Monthly Archives: October 2016


Kalashnikov’s heirs to oppose the ‘AK-47’ trademark in Russia

The ‘M. T. Kalashnikov’ company established by the famous constructor, his daughter, and grandson, has filed an appeal opposing a ruling by the Russian Intellectual Property Court (IPC) which limited the company’s rights to the ‘AK-47’ brand in Russia in accordance with a recent lawsuit filed by ‘Kalashnikov’ business concern, the biggest Russian weapon manufacturer.

The appeal has been filed on 22nd of September, 2016; the date of the initial hearing is yet unknown.

The trademark in question, comprising an image depicting a Kalashnikov rifle accompanied by a ‘AK-47’ wording, has successfully passed a standard trademark registration procedure in Russia in 2004 and has been later prolonged by ‘M. T. Kalashnikov’ company until 2022. According to the Russian trademark database, it covered goods, such as clothes, head gear, toys, toy guns and table games. The legal protection of games and toys sold under the trademark had been later opposed by the weapon manufacturer in June 2014.

In 2014, the manufacturer’s lawsuit has been rejected by the IPC. The court had found that the trademark was used by third parties for products such as AK-47 rifle models for strikeball,  while staying fully controlled by the holder. Hence, any legal grounds for trademark termination were absent.

However, in 2015 the IPC had annulled the ruling of the first instance court and set the case to be re-considered. During the hearings, the IPC has ruled a court sociological expertise to be held; its results were later used as legal grounds for the court’s ruling. According to the court, the experts have concluded that, when used by the rightsholder, the distinctiveness of the trademark is lost. That said, 80% of poll participants have found that the mark depicts the product itself, i.e. an AK-47 Kalashnikov rifle, while 91% said that the ‘AK-47’ wording means a product (i.e. rifle) model.

The first instance IPC had terminated the legal protection of the Mikhail Kalashnikov company’s trademark for several categories of goods, including toys, toys with movable parts, and games, as it was not used by the rightsholder for these products.

The manufacturer’s representatives have explained that their interest is based on intention to use the trademark for production of full-scale rifle models, including AK-47. The IPC has ruled to leave the ruling unchanged. The gunsmith’s heirs have requested the Russian supreme court to terminate both rulings.

The ‘M. T. Kalashnikov’ company has been established in 1999 by Mikhail Kalashnikov himself, and also his daughter and grandson. The legendary weapon constructor died on 23rd of December, 2013; he was 94 years old.

‘Kalashnikov’ business concern was established in 2013 based on ‘Izhmash’ and ‘Izhmekh’ factories to consolidate all major state facilities of the Russian weapon industry. The concern’s products are supplied to 27 countries, including the US, UK, Germany, Norway, Italy, Canada, Kazakhstan, and Thailand.

Limits on Patent Filings in Russia

Russian Patent Office to set limits on the number of patent filings in Russia

New regulations on patent filing procedure will be soon passed in Russia. The Russian Patent Office has prepared a set of new amendments to the Russian Civil Code to undergo senatorial hearings in the State Duma. If passed, the applicants would be required to disclose their inventions in a more thorough and detailed manner.

According to the new regulations, a private individual can be granted only 10 patents a year.  In Russia, many private applicants take advantage of a special legal policy which, under certain conditions, allows for filing patent applications without paying state fees for the patent examination procedure. This policy is only applicable in case if the applicant is a private Russian resident and agrees to abandon all intellectual property rights in favor of any legal entity interested in commercial use of the invention. Obviously, this change will not affect PCT applications filed in Russia.

That said, the Russian Patent Office has to examine thousands patent applications and spend many man-hours each year without proper compensation. According to the RUPTO‘s officials, most applications filed under the policy are rather fantastic and have almost zero practicability.

Also, it will be harder to pass off a simple invention as a more complex one. The authors of the new bill are noting that individual inventors are tending to file complex applications disclosing, for example, sophisticated satellite navigation systems, road and bridge construction improvements, and even defense systems, as utility models (i.e. one of the simplest types of intellectual property), thus trying to minimize their state fee expenses.

However, utility models are intended to cover, for example, an improved annular collar or an armchair of certain construction, rather than a missile or a space satellite. The new bill will define utility models as items having no composite parts at all, or a maximum of two parts only. Authors of more complex devices and systems will be required to patent their ideas as full-blown inventions.

The effective date of the bill is yet to be announced.

MTS logo

Russian Patent and Trademark Office refused an appeal against the MTS trademark

The Patent Dispute Chamber of the Russian Patent and Trademark Office (RUPTO) has refused an appeal filed by Azamat Ibatullin, concerning registration of the “МТС Смарт/MTS Smart” trademark by one of the three major Russian mobile carriers, “Mobile TeleSystems” (MTS).

The author of the appeal holds intellectual property rights for a number of trademarks comprising an “MTS” literal element as their part. According to the Ibatullin, the subject trademark is deceptively similar to his trademarks. He claimed that his trademarks, as well as the subject trademark, cover a wide range of consumer goods, and requested the Russian Patent and Trademark Office to annul legal protection of the opposed trademark.

The MTS company stated that from January 1st, 2011, a combined logo containing an “MTS” literal element  is recognized as a well-known trademark in Russia. According to the data from the official Russian trademark database, the literal element of the opposing trademark held by the applicant is graphical, and it serves as a part of an image, since it is formed not by Cyrillic or Latin alphabet letters having specific form, but using graphic means, stated MTS.

Besides, dominant elements of both designations are different – the subject trademark comprises an image depicting a computer button with an “MTS” literal element, while Ibatullin’s trademark depicts a sunflower.

After holding the hearings, the RUPTO‘s officials have refused the appeal.