Trade mark dispute over Terra Contes

The designation Terra Contes on application number 2012711660 with priority of April 4 2012 was filed in the name of a Russian company Trade House KODRU in respect of goods in class 33, alcoholic beverages.

The examiner refused registration because the words Terra Contes were written in a foreign language which would produce an impression among Russian consumers that the goods were produced in a foreign country, namely in France, which is not true because the applicant of that application was a Russian company.

The decision of the examiner was appealed by the applicant and the Chamber of Patent Disputes did not side with the examiner. It pointed out that associations with the French origin of the goods could have been caused by the fact that according to the examiner the word elements «Terra» and «Contes» are lexical units of the French language and may be translated into Russian as «new lands» or «tales of land».

The Chamber of Patent Disputes looked into the dictionary (slovari.yandex.ru) which served as a basis for the conclusion of the examiner. The dictionary showed that indeed, the word «Contes» is a lexical unit of the French language and shall be translated into Russian as tales, novellas, stories. At the same time, the word «Terra» does not pertain to the French language. This word is of Latin origin, it can be found in the English, German, Italian and Spanish languages and means «land or soil». Therefore, the conclusion of the examiner that this word combination will be perceived by the consumer as one belonging to the French language is erroneous.

The applicant submitted documents confirming that wine labelled with the designation Terra Contes will be produced on the Bulgarian territory by Balkanska Vinena Company under control of Trade House KODRU and will be supplied to Russia by a 100% subsidiary of the applicant, Vinovin Ltd. As a result, the Official Action of Rejection was cancelled and the trademark Terra Contes was registered in the name of the Russian company.

A happy ending? Maybe. Without prejudice to this particular case it should be noted that such an arrangement may be fraught with dangers. There have been cases where foreign companies cut a deal with Russian distributors who sell such imported products and register trade marks with which such products are labelled in their own name. This kind of collaboration may go on perfectly. But not forever. Business is a living organism. As it develops anything may happen. Sometimes the partners fall out and the distributor obtains a powerful leverage in the form of the trade mark banning the imports of the products from the manufacturer through other channels. This situation may be repaired in some cases but it will inevitably involve outlay in terms of time and money to regain the trade mark rights.