Disputes concerning trade marks in Russia are examined primarily at the Chamber of Patent Disputes of the Russian PTO. Sometimes the Rules of the Russian PTO, which are the guiding light for the Board of the Chamber, do not cover all the eventualities in the practice of the Russian PTO.

A German company Jaguar Deutchland GMBH registered a trade mark for Jaguar through the international registration procedure (number 498048). The mark is registered for goods in class 16 – writing utensils, including pens, pencils and the like. The trade mark includes a picture of a jaguar jumping above the word.

Later, Jaguar Cars Ltd (UK) filed a trade mark application for Jaguar, a figurative trade mark including the same familiar jumping jaguar. The trade mark concerned, as may be surmised, goods in class 16: pens, pencils, etc.

Earlier this year, the Russian PTO refused the registration of the British company even though the applicant had prudently provided a letter of consent from the owner of the international registration. The examiner based his decision on the Trade Mark Law, which provides that a designation cannot be registered if it is identical or confusingly similar to a registered trade mark in respect of homogeneous goods. In such circumstances a confusingly similar designation can be registered with the approval of the owner of the registered trade mark only. The law does not mention identical designations, only similar ones.

The British applicant filed an appeal to the Chamber of Patent Disputes arguing that the examiner did not take into account an important fact: the original trade mark owner and the applicant are related to each other. This was stated in its letter of consent and it also follows from their names, which have the word "jaguar" in common. The applicant also argued that the consumer would not be misled because the companies have a common element in their names – the word "jaguar".

Despite the fact that there was agreement between the members of the feline family, the Chamber of Patent Disputes upheld the decision of the Russian PTO.

Formally speaking, it is difficult to argue against the decision of the Russian PTO and the subsequent decision of the Chamber of Patent Disputes. Both authorities acted in strict conformity with the provisions of the Russian Trade Mark Law. The law was drafted on the basis of cases that went through the Russian PTO in the past and involved the need to register similar trade marks in the names of different companies. The previous version of the law did not include the possibility of filing letters of consent at all. It was in response to the frequently encountered situations in the practice of the Russian PTO that it first began accepting these letters even in the absence of the law, relevant changes were then introduced which legitimized the submission of the letters of consent. Again, the law did not take into account every contingency that may happen.

In this situation one can only state that this was perhaps the first case in the Russian examination practice that such similar companies wanted (or simply agreed?) to register identical trade marks.

A solution to this problem might be a licence agreement between the two companies. Provided that there is no conflict between them, a licence agreement should not be a problem. As for the rank-and-file consumer these intricate details are irrelevant.