document, must be signed by the same person who signed the consent document. 215

216 When the rightholder of the trade mark is a Russian legal entity, the signature on the document should be stamped by the organization s seal. Signatures of foreign legal entities must be sealed, if this is required under the laws of the country where the legal entity was established. When the consent document is signed by a representative, a power of attorney, authorizing the representative to grant consent to the registration of the TM, must be attached. If the power of attorney is not submitted, or if it does not contain explicitly the authority to grant consent to the registration on behalf of the rightholder, any document signed on the basis of such a power of attorney or any document signed in the absence of the power of attorney will not be considered as the rightholder s consent to registration. The consent document may be submitted in Russian or in another language. If the document is submitted not in Russian, a duly certified translation into Russian should be attached. If the consent document does not comply with the above requirements it will not be regarded as an expression of the rightholder s consent to the TM registration. A license agreement which does not contain the above mentioned data will not be regarded as a document certifying the consent of the rightholder to the registration of the applied for sign as a trade mark Recommendations in respect of correspondence and document processing in the event of consent by the proprietor of an identical trade mark If, during the examination of the applied for sign or during opposition proceedings, it turns out that the granted consent was from a proprietor of an identical mark, such consent will not be accepted; the applicant will be duly informed with references to the relevant provision of par.6 Article Recommendations in respect of correspondence and document processing in the event of the rightholder s request to withdraw his consent If, during the consideration of the submitted consent, a condition is found in it 216

217 stating the possibility of future revocation, the applicant is informed of the impossibility to accept such consent on the grounds of its noncompliance with subpar.5, par.6, Article The applicant is advised to furnish a consent in compliance with the legislation requirements. If, during the examination of the applied for mark or during the processing of the respective opposition from the proprietor of the older mark a request for withdrawal of an earlier consent is lodged, such withdrawal will not be effected, and the proprietor of the older mark will be duly informed with references to the respective provisions of subpar.5, par.6, Article 1483, CC Recommendations in respect of correspondence and document processing in the event of consent from the proprietor of a duly recognized well known mark. If, during the examination of the applied for mark or during the processing of a respective opposition it is found that the consent granted was from the proprietor of a mark duly recognized as a well known one, such consent will not be accepted; the applicant will be duly informed with references to the relevant provisions of par.6 Article Recommendations in respect of correspondence and document processing in the event of consent of a proprietor of a collective mark If, during the examination of the applied for mark or during the processing of the respective opposition it is found that the consent granted was from the proprietor of a collective mark, such consent will not be accepted; the applicant will be duly informed with references to the relevant provisions of par.6 Article General approaches to the possibility of registering the applied for sign on consent from the proprietor of the conflicting mark. Data contained in the consent document are taken into account during examination of the applied for sign or during the processing of opposition on the basis of the following recommendations. 217

218 When the submitted consent meets the requirements of par.6, Article 1483, CC, and of the present Guidelines, it cannot be refused and must be taken into account when deciding on the application. The degree of similarity of the applied for sign and the conflicting trade mark (even when the compared signs are phonetically or semantically identical) is irrelevant when taking into account the consent. However, the consent document does not always rule out the likelihood of confusion. If registration of the applied for sign, which is similar to the degree of confusion to the older mark, is liable to lead to confusion, the consent will not be accepted. It should be kept in mind that the likelihood of confusion is not dependent only on the similarity of the applied for sign and the older mark. Hence, if, during the examination of the applied for mark or during the processing of the respective opposition, it is found that the applied for sign and the older mark have a high degree of similarity, however there is no evidence of likelihood of confusion, the consent cannot be not accepted and must be taken into account in deciding on the application. Likelihood of confusion is determined for each individual case separately taking into account the factual circumstances and the presented documents. In particular, in cases where there is evidence that the conflicting trade mark is widely known among potential customers and is associated with a specific producer, the likelihood of confusion is higher. 218

