Pirate trademark registrations of some designations, which are widely known throughout the world, still make a serious problem in Russia.

A number of famous marks became registered in the names of Russian companies, which bore no relation to said marks.

To prevent such registrations, a few years ago the Russian PTO began to apply during examination the provision of misleading or capable of confusing consumers in respect of goods or the manufacturer, and base their Official Actions on the Internet information about the actual use of trademarks.

In such cases, the Russian PTO provides an applicant with a notification, in which a reference to a web-searching system (e.g. www.yandex.ru, etc.) is made, and the applicant is informed that his claimed designation reproduces the name of the goods, which is well known in the Russian or foreign markets, or which makes a part of some company name, etc.

This procedure was applied when the verbal trademark MERTZ was filed for registration by a Russian company.

The Russian PTO stated that the claimed designation was similar to the company name of MERTZ SOLINGEN, Germany, the largest manufacturer of nail mending kits, kitchen knives, cutlery. The products manufactured by said company are exported to over 30 countries, also they are well known in Russia (see http://mertz.ru).

The Russian PTO referred to Article 6(3) of the Russian Trademark Law and concluded that such trademark registration would be contrary to public interests and misleading consumers in respect of all claimed goods, because these might be confused in commerce.

In response to an applicant’s argument mentioning that the reference to Internet was improper, the Official Action said: “… in determining protectability of a claimed designation against the Law requirements, the examiner may use Internet information, which is the electronic means of publication”.

The Patent Office’s motivation such acting is clear. It is the only way to prevent pirate trademark registrations. Still in fact the examiners studied prior use of the trademark without sufficient information available.

Moreover, such analyses is not provided by the Rules for drafting, filing and examining trademark applications and besides, it is essentially close to the examination as to the novelty, which is provided in the Russian Patent Law. The examiners however are not always consistent in their decisions and practice of examination of such cases is scarce.

Sometimes it happens that a designation known to specialists in a given field is not familiar to the examiners and they grant a registration which should not be granted.

There is below an intricate story of the trademark TOHATSU.

A Russian company, which sold Japanese products, obtained a registration for the mark TOHATSU (Certificates nos. 291295, 291296) in respect of outboard motors, though TOHATSU motors are manufactured by TOHATSU Corporation, Japan.

TOHATSU Corporation has been manufacturing outboard motors since 1956 and their validity has been recognized in more than 120 countries: in the USA and Finland, in Моrocco and Indonesia and Australia. Presently TOHATSU Corporation is one of the largest world manufacturers of outboard motors.

Also TOHATSU Corporation owns a number of trademark registrations in Japan, USA, China, Hong Kong, and international registrations, which were obtained from 1981 through 2004. All trademarks are registered in respect of the specific goods in Class 7 within the company’s product range. Regretfully said registrations do not cover Russia. As soon as the Russian company obtained trademark registration, it started to make full use of all Russian laws which protect trademark owner rights. The attack was aimed at the official distributor of the Japanese company in Russia.

The said distributor received many imperatives to stop immediately import and sales of TOHATSU outboard motors. Then police inspections of the distributor company were conducted following the request filed by the trademark owner. Then the Russian Customs received a request to stop import of TOHATSU motors.

Moreover, a claim was filed with the St. Petersburg Arbitration (Commercial) court requested to prohibit sales of said goods by alleged infringer, collect 5 million rubles (about 200.000 US dollars) compensation and publish arbitration decision in mass media to restore business reputation of the trademarks owner, which was allegedly damaged.

On behalf of the Japanese company “Gorodissky & Partners” filed an Appeal against the trademark registration with the Chamber of Patent Disputes of the Russian PTO under Article 6(3) of the Russian Trademark Law. The Appeal was based on vast evidence, which supported popularity of said Japanese products in the world (such evidence was much more comprehensive than usually supplied to the Chamber).

The Chamber rejected the Appeal holding that it did not provide sufficient information to conclude that the products were known in Russia to the extend that consumers might be confused as to its manufacturer. At the same time with the Appeal, an application on unfair competition related to obtaining and use of the trademark was filed with the St. Petersburg Division of the Federal Antimonopoly Service.

The application was supplied with the same evidence as the evidence provided to the Chamber of Patent Disputes.

The Federal Antimonopoly Service classified the actions of the trademark owner as unfair competition and issued an order to the Russian PTO to terminate trademark registration in respect of the goods, which were directly related to competing objects (in this case, only outboard motors). It should be noted, that the trademark TOHATSU was rather fortunate that the Federal Antimonopoly Service classified the fact of obtaining and use of the exclusive right to said trademark in Russia as unfair competition.

Following the decision of the Federal Antimonopoly Service, the Head of the Russian PTO refused to approve the rejection issued by the Chamber of Patent Disputes and the case was passed for new prosecution which considered the circumstances of unfair competition and invalidated the trademark registration completely, in particular in respect of the goods similar to outboard motors.

Viktor Stankovsky