Three Consonants7 September 2019
A trademark application No 2016737523 was filed by “Gazpromneft” JSC (a prominent Russian oil company) for the goods in Class 4 and services in Classes 35, 37, 40, 41, 42.
The trademark application included a figurative part and a word part – the letters GPN. The patent office agreed to register the trademark with the three letters being disclaimed. The patent office argued that the claimed designation contains a combination of three letters in the Latin alphabet. This is an abbreviation of the name of the company – GazPromNeft, which is a contraction of three words (Gaz (gas), Prom (industry), and Neft (oil). The patent office insisted that the abbreviation is not a word; it is made in standard font without any graphical features that could influence the positive perception of the designation by the consumer. Hence, it does not possess distinguishing capability. In its decision, the patent office relied on Article 1483 of the Civil Code which sets forth that registration is not allowed if the designation does not possess distinctive capability. This is further explained in the Recommendations of the patent office for examiners. It is stated there that the combinations of letters which are not words are not registrable (an exception to this rule are designations which acquired distinctiveness over use, such as e.g., BMW).
The applicant appealed the decision at the IP court. The IP court did not agree with the patent office, cancelled the decision, and sent it back for reconsideration.
The patent office did not reconsider its decision but appealed the judgment of the IP court at its cassation instance. The cassation instance supported the judgment of the 1st instance court (Case No ÑÈÏ-453/2018 judgment of March 25, 2019) and pointed out that the applicant had initially appealed the decision of the examiner at the Chamber of Patent Disputes and argued that the element “GPN” does possess distinctiveness however he failed in its attempt to prove it.
When the decision was appealed at the IP court, it was stated by the court that the patent office did not give credit to the evidence submitted by the applicant. The court pointed out that the patent office had not explained in its decision why it had declined a linguistic report of the expert and had not examined other evidence submitted by the applicant at the time of filing the trademark application or during the appeal procedure. The applicant did argue that the designation “GPN” has the properties of a word. Furthermore, a linguistic report confirmed this. The designation does have the basic characteristics of a word, and as such, it is a particular unit of the language.
Conversely, the patent office argued that the claimed designation is an abbreviation used by the applicant on the market. This is not correct according to the IP court. The applicant argued that the word element “GPN” had been used for a long time and de facto became a trademark; it plays the role of the trademark in that it distinguishes his goods and services from those of other manufacturers.
To support the arguments contained in the appeal, the appellant submitted sources of information as follow: a linguistic report, copies of contracts concerning supplies of oil, printouts from the Internet.
The patent office declined the arguments contained in the appeal; it did not accept the assertion of the appellant that the combination of letters “GPN” had been used as part of the company names of several companies forming part of the Gazpromneft group. According to the patent office, that circumstance did not confirm the use of that designation for the purpose of individualisation of goods and services of the appellant because company names serve to identify legal persons but not the goods and services. The patent office stated that the appeal did not contain arguments confirming the famous character of the designation nor was there submitted evidence showing that the designation “GPN” acquired distinguishing capability as a result of its intensive use.
The court of the first instance cancelled the decision of the patent office because in contravention of Article 1483(1) the patent office did not consider the expert report which opined that an abbreviation, regardless of the alphabet in which it is written, is a word.
The patent office simply preferred not to notice the report.
Besides, the court also pointed out that the patent office should have taken into account that the designation was used in the company names of subsidiary companies and may be used in labor relations of the plaintiff. Thus, the court refuted the assertion of the patent office that the company name could not be used for individualisation of goods and services.
Further, the court stated that the patent office had not duly evaluated the fact that the designation was used on documents confirming the manufacture of goods and rendering services by the plaintiff.
The court also agreed with the plaintiff who referred to the international experience of use of company names in their abbreviated form, such as BMW, CNN, BBC, WWF, and others. Besides, the court did not agree that the designation consists of consonants only. When being read it would be pronounced as Gee, Pee, eN, i.e., the designation includes vowels as well as consonants.
The patent office appealed the judgment at the IP court cassation instance; however, the Presidium of the IP court dismissed the complaint of the patent office. The court also made a statement that may not be pleasant for the patent office. It pointed out that the rules of registration of trademarks do not endow the patent office with the capacity to recognise its own conclusions as indisputable without analysis of the plaintiff ’s arguments.
The Presidium also concluded that not every combination of letters is an abbreviation, but an abbreviation is a word.
As a result, the Presidium of the IP court upheld the judgment of the 1st instance of the IP court and dismissed the patent office’s complaint.