219 8. Examination as to compliance with the requirements of Article 1483, Par.7 Article 1483, par.7, Civil Code, prohibits the registration as trade marks, in respect of any goods, of signs which are identical or similar to the degree of confusion to protected denominations of origin, or to signs which were filed for registration as such before the priority date of the trade mark, except for cases when the denomination or the confusingly similar sign are included as unprotected elements in a trade mark registered in the name of the person who has the exclusive right to the denomination, provided that the trade mark is registered in respect of the same products for which the denomination of origin was registered. According to Article 1516, par.1, CC, a denomination of origin is a sign consisting of or containing a contemporary or historical, official or nonofficial, full or abbreviated name of a country, city or rural settlement, locality or of any other geographical area, as well as a sign derived from such a name and having become known through use in respect of goods, the special properties of which are determined exclusively or essentially by the natural conditions or human factors which are typical for the geographical area. The above provisions of Article 1516, par.1, are applied, inter alia, to a sign which identifies a product as originating from a certain locality and, though it does not contain the name of the locality, it has become known through use in respect of the product, the special qualities of which meet the requirements stated above (Art.1516, par.1, second par.). Examples of such signs are given below. Registration # Trade mark Element of the TM which is not a geographical denomination but has become a protected denomination of origin International registration CAVA 219

220 Certificate Feta During the examination of a sign applied for registration as a trade mark and containing an element which is a name of a locality, the possibility of granting protection to such a sign must be established. First of all, it needs to be assessed whether the claimed sign or an element thereof is a name of a geographical area which has become known through use in respect of products the special qualities of which are exclusively or essentially determined by natural conditions or human factors specific for this geographic area. If the assessment shows that the applied for mark is likely to be perceived as a geographical indication of origin, provisions of Article 1483, par.1, subpar.3, may be sufficient grounds for refusal of registration. Though, the likelihood of a sign being perceived as a geographical indication cannot always be unambiguously stated. Furthermore, not every claimed sign (or element thereof) which is a name of a geographical area consists of a geographical area name which has become famous as a result of its use in respect of products that have certain qualities determined by natural conditions or human resources specific for that area. A search should be conducted to establish whether there is identity or similarity to the degree of confusion with registered denominations of origin or with marks applied for registration before the priority date of the trade mark. The above mentioned search should be conducted, to meet the requirements of Article 1483, par.7, in all cases when it is established that the applied for mark consists of or contains a name of a geographical area or a sign which allows to identify the product as originating from a specific geographical locality and, though it does not contain the name of this locality, it has become known through 220

221 use in respect of products the particular qualities whereof satisfy the requirements of Article 1516, par.1. When assessing identity or similarity of applied for word signs or word elements of combined signs with registered denominations of origin and with signs applied for as such before the priority date of the applied for sign, the following should be taken into account: 1) complete inclusion into the applied for sign of a registered denomination of origin or of an applied for denomination of origin; 2) complete inclusion into the applied for sign of a registered denomination of origin or of an applied for denomination of origin in addition to other word or figurative elements (when comparing the applied for combined sign containing a word element with an identical or confusingly similar PDO the relevance (dominant position) of the identical or similar element is not assessed; the applied for sign should be recognized as similar to the degree of confusion with the PDO as a whole even if this element does not occupy a dominant position; it is irrelevant whether another word or figurative element renders the applied for sign distinctive; the position, the size, typeface of the PDO within the applied for mark are irrelevant; 3) the applied for mark contains a part of a registered or applied for PDO; 4) the applied for mark contains derivatives of a registered or applied for PDO, for instance an attribute or adjective derived from it, a translation of it in combination with such words as style, type, method, as produced in, imitation or similar which evoke in the consumers minds the registered or applied for PDO. The applied for mark should be compared to the PDO as a whole, without breaking it into parts. Applied for marks containing PDOs may be granted protection only if the trademark application is filed by the holder of rights to the PDO in respect of the same type of goods for which the PDO is used and if the PDO is not the sole element of the mark. In such a situation the trade mark may be registered and the PDO is included as an unprotected element. Sign ХОХЛОМА # of protection document PDO 30 Rightholder ООО «Агрофирма «Волготрансгаз» (Agrofirm Volgotransgaz) Notes 221

