Patent Office saves Manhattan for US

There is a famous producer of non-alcoholic drinks and alcoholic cocktails in Russia called Borodino Holding. It filed trade mark application 009701614/50 in respect of the goods in Classes 32 and 39 for the mark «I’ll Take Manhattan». The Russian Patent Office refused the registration because, as everybody knows, Manhattan is an island in the Hudson river and the historical centre of New York. Registration of the trade mark in the name of a Russian company could have misled consumers because it did not have even a distant association with the island.

The applicant appealed against the decision and argued that he meant a certain connotation when he filed the application. His reasoning was that to conquer Manhattan meant to go to the top, to achieve success, most often become wealthy, to succeed in one’s career, or to demonstrate perseverance. In his opinion, this expression could be put on the same footing as «To see Paris and die» or «The American dream». Manhattan as a district of New York is associated in the first place with fashionable clubs, a place of wealth and fame, and the expression should be understood in that context.

The Chamber of Patent Disputes did not support the applicant and pointed out that there are three meanings of the word known to the public: Manhattan Island, Manhattan as a New York district and Manhattan as a cocktail of Vermouth and whisky.

The word element Manhattan included into the claimed designation is obviously the district of New York and is known to the average Russian citizen in this capacity. Proceeding from this rationale the word Manhattan will provoke association among consumers that the products marked with this designation have a relation to or proceed from that location, which is not true. The applicant has no relation to Manhattan or the United States and the claimed designation would obviously be false and misleading. Based on these arguments The Chamber of Patent Disputes rejected the registration of the trade mark.

For some people the decision is debatable, but it depends on the category of people to whom the supporters of this or the opposite opinion could appeal.