Ford’s application for ‘well-known’ status rejected in Russia

Automobile manufacturer Ford has suffered another setback in its attempt to gain “well-known” trademark status in Russia.

The Russian Intellectual Property Court upheld a decision by the country’s IP office Rospatent that rejected Ford’s application for “well-known” trademark status earlier this year.

The news was reported by Russian legal news publication Rapsi yesterday (October 27).

The trademark application centred on Ford’s signature blue oval with the word ‘Ford’ in white joined-up writing in the centre.

Ford argued that the trademark had been used in Russia since 2007 for cars, car parts and accessories. But Rospatent said the company’s evidence only cited names and addresses of dealerships and nothing about its operations.

But Eugene Arievich, partner at Baker & McKenzie in Moscow, said Ford could still move forward with its application despite the blow.

He said: “At first sight, the court ruling appears rather formalistic. In my view the main test is actually the fame of a trademark in a consumer’s eyes, which is best illustrated by a public opinion poll.

“As could be seen from Rospatent’s decision, the poll results showed a high degree of recognition of the trademark in Russia,” he added.

Arievich noted that Ford can either contest the decision or submit a new request to Rospatent where it would need to provide the evidence that was allegedly missing from the original submission.

Obtaining “well-known” status allows right holders to litigate against companies that operate in a different industry but have been using a similar mark.

So far 140 brand owners have registered “well-known” trademarks in Russia, with Chanel, Vogue and Gillette among the most recent registrants.

Established in 1903, US-based Ford is the fourth biggest manufacturer of automobiles in the world, according to American business magazine Forbes.