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Mastroianni Elicits Associations Unexpected by the Applicant

14 November 2022

The Russian patent office refused registration. It explained that the word element SARTORIA does not have distinguishing capability in respect of the claimed goods while inclusion of a famous name of MASTROIANNI will mislead consumers in respect of the manufacturer of goods. It should be noted that the name of MARCELLO MASTROIANNI is indeed widely known in Russia, especially after distribution in Russia of the Italian motion picture Divorce, Italian Style. The film featuring Marcello Mastroianni, indeed enjoyed crazy popularity in Russia and the actor is still remembered well. So the name of that great actor would produce an awkward impression on the Russian people in relation to clothing.

The applicant disagreed with the decision of the patent office and complained to the Chamber of Patent Disputes. He argued that the last part of the claimed designation MASTROIANNI means nothing to Russian consumers and that only the word combination MARCELLO MASTROIANNI produces an association with the actor, while the name MASTROIANNI is quite ordinary in Italy and has no explicit connections with the actor. To prove his point, the applicant provided almost a dozen variations of the name Mastroianni from different countries with the first names Umberto, Armand, Rudgero, Pat, etc. Many other popular people used their names in commerce, such as Antonio Banderas and Victoria Beckham. As for Marcello Mastroianni, he is not known by Russian consumers as a recognised and familiar representative of the industry producing such goods (This is true though the applicant speaks against himself in this case). The applicant suggested that he could exclude the word SARTORIA from the designation, though it contributes to the perception of the designation as a whole and guides the consumer in the direction of goods and services. In addition to this, the applicant provided a number of other arguments which on sober examination, do not hold water.

Indeed, as was mentioned by the applicant, there are many people in Italy and other countries named MASTROIANNI and therefore registration was probably allowed...

Expectably, the Collegium of the Chamber of Patent Disputes found the applicant's arguments to be unconvincing. It cited a number of formal provisions from the Civil Code proving that no registration is allowed if the designation does not have distinguishing capability or consist of elements only characterising the goods. Those elements may be included in the trademark as unprotected elements and if they are not dominating the mark. If at least one of the elements of the designation is false or misleading it should not be registered either.

It seems that the Chamber of Patent Disputes missed a point. Indeed, as was mentioned by the applicant, there are many people in Italy and other countries named Mastroianni and therefore registration was probably allowed in other countries. As for Russia, people know only one Mastroianni and the decision refusing registration of the trademark is quite understandable.