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Vladimir Biriulin, Partner, Russian patent attorney , "Gorodissky & Partners" (Moscow)
Article at Managing Intellectual Property: Country updates - Russia, October 2007
   

   
   

 
Intel inside, outside, everywhere

Intel is a familiar word not only outside but also inside Russia due to a full scale invasion of computers and computer-related technologies – so much so that some of the registrations that include the word "intel" have been recognized as famous trade marks in Russia.

As it goes, intelligent people in Russia registered a trade mark Intelcross in 2003 (registration 249171). Obviously they were intelligent because they knew that a simple registration of a trade mark including the word intel understood in any country of the world would be frowned on by the Russian Patent Office and would be vulnerable to cancellation even if granted. To build a defence they first registered a company Intelcross Ltd before filing an application for the mark Intelcross.

It should be noted that the pirates are becoming more and more inventive. From simple filing for an unregistered trade mark they came to sophisticated arrangements which involve also setting up dummy companies. Such companies may be founded not only in Russia but also in such far away countries as Hong Kong. Sometimes they file a trade mark application on behalf of non-existent companies. The Patent Office is not obliged to verify whether a given company exists, especially as it is not easy to do that in respect of a company located outside Russia. In this case Intelcross Ltd was a real company and it was duly registered in Russia. It remains a question whether the company was a manufacturing or a paper company only created to trade on the trade marks.

Anyway, the Russian Patent Office was probably under the impression that the sought trade mark reproduced the name of the company that registered it.

Intel Corporation owns more than two dozen trade marks that include the word "intel" and the appearance of yet another Intel mark did not go unnoticed. Intel Corporation appealed against the registration of Intelcross in the Chamber of Patent Disputes. The Chamber however upheld the decision of the Patent Office and retained the registration.

Not satisfied with the decision of the Chamber of Patent Disputes, Intel Corporation filed a suit in court against the decision of the Chamber. Intel Corporation's claims were allowed in full by the court. Intelcross Ltd appealed against the decision of the lower instance court to the Federal Court of the Moscow Circuit. The Federal Court examined the case in its entirety. It also appointed an expert linguistic report. The report found that the disputed mark consists of two elements Intel and Cross. The first part of the mark is in close association with the name of the company Intel Corporation and is associated in the minds of Russian consumers with the computer equipment and software of that company. The second element (cross) is descriptive; it does not serve to differentiate the mark. Hence the whole mark is associated with the activities of Intel Corporation.

The court examined every aspect of the decision of the lower court and found no reasons to cancel the decision. Hence, the Intelcross trade mark did not survive and was cancelled.

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