Category Archives: Russian Trademark Opposition

Black Russian Cocktail

Supreme Court: “Black Russian” trademark registration in Russia should be suspended

The Supreme Court of the Russian Federation confirmed the legality of the decision by Rospatent to invalidate legal protection for the “Black Russian” trademark.

As was previously found, the trademark registration in Russia has been made on June 10, 2013 in the name of a Dutch company Berklee Capital S.A. and covers “alcoholic beverages, namely cocktails” under the 33rd class of the International Classification of Goods and Services.

The grant decision was opposed by TSN Brands LTD on April 20, 2015 by filing an objection with Rospatent in a protest against granting legal protection to the trademark.

On December 29, 2015, the Russian Patent and Trademark Office agreed with the objection and suspended legal protection of the trademark. According to Rospatent, the “Black Russian” designation is the name of a type of food products – namely well-known cocktails – which does not possess a distinctive ability and thus cannot be used as a trademark.

This decision has been appealed by Berklee Capital S.A. to the Russian Intellectual Property Court (IPC), and later to the Supreme Court.

The Russian Intellectual Property Court in December 2016 confirmed the legality of Rospatent’s decision to invalidate the Black Russian trademark. Thus, the court rejected the cassation of Berklee Capital S.A. on the findings of IPC as the first instance. The Dutch company appealed to the court to challenge the decision of Rospatent.

The Russian Patent and Trademark Office found that the Black Russian designation was coined long before the filing date as the name of a cocktail consisting of vodka, coffee liqueur, and ice. At the same time, both Black Russian and its Russian translation (“Черный Русский”) is used as the designation of the drink.

Rospatent has noted that  the description of the classic proportions and the recipe of the cocktail are found at the official website of the International Bartenders Association, which means that every barman can use them freely.

Despite the fact that the cocktail compositions can have different ingredients (in some versions it is mixed with Coca-Cola to reduce the alcohol contents), the base has always remained the same, that is, in any case it is a mixture of vodka and coffee liquor.

On the basis of an information letter by the Russian League of Bartenders, Rospatent has found that Black Russian / “Черный русский” cocktail is included in the list of official cocktails by the International Bartenders Association and has been known since 1949 and later appeared in Russia during in the early 1990s. The cocktail is also commonly included as a part of the mandatory bartender training program.

Rospatent came to a conclusion that Black Russian is perceived by the inhabitants of the Russian Federation as a certain type of cocktail, produced according to a certain recipe, thus having no distinctive ability, while being used as a designation for certain types of goods.


‘Black Friday’ trademark registration objection rejected by the RUPTO

The Russian Patent and Trademark Office has ruled the ‘Black Friday’ trademark (held by Black Friday Ltd.) to not be cancelled. Thus, the objection filed by ‘M.Video Management’ company against legal protection of the brand has been denied.

‘M.Video Management’ stated that, as a major Russian retailer, it extensively uses the ‘Black Friday’ trademark to designate discount sales. The company’s representative also mentioned that the brand in question has been known in Russia long before the priority date of the trademark due to the large coverage by the media (the ‘Black Friday’ trademark has been registered by Black Friday Ltd. in December 2015).

However, the Russian Patent and Trademark Office has agreed with Black Friday Ltd., which stated that, as the business activities of the company covered by the trademark are different from those of the objector, no trademark infringement occurs.

It is always important to remember that Russia is a ‘first-to-file’ country in terms of the trademark priority. Thus, it is impossible to gain any legal protection solely on the grounds of the actual business use of the mark, as a legal priority date can be obtained by filing a regular trademark application with the Russian Patent and Trademark Office only.

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.