Latin marks win unlikely registrations

Perhaps it is a hangover of years past, but many people still think that a product in a foreign package looks more attractive and is of a better quality than that contained in a domestic one. This is why some applicants file for trade marks in Latin characters. The Russian Patent Office frowns at such attempts, justly believing that consumers will be confused by the Latin registrations and think that the good has been manufactured outside Russia.

Sometimes, however, the Patent Office departs from its position and may grant a registration. An individual entrepreneur recently filed for Alex Monk, for example. The examiner refused registration arguing that the claimed designation is a word combination of foreign origin and may be perceived as a foreign name, so registration of the trade mark in the name of a Russian person may mislead the consumer with regard to the origin of the services rendered by a Russian person. The applicant appealed the decision at the Chamber of Patent Disputes. He argued that the first word in the designation was an abbreviation of his name (Alexander) and the second word was a translation into English of his last name (Chernets). Chernets in the old Russian certainly means monk. He also affirmed that this was a coined word combination.

The Chamber of Patent Disputes agreed with the applicant and granted the registration. It pointed out that there is no stable semantic connection between the words. At the same time it agreed that the word combination could be perceived as the name of a person. This was shown by an internet search. The Chamber pointed out that it could not find a physical or legal person engaged in the activities similar to those claimed by the applicant, while the applicant proved some association of the claimed designation with his name. This decision of the Chamber can hardly be regarded as flawless. The internet contains so many Alex Monks that if an in-depth search had been made perhaps some person could have been found doing the same business.

In another case, the applicant was unwillingly helped by the list of goods and services in his attempt to retain registration. There is a trademark for Baron de Vallon in the name of a Russian company. The trade mark was accorded protection in Class 33 — French wines. An interested person tried to invalidate the trade mark because (according to him) the name of the goods (French wines) implied the place of production, while the trade mark owner was a Russian company. Hence, the consumer could be misled. It is interesting to note that the Chamber of Patent Disputes did not agree with those arguments. It pointed out that the designation Baron de Vallon is part of the title of the character from Alexander Dumas’s novels Three Musketeers and Twenty Years After, and therefore can be regarded as a fancy designation not misleading to consumers.

There is no doubt that the Chamber of Patent Disputes is a competent body to issue such decisions. But if we step down from those official heights into the shoes of rank and file Russians, we may find that consumers think that the wine comes from France, taste it and make their own conclusions about the quality of 'French' wine.