In practice, one often has cases where an application has to be filed for the state registration of a trade mark that is or includes a word element that is similar to a surname commonly used in the Russian Federation. At the same time, notwithstanding the fact that a surname is an integral part of a name (in the broadest sense) of a natural person, not only natural persons carrying out entrepreneurial activities (individual entrepreneurs), but also legal entities, wish to register such trade marks.

While trying to obtain registration for a designation of this kind, an applicant - individual entrepreneur, as a rule, faces a hindrance based on the provisions of clause 1, article 6, of the Law of the Russian Federation № 3520-I “On Trade Marks, Service Marks and Appellations of the Origin of Goods” dated September 23, 1992, with alterations and amendments made by Federal Law № 166 FZ, dated December 11, 2002 (hereinafter – the Law), and clause 2.3 (2.3.1) of the Rules for Execution, Filing and Prosecution of a Trade Mark and Service Mark Application, approved by order № 32 of the Rospatent, dated 05.03.2003, registered with the Ministry of Justice of Russia on 25.03.2003, reg. № 432 (hereinafter – the Rules).

Pursuant to the aforementioned provisions, designations having no distinctiveness are to be refused registration as trade marks.

Such designations may be included in a trade mark as non-protectable elements, if the same do not dominate therein.

The Part IV of the Civil Code of the Russian Federation (hereinafter – the CC) has been in force since January 1, 2008, and in this connection it might be appropriate to express a reservation that clause 1, article 1483 of the CC, comprises the above-stated provisions. As a consequence, it may be presumed that the contents of this article remains up-to-date even within the operation of the CC part mentioned above.

It is well known that a surname that is commonly used in Russia relates to designations that bear no distinctiveness. This means such a category of designations fails to perform the main function of a trade mark – in particular, to individualize a particular manufacturer of goods or services.

On the assumption of the aforesaid, and appealing to the above-stated provisions of the Law and the Rules, the examination comes to the conclusion that such claimed sign cannot be registered as a trade mark and forwards the applicant a proper notice of the examination results considering compliance of the claimed designation with legal requirements (a notice), or a request for examination of the claimed designation (a request).

Having received such a notice or a request, an applicant-individual entrepreneur faces the issue of overcoming arguments of the examination against registration of the designation claimed by the said applicant.

One of the most typical ways of overcoming such an objection is to modify the sign by enlarging the design element of the mark and reducing the word element (surname). Upon entering such changes, as a rule, a decision in favour of state registration of a trade mark with elimination of the surname from legal protection (disclaimer) is made.

There is another way, though – without making the aforementioned changes – where you prove that the claimed designation has acquired distinctiveness as a result of use. It goes without saying that this is a very labour-intensive way of proceeding, requiring an applicant to spend time and financial resources in the selection and study of a significant amount of documents, as well as other evidence, of the use of the mark in connection with the goods (and/or services). And it is obvious that the amount of evidence increases in proportion to the number of claimed classes of goods and services.

Moreover, when choosing this path, one should realize that legal protection may be granted to such mark only for those goods and/or services with regard to which an applicant can submit sufficient evidence of acquired distinctiveness.

Consequently, it seems reasonable to recommend filing an application for a trade mark registration which is or includes a commonly used surname, in the form the said mark has been actually used in trade by the applicant, and starting to collect evidence of acquired distinctiveness as soon as possible. Since the law requires no specific term for submission of such evidence, the latter may be submit ted by the applicant both at the time of filing an application and during examination of the claimed designation. Thus, in our opinion, a positive decision from examination may be obtained earlier. However, such evidence is provided as a response to a notice or a request.

As an example of registration of a trade mark where the surname of the applicant-rightholder dominates the mark but is not excluded from legal protection, we may use trade mark № 331641 ГАПОЧКА (GAPOCHKA).

The applicant for this trade mark (Yu.Yu.Gapochka, individual entrepreneur), in response to the request, chose a more complicated way to obtain state registration of the trade mark – proving acquired distinctiveness of the sign. The desired result was achieved: the trade mark obtained legal protection without any disclaimer for all claimed goods belonging to Class 25 of the ICGS.

Within the context of the topic under discussion, it would be appropriate to mention one more example from our practice. It is of interest because ПОЛЯКОВ (POLYAKOV) trade mark, which includes a widespread Russian surname “Polyakov”, was claimed for a legal entity (Polyaris LTD), and the examination of the claimed designation, in rejecting registration according to clause 1, article 6 of the Law, and clause 2.3 (2.3.1) of the Rules, pointed out one more motive of rejection under clause 3, article 6 of the Law, and clause 2.5 (2.5.1) of the Rules.

In compliance with the above stated legal enactments, registration of designations as trade marks, being or containing elements capable of deceiving a customer with regard to the origin of goods, is prohibited (note: subclause 1, clause 3, article 1483 of the CC contains the cited provision of the Law).

In particular, what is being referred to are those signs that create in a consumer’s mind a notion of a manufacturer of goods that is contrary to the truth. A designation is deemed deceptive if any of its elements is deceptive.

In examination’s opinion, taking into account that the “Polyakov” word element refers to a natural person, the claimed designation cannot be registered as a trade mark in relation to the claimed goods and services, as it may deceive a consumer with regard to the manufacturer of goods (services), the above-mentioned legal entity being the applicant according to the application.

In cases like this, as a rule one is advised, first, to introduce applicable alterations to the mark, eliminating the dominance of a surname, and, second, to assign the application rights to the individual entrepreneur whose surname is used in the trade mark, and who is a founder and/or head of the legal entity acting as an applicant.

The result of the said actions may be overcoming arguments against registration of the trade mark and obtaining a decision of registration of the trade mark with disclaimer of the word element – the surname.

However, in the case connected with the claimed combined designation, including the “Polyakov” word element, even though the founder and head of the applicant company has this surname and an individual entrepreneur status, it was decided to continue the proceedings aimed at overcoming the examination’s arguments against registration by means of alterations to the claimed designation and proving that the claimed designation fails to deceive consumers with regard to the applicant being the manufacturer of goods and services.

Preparation of such evidence was carried out in like manner to gathering evidence for acquired distinctiveness through use prior to the application date.

This approach turned out to be expedient. A decision was made to register ПОЛЯКОВ (POLYAKOV) trade mark on behalf of the applicant for all claimed goods belonging to Class 17 of the ICGS and services belon ging to Classes 35 and 37 of the ICGS, with the “Polyakov” element indicated as non-protectable (registration № 340192).

Summing up, it seems reasonable to affirm that, notwithstanding certain difficulties connected with selection of evidence for acquisition of distinctiveness by the claimed designation as a result of its use, in practice this instrument allows not only the obtaining of legal protection for a claimed designation in general (in a number of cases), but also the overcoming of that serious ground for refusal which is the possibility of deceiving a consumer with regard to the manu facturer.

Here, we would like to add that, in our view, estimation of the degree of occurrence of a surname in Russia may serve as one of the factors of likelihood of being able to successfully prove acquired distinctiveness for a mark which includes a surname leading to a trade mark registration without disclaimer.

In other words, the more common the surname claimed for registration, the more difficult it becomes to obtain legal protection, if at all.

In this connection, one can include such designation as a non-protectable element, if the same does not dominate the mark, use an original font in the spelling of the surname, add a first name (first name and patronymic name or initials), and employ colour or a combination of colours, thus increasing the level of distinctiveness of the sign claimed for state registration.

Dr. Tatiana Pogrebinskaya