222 TM certificate ООО «Агрофирма «Волготрансгаз» (Agrofirm Volgotransgaz) The word element «ХОХЛОМА» is included in the TM as an unprotected element ЕССЕНТУКИ PDO 23/10 TM certificate «ЕССЕНТУКИ» "Ессентукский завод минеральных вод на КМВ" (Yessentuki mineral waters plant) "Ессентукский завод минеральных вод на КМВ" (Yessentuki mineral waters plant) The word element «ЕССЕНТУКИ» is included in the TM as an unprotected element There may be cases when the applied for mark contains a word element which is similar to the degree of confusion to a PDO. But together with another word element which is not similar to the PDO it creates a totally new perception of the combination of words as a whole. Such a combination does not evoke associations with the PDO, hence, there are no grounds to declare the applied for sign similar to the degree of confusion to the PDO. For example, the applied for marks «Вологодская береза» (Vologda birch tree), «Адыгеец» (Aduigei ethnic group) are unlikely to be associated with the PDOs «Вологодское масло» (Vologda butter), «Адыгейский сыр» (Aduigei cheese). In such a case, though the applicant does not hold the exclusive right to the PDO, a mark claimed for dissimilar goods, may be registered. When the application is filed by a person who is not the holder of the exclusive right to the PDO, or the location of the applicant is not the location of the holder of the exclusive right to the PDO, the mark will be refused in respect of any goods under, both, Article 1483, par.7, CC, and Article 1483, par.3, CC, as deceptive and misleading in respect of the goods or the producer. 222

223 Examples: Sign # of protection Rightholder document TEQUILA PDO 126 Tequila Regulatory International registration Council, Mexico BRAND MARKETING Sp. z o.o. (Poland) Notes Protection in the RF refused base on Article 1483, para.3, 7, CC In cases when the applied for mark contains a well known, however, not protected in Russia as a denomination of origin, sign («Палех» (Palekh), «Дымковская игрушка» Dymkov toy), «Коньяк» (Cognac), «Шампань» (Champagne), etc.), Article 1483, par. 7 is not applied. Nevertheless, their registration as trade marks in the name of persons, who have no relation to the production of the traditional goods, may be viewed as misleading in respect of the goods or producers, as well as running against public interests. However, if the applicant proves his right to produce the products and the claimed sign does not mislead consumers in respect of the producer and the place of origin of the products and if this sign is not the sole element of the claimed mark, it may be granted protection as a trade mark with the above element excluded from individual protection. As a rule, during the examination of such signs the applicant is requested to submit the authorization of a competent body proving the applicant s right to use in his trade mark a sign which, in the future, is likely to registered as a PDO. Signs which are names of geographical areas should not be put on the list of goods and services in respect of the claimed marks, because this may lead to their turning into generic terms for the product. If the examiners find, in the list of goods and services, a term which is a name of a geographical area, a notice is sent to the applicant saying that this term may not be included in the list of goods and services. If this term is already protected in the RF as a PDO or an application has already been filed to register it as a PDO, the examiners should cite the number of the protection document or of the application in their notice. To exclude such 223

224 situations the following wording may be used for goods which include such names of geographical areas as Cognac, Champagne, Tequila : wine alcoholic drinks protected by the PDO Cognac, Wines protected by the PDO Champagne, alcoholic drinks protected by the PDO Tequila. This is not an exhaustive list of wordings. If the location of the applicant, whose list of goods contains a designation of origin, does not correspond to reality, the trade mark is refused as deceptive and misleading as to the goods or producer (Article 1483, par.3.). Examples: PDO Goods: TM/TMA Decision, application of Article 1483, par.7, Civil Code 52 АРХЫЗ (Arkhyz) Mineral water Protection granted The word element «АРХЫЗИК» is included as an unprotected element in the trade mark registered in the name of the person who holds the exclusive right to the designation «АРХЫЗ» in respect of the same goods for which the PDO is registered. 52 АРХЫЗ Mineral water Protection refused because the applicant does not have the right to use the PDO 115 АРАРАТ (Ararat) Mineral water International registration Protection granted The word element «АRARAT» is included as an unprotected element in the trade mark registered in the name of the person who holds the exclusive right to the designation «АRARAT» in respect of the same goods (mineral water)for which the PDO is registered. 83 БАШКИРС КИЙ МЕД (Bashkir honey) Natural honey Refusal to grant protection, because the applicant does not have the right to use the PDO. 224

