IP office refuses Putin9 December 2020
An individual entrepreneur filed a trademark application no 2018755695. The trademark application is a combined designation as below.
It includes a black horizontal rectangle with a word element "ПУТИНА" ("Putina") above which there is a non-protectable word element "gastrobar" with diamond-shaped geometrical figures on the sides. In Russian, Putin+a is the word "Putin" in the genitive case.
The IP office refused registration because the designation is not in the public interest. The decision of the IP office was motivated by the fact that the claimed designation includes a word element "Putina" (the genitive form of "Putin") which is phonetically similar to the name of the Russian president and may be understood as meaning "Gastrobar belonging to Putin." Thus, the claimed designation was categorised among designations which may provoke the indignation of the public because of the inclusion therein of the name of a well-known political figure.
The applicant appealed the decision of the IP office. He argued that the word "Putina" was perceived by the examiner exclusively as a name, though it is also possible to draw the conclusion, based on various sources, that the word "Putina" (in Russian) in most cases means "the time or season of fishing" (https://dic.academic.ru/dic.nsf/enc3p/247954). In this case, an accent should be included on the second syllable – putína. According to him, the consumer would not associate the name Putin with the activities of the applicant (in Class 43), and would not associate that word with a specific person providing such services.
The applicant also argued that registration of the claimed designation was possible in respect of another applicant who was not President Putin, and he referred to the registered trademark no 304803 – "ПУТЍНА" in Class 43 (accent on the second syllable). The applicant asked the Chamber of Patent Disputes to maintain unified practice and abide by the principle of equality of parties.
The Collegium of the Chamber was not convinced by the applicant's arguments. It referred to the rules forbidding state registration of designations contradicting public interest, humanitarian principles and morals. Protection was sought in relation to services in Class 43. These are self-service restaurants and similar services.
The Collegium agreed that the word "putina" may have other meanings. However, the name of the Russian president comes to mind in the first place. As a result, the appeal was refused without comments with regard to the registered trademark no 304803 – "Putina."
It should be pointed out that this was not the only applicant wishing to ride on the popularity of a well-known name and not the only example of the IP office issuing contradictory decisions. For example, there is a trademark registration no 577881 for caviar and no 622512 for cigarettes, etc. with no connection to fishing. There is also a vodka reminiscent of the same name.
If we go back in time we shall also find registration no 461393 for alcoholic beverages. The trademark reads "Volodya y Medvedy" ("Volodya and Bears"). It obviously references Vladimir Putin and Dmitry Medvedev.
The trademark dates back to 2009 when Vladimir Putin was prime minister and Dmitry Medvedev was president. Volodya is a colloquial substitute for Vladimir and Medvedev is a nominal derivative of the word "bear."
Several trademarks hinting to such VIPs were registered so it is not clear why the office took this stance towards a seemingly inoffensive designation.