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Russia: Guaraná Antarctica battles Aqua Antarctica

4 February 2019

The word Guaraná has associations with Latin American countries around the equator even in the minds of those who do not know what Guaraná is. In fact, Guaraná is a climbing plant in some subtropical countries. It contains caffeine and is used in soft drinks and food additives. AMBEV, a Brazilian company filed a trade mark application No 2016706914 in 2016 for goods and services in Class 32.

The patent office refused registration. The reason was that the claimed designation is confusingly similar in respect of similar goods to the trade mark No 600926 with an earlier priority belonging to another person. The trade mark is below:

The examiner noted that the word Guaraná included in the claimed designation characterises the goods indicating their kind or properties and therefore should not be protected.

The applicant appealed the decision of the examiner at the Chamber of Patent Disputes. He argued that the designation should be registered in respect of goods in Class 32 for aerated water, compositions for making drinks, non-alcoholic drinks, non-alcoholic fruit drinks, syrups for making drinks, fruit juices. He asked to remove the word element "Guaraná".

The collegium of the Chamber of Patent Disputes pointed out that the word "Guaraná" is the name of a plant whose fruits are used for producing energising drinks, i.e. it points to a certain composition of the product in Class 32. As a result, it should not be protected. This is not disputed by the applicant.

The claimed designation and the cited trade mark have the same individualising element: ANTARCTICA. However, this does not mean that the compared designations as a whole are similar. Even though the claimed designation and the cited trade mark include weak elements ("Guaraná" and "AQUA") from the point of view of their distinguishing capability, they nevertheless create a different aural perception. The claimed designation and the cited trade mark do not coincide in their phonetics in a number of ways. There is a difference in consonants and vowels and the number of syllables and words. All this shows a lack of phonetic similarity.

Besides, the claimed combined designation has a graphic element and a unique font for the word elements. These produce a different impression from the cited word mark AQUAANTARCTICA written in standard font. Visual differences in these two designations result in different perceptions by the consumer and rule out confusion and association with each other.

As for the semantic criteria it should be noted that the words "Guaraná" and "AQUA" in combination with the word element "ANTARCTICA" elicit different conceptual associations. Both make strange links. Guarana is not grown in Antarctica, and the water is not from Antarctic glaciers.

The taste of the products is most probably also different.