225 20 BUDEJOVI CKE PIVO - BUDVAR Beer International registration Budweiser Budvar Refusal to grant protection, because the applicant does not have the right to use the PDO. 89 МАШУК (Mashuk) 19 Mineral water Refusal to grant protection, because the applicant does not have the right to use the PDO. 30 ХОХЛОМА (Khokhloma) Articles made of wood of artistic/decorative and utilitarian purpose:, ковши различной конфигурации vases, boxes, supports, scoops, tableware, dishes, spoons, Easter eggs, icons, plates, candlesticks, tables, chairs, gift articles, church articles, matryoshka dolls Refusal to grant protection, because the applicant does not have the right to use the PDO. 65 РУССКАЯ ВОДКА (Russian Vodka) Vodka International registration Refusal to grant protection, because the applicant does not have the right to use the PDO. 225

226 65 РУССКАЯ ВОДКА (Russian Vodka) Vodka International registration Refusal to grant protection, because the applicant does not have the right to use the PDO. International registration ДАГЕСТАН Alcoholic drink made of seasoned distilled grape spirit; brandy Refusal to grant protection, because the applicant does not have the right to use the PDO. 226

227 9. Examination as to compliance with the requirements of Article 1483, Par. 9, subpar.3, Civil Code (industrial designs) Article 1483, par. 9, subpar.3, CC, prohibits the registration as a trade mark of a sign which is identical to an industrial design, the rights to which appeared before the priority date of the applied for trade mark. This provision also applies to signs which are similar to the degree of confusion with the above mentioned subject matter (subpar.5, par.9, Article 1483, CC). When examining compliance with this requirement, it should be kept in mind that an industrial design protects the appearance of an article produced industrially or by an artisan undertaking (Article 1352, par.1, CC). Hence, industrial designs should be taken into account only when examining certain types of signs, namely: 3D signs, combined signs which include a 3D element (for example, product shape or packaging), as well as labels and printed packaging. Industrial designs should be taken into account, because 3D signs, labels and printed packaging may be granted protection as both, trade marks and industrial designs, which may result in a collision. The search on industrial designs should be conducted in the relevant Classes of the International Classification for Industrial Designs (ICID). The following are recommendations on the selection of Classes for searches in standard situations. Class 9 (containers, packaging used for transportation, handling and storage of goods) is searched for 3D signs (or combined signs including 3D elements) consisting of product packaging, for example, bottles for goods in Nice Classes 32, 33 (alcoholic and nonalcoholic beverages), bottles (vials) for goods in Nice Class 3. Class ICID (labels) is searched when any types of labels are claimed, for example for goods in Nice Classes 32, 33 (alcoholic and nonalcoholic beverages), for goods in Nice Class 30 (confectionery). Class ICID (bakers products, biscuits, confectionery, pasta, grain and cereal products, chocolate, ice cream) is searched when the shape of these products is claimed as the trade mark (shape of the biscuit, candy, ice cream, etc.). 227

228 Class ICID (pharmaceutical tablets) is searched when the shape of the tablet is applied for registration. Class ICID (cosmetic products) is searched when the shape of a soap bar or of a lipstick case is claimed. The degree of similarity between the applied for sign and the industrial design is assessed using the criteria and approaches described in Par. 7.1 of the present Guidelines. It should be noted that industrial designs are checked irrespective of the notion of similar goods or services, that is irrespective of the list of goods or services in for which the trade mark (service mark) is claimed. 228

229 10. Examination as to compliance with the requirements of Article 1483, Par. 10 (individualization and industrial designs) Article 1483, par. 10, Civil Code, prohibits the registration as trade marks in respect of similar goods of signs, elements whereof consist of means of individualization of other persons protected under the Code, similar to them to the degree of confusion, as well as the subject matter indicated in par.9 of the same article. State registration as trade marks for such signs is possible provided the consent envisaged under Article 1483, par.6 and par.9, subpara.1, 2, is submitted. It should be noted though, that in accordance with Article 1499, par.1, CC, compliance with Article 1483, par.10, is examined only in respect of some means of individualization and industrial designs. Means of individualization (of legal entities, of goods, services and enterprises) are: company names, trade marks, service marks, denominations or origin, commercial designation (Article 76, Code). Examiners have at their disposal information about protected trade marks, service marks, denominations of origin and industrial designs. As for protected company names and commercial designations, the examiners do not have at their disposal the relevant information, though this information may be obtained from third parties after publication of the TM application (Article 1493, par.1), CC). Assessment of the degree of similarity between the applied for mark and protected means of individualization and industrial designs should be carried out in accordance with the criteria and approaches described in Par.7.1 of the present Guidelines. Assessment of similarity between goods and services is conducted on the basis of the recommendations set forth in Par. 7.2 of the present Guidelines. Requirements to the documents containing the consent to registration are described in par of the present Guidelines. 229

