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Well-known Trademark, a Timeless Subject Matter

22 January 2020

The law (Article 1508 of the Civil Code) provides that a trademark protected in Russia based on its state registration or in accordance with an international agreement or used as a trademark, or a designation used as a trademark but not registered as such in Russia may be recognised as a well-known trademark. However, it can only be recognised from the date indicated in the application if that trademark or that designation became widely known among relevant consumers in Russia as a result of its intensive use.

It is Not the Date of the of the Application

It is not the date of the application; it is the date from which, according to the applicant, the trademark/designation became widely known. Recognition of a given designation as a wellknown trademark is confirmation of what has become widely known. On the other hand, one may argue that the possibility of recognition of a given designation as a well-known trademark may jeopardise the validity of any registered trademark. The law provides a safeguard, though. It sets forth that a trademark or a designation cannot be recognised as wellknown if they have become widely known after the priority date of an identical or confusingly similar trademark of another person in respect of similar goods.

That safety catch does not always work. Back in 2015, ForaFarm Ltd. filed and obtained registration of “LOSHADINAYA DOZA” trademark (horse dose or very large dose in Russian parlance). Registration No 544850 for goods in Class 03.

Zeldis Ltd. appealed against the above registration twice. In its first appeal, it argued that it had earlier registered “LOSHADINAYA DOZA” (Reg. Nos 430477, 530642) in Classes 03 and 05. In its second appeal, it referred to the fact that “LOSHADINAYA DOZA” owned by it, was recognised as a well-known trademark from March 1, 2014, according to the application filed March 14, 2017, i.e., the date of recognition was backdated three years. The first appeal, dated March 2016, was refused. The decision of the patent office was unsuccessfully appealed at the IP court. The court said that there was no confusing similarity to the cited trademarks.

As for the second appeal, the Chamber of Patent Disputes invalidated ForaFarm’s “LOSHADINAYA DOZA,” explaining that it cannot be perceived other than an imitation of “LOSHADINAYA DOZA” recognised as wellknown. ForaFarm tried to refer to the invalidation of the opponent’s trademark according to its first appeal. Still, the Chamber of Patent Disputes explained that the circumstances in connection with the well-known trademark were not examined within the framework of the first appeal.

ForaFarm appealed the decision at the IP court and won the case; however, Praesidium of the IP court cancelled the judgment and sent the case back to the first instance of the IP court for reconsideration. The first instance court examined the case and again refused to satisfy the appeal. ForaFarm again appealed the judgment to the Praesidium of the IP court.

This time, the IP court suspended examination of the case and sent an inquiry to the Constitutional Court. The case was bandied back and forth within the IP court, and the above depiction of the events shows only that the attribution of the date of recognition of the trademark as well-known is not as clear as it might seem from the law.

The IP court questioned the constitutionality of Article1483[6(3)] of the Civil Code (a designation cannot be registered as a trademark if it is similar or identical to a trademark recognised as well-known from the date earlier than the date of the claimed designation). In addition, Article 1508 (a trademark or a designation used as a trademark may be recognised as a well-known trademark from the date indicated in the application if that trademark or that designation became widely known among relevant consumers in Russia as a result of its intensive use).

In the opinion of the IP court, these two provisions in their conjunction are not in accordance with the Constitution to the extent that allows the patent office to cite a well-known trademark against a disputed trademark. Especially in the situation where that well-known trademark was not recognised as such on the priority date of the disputed trademark, nor was even a request filed on that date seeking to recognise it as well-known.

The IP court opined that the disputed provisions of the Civil Code allow the right holder to arbitrarily determine the date from which his trademark will be recognised as wellknown. This contradicts the Constitution and does not guarantee that the trademark owners may use their property freely and protect their rights, including in court.

The Constitutional Court referred to Article 1508 (see above) and other articles of the Civil Code. It stated that recognition of a trademark as well-known (or of a designation used as a trademark) and its legal protection should not be necessarily associated with the fact of its state registration. This legal regulation is in accord with the Paris Convention (Article 6bis).

The Protection of a Well-known Trademark is not Limited in Time

The protection of a well-known trademark is not limited in time. Its protection is broader than that of regular trademarks. It covers not only the goods in respect of which it is recognised as well-known however also dissimilar goods (Article 1508.3) if the use of that trademark by other persons in respect of such goods will result in the consumers associating the use of the trademark with the owner of the well-known trademark. This statement of the Constitutional Court echoes Article 16 of TRIPS Agreement (Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use).

Priority of a well-known trademark shall be established on the date indicated by the trademark owner if the trademark satisfies the characteristics of a well-known trademark on that date.

Hence, if the patent office recognises an earlier registered trademark as well-known, the priority for such trademark may be established on the date earlier than the date of such recognition, or the date earlier than the date of the corresponding request by the applicant, or, adding more to it, the priority date may be established even earlier than the filing of the original trademark application.

So, the applicant will have to provide documents showing that the trademark has become well-known on a certain date and also on the date of filing the application for recognition of the trademark as well-known. The above broad understanding of attributing the priority is based on the idea that the well-known character of a trademark (or of a designation used as a trademark) is a fact of objective reality and the procedure of recognition of a trademark/designation as well-known is only aimed at confirming or refuting this fact and is not aimed at certifying its emergence. If the applicant fails to provide documents proving that a trademark became well known to the public on a particular date or if it became well-known after the priority date of an identical or confusingly similar trademark of another person in respect of similar goods, the patent office will reject the application.

Thus, the provisions of Articles 1483[6(3)] and Article 1508 challenged by the IP court exclude a deliberate choice of the priority date of the well-known trademark by the applicant. At the same time, Article 1512(3) of the Civil Code provides that a well-known trademark may be cancelled in full or in part at any time if protection was granted in contravention of the above Article 1508. Also, a wellknown trademark may be cancelled if it lost the properties essential to a well-known trademark.

The above considerations interpreted in conjunction with several provisions of the Civil Code cited above rule out the possibility of recognising a trademark as well-known if it does not deserve such recognition. If a trademark was recognised as well-known without sufficient reason or lost its characteristics of being well-known it may be cancelled in any case. The person challenging the well-known status of a trademark is not deprived of the opportunity to provide any evidence showing that the trademark was not well-known or that it lost its well-known status.

The Constitutional court examined in detail the appeal of the IP court and did not find that the relevant provisions of the law are unconstitutional. Hence, the trademark “LOSHADINAYA DOZA” continues to be well-known and ensures that other wouldbe well-known trademarks be adequately protected.

To Conclude

The above case, though interesting because of specific circumstances, is not unique. There are several other trademarks whose owners took advantage of that opportunity provided by the law. For instance, . It was claimed to be well-known in 2010, and the patent office granted it protection retroactively from 1998 12 years bonus.

Interestingly, the Russian equivalent of “DISNEY” - ДИСНЕЙ went through the same procedure but was awarded a longer retroactive term: 21 years! That status was requested in 1988, and the patent office was generous to award it 21 years from 2009 onwards and back to 1988. There are several Russian trademarks too. The one below was given 21 years retro protection from 2006 (when the status was requested) back to 1985.

As may be seen, the advantages of a wellknown trademark are unprecedented, and they may well overweigh the difficulties, real or imagined on the way to recognition of one’s trademark as well-known.

The game is worth the candle.

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