Bulls clash without loss for either

Nike International filed an appeal against the refusal of the Patent Office to register its mark (application number 2011725665) for class 25. According to the documents on file the claimed designation is figurative and represents a stylised head of a bull.

The Patent Office examiner rejected the application citing similar trade marks numbers 255295 and 359824 both in the name of a Dutch company.

The first cited trade mark is a combined designation which also includes a stylised image of the head of a bull and word elements «Texans» and «Houston». The word element «Houston» is excluded from protection and the registration is also valid in respect of Class 25.

Another trade mark is also figurative and represents a stylised image of the head of a bull and the registration also concerns Class 25. The applicant did not contend similarity of the trade marks and therefore the Chamber of Patent Disputes agreed that the official action of the Patent Office had been well grounded. At the same time, while considering the appeal of the applicant, some circumstances were revealed which could not have been taken into account by the Patent Office examiner. These circumstances consist in the first place in that the Dutch company did not object to the registration of the contentious trade mark and provided a letter of consent to that effect.

The practice of submission of letters of consent has been routine with applicants for quite some time. Before the enactment of Part IV of the Civil Code this practice was the goodwill of the Patent Office; however after 2008 a relevant provision was included in the law. Now, the letter of consent may not be accepted by the Patent Office only if it may cause confusion in the eyes of consumers.