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GORODISSKY & PARTNERS 
PATENT AND TRADEMARK
ATTORNEYS IP LAWYERS since 1959
 
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Can London-based The Ritz Hotel Limited register RITZ PARIS mark?

22 November 2018

This article first appeared in World Trademark Review issue 76, published by Globe Business Media Group – IP Division. To view the issue in full, please go to www.WorldTrademarkReview.com

Background

The Ritz Hotel Limited (Great Britain) requested the extension to Russia of its international trademark No1288628, depicted below:

The Patent Office issued a refusal, arguing that the word element 'Paris' was a geographical indication (ie, the capital of France) pointing to the place of rendering services, and could confuse the consumer regarding the applicant, which is in fact located in London.

The applicant appealed the decision of the Patent Office to the Chamber of Patent Disputes.

Chamber of Patent Disputes decision

In July 2018 the chamber reviewed the decision and came to a different conclusion. It explained that, according to a document submitted by the applicant, the company The Ritz Hotel Syndicate Limited was set up in 1896. Its business included, among other things, buying a plot of land on Place Vendome in Paris, building a hotel on that plot and further management and development of the hotel. The name was subsequently changed to The Ritz Hotel Limited to make it consistent with the name of the applicant.

The applicant produced an extract from the French commercial register to the effect that it owns premises in Paris at 15, Place Vendome. According to the said extract, the applicant may manage the hotel, restaurant and hairdressing salon, and organise shows. The combination of the documents submitted made it possible to conclude that the company The Ritz Hotel Limited, which is located in London, managed its proprietary hotel The Ritz Hotel, which is located in Paris.

In addition, the applicant owns a number of international registrations which are valid in Russia:

  • International Registration No 491882, which covers goods in Class 33 (the element 'Paris' is excluded from protection);
  • International Registration No 778549, which covers goods in Classes 9,16 and 28 and services in Class 42 (the element 'Paris' is excluded from protection);
  • The trademark RITZ PARIS (International Registration No 807038), which covers goods in Classes 24 and 26 (the element 'Paris' is excluded from protection); and
  • International Registration No 1086368, which covers goods in Class 9 and services in Classes 38 and 41 (the element 'Paris' is excluded from protection).

The chamber was of the opinion that consumers of goods in Class 20 labelled with the trademark under examination would perceive those goods as relating to the famous Ritz Hotel located in Paris and, therefore, would not make incorrect associations regarding the place of origin of the goods.

As a result, the Chamber of Patent Disputes opined that it was possible to include the designation 'Paris' as an unprotected element in the trademark at issue in the name of The Ritz Hotel Limited, which is located in Great Britain, but owns and operates the Ritz Hotel in Paris, France. The chamber also took into account the fact that the applicant owns a number of trademarks protected in the Russian Federation that includes the word elements 'Ritz' and 'Paris'.

Comment

This case shows that every case is highly individual and cannot be put in the Procrustean bed of pure theory and regulations.

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