Russia: Analysing the case of Lunos v Linos12 December 2018
Despite the seemingly unlimited choice of words and the vast imagination of people, collision between similar words, real or coined, is not infrequent. In normal life these words are homonyms or homophones and do not pose any problems in everyday activities. It is a different story in the world of intellectual property. Same or similar words may mean different things but in the eyes of the consumer they are the same and for businesses they may mean loss.
Long ago, there was an international registration No 754940 covering in Russia and other countries the trade mark LINOS with priority of the year 2000 for goods in Class 10. Later, another international trade mark No 1279699 LUNOS was extended to Russia for the goods in Classes 3, 5, 21 and 10. The patent office recognised registration in all classes except 10. The reason for rejection was the confusing similarity of the trade marks.
The applicant of LUNOS appealed the decision of the patent office. He also submitted an irrevocable letter of consent for the goods in Class 10 from the cited trade mark owner (LINOS). The Chamber of Patent Disputes pointed out that the letter of consent could not have been taken into account by the examiner at the time of examination and accepted the appeal.
The law allows coexistence of a confusingly similar trade mark with the cited trade mark if the owner of that mark agrees to coexistence and if consumers are not misled about the relevant goods.
When a decision is taken in the context of a consent letter the patent office nevertheless checks whether confusion is possible and to what degree. It is clear that chances of confusion between goods are growing. The patent office worked out some guidelines for itself to check the possibility of confusion. In particular, it checks (1) whether the claimed designation and the cited trade mark are similar to the extent of sameness; (2) whether the cited trade mark is widely known and whether consumers associate it with a particular manufacturer; and (3) whether the cited trade mark is a collective trade mark and not widely known to consumers.
Even though the practice of submitting letters of consent is routine, this does not mean that all requests of this kind are accepted. The patent office may decline acceptance of the letter of consent if, for example, the trade marks are identical and the goods are the same. These cases are rare though. According to a rough estimate about 90% of letters of consent are accepted and similar trade marks are registered to the satisfaction of applicants.