Adventures of UEFA Trade Mark in Russia18 January 2012
It seemed to have sunk into oblivion those times when in Russia, marks, that mimic the marks of
For obvious reasons, the possibilities of the Russian PTO during the search were limited, since in those days to access this source of information as the Internet for each examiner was impossible, and such a criterion as «the possibility of misleading the consumer regarding the manufacturer of goods» was rarely used. Examples of registrations of trademarks of the
Already for a long time, the opportunities for such search have existed, and there are no problems for the corresponding search via the Internet. All the more surprising is the appearance of the Russian registrations of trademarks as ##409061 and 373906. It seems obvious that these registrations contain the image of the «Star Ball," which is known by the Russian viewers, representing the great part of the population of Russia, as a symbol of the UEFA.
Furthermore, of course, the image of the «Star Ball» is well known to football fans, which is a huge number of the male and female population of Russia. How could the examiners of the Russian PTO making decisions on registration of such trademarks, have not considered the
It is quite interesting the attitude of the right holders of these trademarks to the fact of the objection.
1. The history of the struggle with the registration of the trademark (Registration #373906) was quite lengthy. The first step was to file an objection of the UEFA with the Chamber for Patent Disputes. The grounds for filing objections were a confusing similarity of the registered trademark with the registrations of the UEFA trademarks, having an earlier priority, and a possibility of misleading the consumer regarding a company providing services under classes 36 and 41.
At the first hearing, the Chamber of Patent Disputes recognized the similarity of marks, but rendered a decision on the recognition of granting legal protection to a trademark null and void in respect of a part of services, which are identical and kindred ones with respect to the earlier registrations of the UEFA. The facts of the reputation of a trademark and the grounds of the possibility of misleading the consumer were not taken into consideration by the Chamber. However, it should pay tribute to the Russian PTO, which in this case admitted its mistake made during the examination, and the issued by the Chamber decision that does not take into account the fame of the trademark of the UEFA, and the possibility of misleading the consumer, has not been approved and the objection was adjudged again.
Throughout the reoccurring hearing a representative of the right holder presented arguments that, according to him, representative, argued that «the
The Applications were reviewed, and the UEFA has proven the use of its trademark in respect of virtually all services. It seems strange the persistence of the «BETCITY," LLC, and there may be some misunderstanding of the situation, as the «BETCITY," LLC, could not but understand that the figurative element of its trademark, no doubt, is associated with the UEFA «Star Ball," to which the «BETCITY," LLC, has not any relationship, and its desire to use the intellectual property of others is, at least, strange, even under a naive perception of the relationship to other company’s intellectual property. It should be noted that after the completion of the deliberation of all the Applications at the Chamber for Patent Disputes, the «BETCITY," LLC, no longer uses in its trademark the image of the ball and the star, and currently it uses the designation that is quite sufficient for individualization of the company.
2. The second example of the UEFA successful struggle for the purity of its mark is contesting a trademark registration in the name of Mr. Bobkov in respect of Class 3. The desire of the businessman to make his trademark recognizable and successfully sell his products, is quite understandable. However, it is impossible to understand in this case, why the entrepreneur deems it conceivable to exploit the intellectual property of others and the absence of any of its merits or any participation in the creation of the UEFA symbol. As well, it is difficult to imagine that the examiners who took the decision on registration of the trademark, did not know that the «Star Ball» is the official symbol of the UEFA. It is also difficult to understand by what the expertise is guided in making the decision to register this trademark, practically, identical to the symbol of UEFA, which can be seen in television broadcasts.
One can only assume that this decision was based on the belief that the goods of Class 3 in no way associated with football. However, this belief cannot be considered legitimate, since no doubt, that the football fans use products of Class 3, and the labeling of these products with the trademark when the symbol of the UEFA is
In considering this objection filed by the UEFA concerning the possibility of the misleading the consumer, theChamber for Patent Disputes ruled on the recognition of granting legal protection to the registration #409061 to be void completely. It should be noted that the right holder has not contested the decision.