Patent Office guns down trade mark raider
30 October 2012
A Russian applicant, Guns Ltd, filed a trade mark application and obtained registration 442267 with priority of December 16 2010 for the mark below.
The application was a regular one so the Patent Office did not find any reasons to reject it. Despite this, Mr Dimov, also a Russian citizen, filed an appeal against the registration. The core of the appeal was that the controversial trade mark reproduced the main part of a logo created on order of the appellant to designate a guns forum on the internet at the address . The appellant claimed copyright for the figurative part of the trade mark because it could be considered a piece of art.
That graphical composition reproduced without permission of the author in the trade mark had been created in 2006 by Reklamos Gidas, a small Lithuanian firm on the order of Mr Dimov according to a contract from June 2006. The contract provided that the image should be created specifically for the arms forum. After the creation of the work the parties drew a report of acceptance of the result of the work. The report featured a number of versions of the logo with the word element Guns.ru. Beginning on June 21 2006, that artistic work was published on the arms website. The administrator of the website and its developer was Mr Dimov, the appellant.
The site is one of the most popular information sources in the world for all kinds of arms. Thousands of people use it at any given point in time. The logo Guns.ru is present on every page of the site, which means that the logo is reproduced millions of times every day. Every month the website is visited by 45 million people.
The appeal also argued that the trade mark owner registered the trade mark with the only purpose of extorting money from the website owner and not for individualisation of his services.
The Patent Office agreed with the arguments of the appellant and stated that it was evident that in accordance with the presented documents the registered trade mark contained an original part of the subject matter protected by copyright without the approval of the rights owner which is violation of article 1483 of the Russian Civil Code.
It is interesting to note that the Patent Office did not ask for submission of the documents proving the authorship for the controversial design. The prior placement of the design in the internet was considered to be sufficient evidence.
