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.
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.
The Russian Intellectual Property Court (IPC) will consider objections against Elena Gagarina’s appeal filed with the Russian Patent and Trademark Office (RUPTO). Previously, the first cosmonaut’s daughter has successfully opposed a decision by the RUPTO to register a “Gagarinsky Mall” (Gagarin Mall) trademark in Russia. The hearings will be held on October, 17th.
The RUPTO’s decision had been annulled by the IPC on February 20th, 2016. The Patent Dispute Chamber had accepted Gagarina’s appeal then. She opposed a “Gagarinsky Mall” trademark which had been registered on 4th of August, 2011 by a company owning a mall of the same name at Gagarin square in Moscow.
The IPC‘s decision of July 27th is currently opposed by both Gagarina and the Russian Patent and Trademark Office. Gagarina has quoted a statute from the Russian Civil Code which states that designations similar to the name, pseudonym or a derivative thereof, of a person who is well-known in Russia cannot be registered as a trademark without a consent given by that person or his/her heir(s).
The Russian Patent Office had previously refused Gagarina’s opposition and stated that the trademark in question does not render an unambiguous association to Yuri Gagarin personally and contains no elements associated with space exploration, but rather serves as designation for a certain location. Gagarina had not agreed and took legal actions to challenge the RUPTO’s decision in several courts.
The Intellectual Property Court of the first instance had agreed with Gagarina and ruled her objection concerning the “Gagarinsky Mall” trademark registration in Russia to be re-considered by the RUPTO. However, a higher instance court had later annulled this ruling based on a legal expertise which questioned the consumer perception of the mark. The expertise has found that about 25% of poll participants associated the trademark with Yuri Gagarin thus being enough to consider the mark as having a strong association with him as a person. Based on that, the trademark has been annulled.
Meanwhile, Elena Gagarina still holds the ‘Yuri Gagarin’ trademark in Russia.