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Russia: Manchester in London, Chicago in St Petersburg

21 October 2019

J.S.S.Tobacco Ltd., a London company, filed a trademark application with the Russian Patents and Trademarks Office

Manchester-96.jpgThe application was refused because the examiner opined that the word element "Manchester", a city in North West England points to the place of production of the goods or the location of the applicant.

At the time of filing the trademark application, the address of the applicant was indicated as "London". The word element of the trademark "Manchester" is also a city. Hence, it was stated in the decision of the patent office that this was misleading for consumers with regard to the location of the manufacturer of goods or their place of production.

The applicant understood the situation and appealed the decision. He informed the patent office in his appeal that his address had changed to Centenary Way, Trafford Park, Manchester, M50 1RF. The Chamber of Patent Disputes stated that the applicant exercised his right and made amendments to his trademark application. The change of address removed the reasons for rejecting the trademark application so that the Chamber could recognise that the registration did not contradict the law. The Chamber pointed out that the word element "Manchester" is part of the claimed designation. It is the name of the city in England and characterises the place for production of goods. Hence the registration should be allowed.

In connection with this, one may recall another registration, Chicago LLC.chicago.jpg

The registration was refused and appealed by the applicant at the same Chamber of Patent Disputes. At that time, it was decided that the word "Chicago" would not mislead consumers (visitors of the beauty parlour) even though the applicant did not change his place of residence (Sankt-Petersburg, Russia).

In the "Manchester" case, the applicant found an easy way to obviate the risk of refusal.