Well-known trademarks: The fame game

01-05-2015

Vladimir Trey

Well-known trademarks: The fame game

Alphaspirit / Shutterstock.com

Registering a well-known trademark may be an effective enforcement instrument and a valuable piece of an IP portfolio in Russia, as Vladimir Trey of Gorodissky & Partners explains.

As well as through the usual trademark filing procedures at the Russian intellectual property office, Rospatent, or under the Madrid Agreement/Protocol, legal protection for a well-known trademark can be obtained through a special recognition procedure.

In Russia, unlike in many other countries, a trademark is not granted well-known status as result of court proceedings or litigation. According to Russian trademark legislation, in order to recognise a trademark as well-known the appropriate request should be filed with Rospatent.

Three types of designations may be recognised as well-known in Russia:

•  A Russian national trademark registration;

•  An international trademark registration protected in Russia; and

•  A trademark that is not registered in Russia.

A well-known trademark shall be granted the same legal protection as an ordinary trademark. In addition, a well-known trademark provides its owner with certain important advantages:

• The legal protection of a well-known trademark is not time-limited;

• Protection extends to goods or services of a different kind;

• Protection of a well-known mark may start from the period predating the filing date of the request to recognise the trademark as well known; and 

• The commercial value of a well-known trademark is higher than that of an ordinary trademark.

Proving fame

Well-known status should be shown by numerous documents and materials confirming the intensive use of the mark and its reputation among consumers as well-known in association with the relevant goods or services and the trademark owner. In seeking to have its trademark recognised as well-known, the applicant should indicate the goods or services for which the mark became well-known and the date from which it became well-known.

"There are no requirements to validate well-known trademarks, but such marks are vulnerable to cancellation or invalidation actions filed by interested parties."

The procedure involves the following steps:

• Collecting evidence of use including opinion polls that identify the goods or services for which the trademark has become well-known and the date from which it has become well-known;

• Preparing and filing a petition with Rospatent;

• Considering the petition (which is done by the board of examiners); and

• Making a decision and issuing a certificate confirming well-known status.

As a rule the applicant is not involved in the proceedings beyond filing the request with the authorities, but if the board believes the applicant should be involved, it might be invited to the hearing or asked to provide some clarification.

Along with a petition for the recognition of a well-known trademark, the following information may be submitted:

• The results of a consumer survey, performed by a specialist organisation, revealing consumer knowledge of the trademark;

• Examples of intensive use of the trademark, especially in Russia;

• A list of countries where the trademark has acquired well-known reputation;

• Examples of advertising costs incurred relating to the trademark and examples of advertising;

• Details of the value of the trademark;

• Publications in Russian periodicals; and

• Documents containing information about supplies of goods to Russia, etc.

It is not compulsory to submit all of the above evidence. Trademark legislation does not contain a list of obligatory documents that must be submitted with a petition for the recognition of well-known status.

Special attention should be paid to opinion poll results. Such polls must be carried out in at least six of Russia’s largest cities, including Moscow and Saint Petersburg. Other cities may be chosen by the applicant depending where the trademark is used.

Determining the date from when the trademark became well-known is also crucial, and careful review of all available materials is required. The date from which the trademark became well-known should be indicated precisely.

A petition to recognise a trademark as well-known may further be denied if, for example:

• The submitted materials and documents do not prove the fame of a mark in association with all goods mentioned in the petition;

• There is a discrepancy between the mark for which the petition was made and the form in which it has been used; and

• The submitted materials do not prove that the mark was used by the trademark owner, etc.

Difficulties

Rospatent takes a strict approach towards petitions to recognise marks as well-known, and these are denied quite often. The main difficulty encountered during proceedings is demonstrating that consumers have a strong association between the trademark and the goods or services for which it is used, and with the trademark owner. Often consumers recognise the trademark but have little knowledge about its owner.

A trademark may belong to an IP right owning company, but its name might not be known to consumers. Furthermore, if the date from which the applicant would like to have its trademark recognised as well-known refers to a period in the past, the supporting evidence should predate the date mentioned in the request.

If the applicant disagrees with the decision of Rospatent, there is an opportunity to dispute the decision with the IP Court.

Protection of a well-known trademark is not time-limited. There are no requirements to validate well-known trademarks, but such marks are vulnerable to cancellation or invalidation actions filed by interested parties.

When a trademark is recognised as well-known, Rospatent will include it on the list of well-known trademarks and a certificate will be issued. Once the mark has been included on the list, information relating to the well-known trademark is published in the Official Gazette, as well as on the online open register. Currently (March 2015) there are 149 published well-known trademarks in Russia, including ‘Nike’, ‘Coca-Cola’, ‘Disney’, ‘Tiffany’, ‘Intel’, ‘Gallup Institute’, ‘Adidas’, ‘Gillette’, ‘Nikon’, ‘Elle’ and ‘Heinz’.

Interest in the recognition of well-known trademarks in Russia is growing constantly. A well-known trademark registration may be an effective enforcement instrument and a very valuable piece of an IP portfolio. 

Vladimir Trey is a partner at Gorodissky & Partners and a Russian trademark attorney. He specialises in trademarks, in particular trademark proceedings in Russia and the CIS and Baltic states, and under the Madrid Protocol. He can be contacted at: pat@gorodissky.ru 

trademark, Rospatent, well-known trademarks

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