Acquired distinctiveness saves a trade mark

Generally, the law prohibits registration of trade marks lacking distinctiveness. However sometimes this rule can be waived. There is an international trade mark registration number 1140887 (see picture).

This registration was sought to be extended to Russia but stumbled over a preliminary refusal. As was stated in the refusal of the Patent Office the trade mark lacked distinctiveness because it consists of elements used by the applicant in his daily activities. The Patent Office stated that legal protection was claimed for the services in class 43 for "hotel reservation services; reservation of holiday accommodations, also in resort areas; providing information about hotels, hotel accommodations and resorts (accommodations), whether or not based on the valuation of customers; information, advice and consultancy relating to the aforesaid services; the aforesaid services also provided electronically".

The word "Booking" even being foreign to the Russian language is widely understood by Russian consumers when it is used to describe relations between performers and booking agencies. Hence this word came to be widely used in show business. It may be recognised as a weak element carrying information about the services of the applicant. The element ".com" is a top level domain on the internet denoting the word "commercial" pointing to its original meaning – domains registered by commercial organisations later being used in a more liberal context. Hence, the examiner inferred that the trade mark did not meet the requirements of Paragraph 1, Article 1483 of the Civil Code because it consists of elements not capable to individualise services in class 43.

The applicant filed an appeal to the Patent Office on the decision of the examiner. The Chamber of Patent Disputes examined the documents submitted by the applicant confirming in his opinion the distinctive capability of the trade mark. The documents showed that the applicant is a Dutch company Booking.com BV. It has owned and operated the website Booking.com from 1998. It is clear that the distinctive part of the company name and the domain name used in its activities are identical to the word element according to IR 1140887. The applicant uses the said designation on his site in several colours including as registered in IR 1140887.

The same article of the law (Article 1483) in another provision (Paragraph 7) allows registration of unregistrable designations if they acquired distinctiveness as a result of their use before the date of priority. The site Booking.com provides services for online booking of hotels all over the world including Russia. The site is translated into 43 languages including Russian. More than 100,000 hotels advertise their services on that site. The services offered by the site are used by 20 million people every month. The statistics available on the site show that its clients left 24 million reviews. The company has accounts in social networks, such as Facebook, Google+, Twitter and Linkedin. The name of the users is legion.

A large number of hotels in Russia used that internet resource to promote their services long before the priority date of the international trade mark. The network of Russian hotels is growing and has now about 5,000 partners of Booking.com. The financial director of Booking.com provided information according to which the year 2012 alone saw 3,334,873 single bookings and grew fourfold from 2010. It followed from those figures that the trade mark had acquired remarkable distinctiveness as a result of intensive use on the Russian territory.

Not surprisingly, the board of experts of the Patent office found it possible to allow protection of the international trade mark number 1140887 in Russia in respect of all the services of class 43. The only limitation was that the element .com was excluded from protection because it could not be appropriated by anybody because of its specific nature.

The bottom line is that there is no rule without exception. Stay committed to your efforts and success will crown them.