230 11. Examination of Collective Trademarks Applications for collective trademarks are examined in the same manner as applications for individual TMs, that is, in accordance with Article 1499, par.1, Civil Code, which specifies the requirements of the Code, compliance with which is to be examined, namely: requirements under Article 1477, and Article 1483, para.1-7, par.9, subpar.3 (in respect of industrial designs), par.10 (in respect of means of individualization and industrial designs). Examination of the regulations on the use of the collective mark, which are attached to the application for the collective mark, is conducted in accordance with Article 1511, par.1, CC, and par of the Rules, which specify what information should be reflected in the regulations. In accordance with Article 1511, par.4, CC, a collective mark and an application for a collective mark may be converted into an individual trade mark or application thereof and vice versa. This can be done at the request of the applicant at the stage of examination, before a decision is adopted, provided that the requirements listed in par.6.7 of the Rules, relating to such a request, are met. In cases when an application for a trade mark is being converted into an application for a collective mark and the applied for sign contains an element which states or evokes an association with the location of the applicant, the regulations on the collective mark must be checked to identify the members of the association, in whose name the collective mark will be registered, and the territories where they are located and where they will be exercising their right to use the collective mark. The purpose is to prevent misleading the consumers in respect of the location of each member and the future place of production/sale of goods or services. Examples of registered collective marks: Collective TM, certificate ; Rightholder: Mayeriforeningen Danish Dairy Board, Denmark (DK); Registered for the following goods: 29 - butter, cheese, milk, condensed milk and 230

231 other milk products, food oils and fats Collective TM, certificate ; Rightholder: «Non-commercial organization "АССОЦИАЦИЯ РАЗВИТИЯ БИЗНЕС- ТЕХНОЛОГИЙ "КОМПЛЕКС ГРУПП"» (Association for development of business technologies Complex group ), Moscow, Russia; Registered for the following services: 35 - import-export agency; audit, bookkeeping; business expert examination; goods demonstration; market study; consultations on business management; creative business management; press reviews; updating of advertizing materials; organization of exhibitions for commercial or promotional purposes; assessment of commercial activities; assistance in business management; promotion of goods (for other persons); publication of advertizing texts;; procurement services for other persons; preparation of financial statements; public relations services 36 - credit agencies; real estate agencies, customs agencies; financial analysis; financial rent; issue of travel cheques; issue of credit cards; issue of securities; investing; information about insurance; consultations on financial issues; financial management; currency exchange; servicing of debit cards; servicing of credit cards; banking operations via the internet; electronic cash transfers; exchange brokerage; real estate brokerage; insurance brokerage; lending against security; authentication of cheques; mortgage lending; banking services; trustee s services; financing; safe storage and storage of valuables information on construction issues; masonry works; roofing; wall painting; plastering; building of industrial facilities; building of exhibition stands and pavilions; installation and repair of electrical appliances. Collective TM, certificate ; Rightholder: Industry-und Handelskammer Vuppertal- Solingen-Remsheid, Germany Registered for the following goods: 08 can-openers (not electrical), manual tools; beard and moustache trimmers; cutting and piercing arms; letter-opening knives; cutlery; penknives; garden tools (hand operated); hair 231

232 cutting tools; manicure and pedicure sets; garden shears (hand operated); hunters knives; cold arms; knives; sugar tongs; nutcrackers; blades; tweezers; cutting tools; table silverware; choppers; steel rods for knives dressing. Collective TM, certificate ; Rightholder: «Ассоциация компаний по реализации стройматериалов "АКВист"», (Association of Construction Materials Sales Companies (AKVist)), Rostov-on-the-Don, Russia Registered for the following goods and services: 02 - whitewashers anchors; fittings; bolts; screws; washers; nails; clamps; catches; reinforcing materials; wire; cables, wire ropes; rivets, chains gypsum; plaster; mortar; asbestos mortar nuts; rope clamps; plastic clamps for pipes, rivets import/export agencies; goods demonstration; commercial consultations for consumers; consultations on business management; assistance in managing commercial and industrial enterprises; promotion of goods of above classes for third parties; dissemination of samples; purchase orders processing; procurement services for third parties. 232