Well-known Trademark: Evidence of Use
E.A.Ermakova, Patent Attorney, General Director, OOO “Agency “Ermakova, Stoliarova and Partners”
This article refers to a case where our Agency represented the interests of MTS Company regarding refusal to acknowledge its trademark as well-known on the territory of the Russian Federation. Commercial Courts of three instances confirmed the MTS trademark status as a well-known.
According to Art. 191 of the Law of the Russian Federation on Trademarks the following is recognized as well-known:
a trademark protected on the territory of the Russian Federation on the basis of its registration or international registration;
a sign used as a trademark which is not protected on the territory of the Russian Federation.
When the already registered trademark is recognized as well-known trademark the legal protection for such trademark shall be applied also to the goods non-similar to those covered by the well-known trademark provided that the use of that trademark by another person in respect of the above-mentioned goods will be associated by consumers with the right holder and may infringe upon his lawful interests. If a trademark is recognized as well-known, the Law does not provide for any legal protection of the non-similar goods. Such difference in consequences of acknowledgement a sign and trademark as well-known leads to that the owners prefer to base their claims of trademark acknowledgement as well-known on its registration in the Russian Federation.
Quite often the documents confirming use contain the image of the trademark that differs slightly from the way it was registered. To what extent is it lawful for the Chamber of Patent Disputes to refuse protection as to a well-known trademark in such a case? Let’s consider a disputable situation by giving an example.
With the Chamber of Patent Disputes was filed a claim to recognize as well-known the trademark registered on August 27, 1997 by Certificate No. 155915 with priority of August 27, 1997 (Fig.1). To prove the well-known status there were submitted various documents, inter allia a report of the sociological study on the well-known status of this trademark with a conclusion that 99 percent of Russian population recognize it. The sign was made in a black and white image. There were also submitted advertising publications most of which, including TV commercials, contained the coloured execution of the sign accompanied by additional GSM image (Fig.2).
Fig. 1
Fig. 2
The arguments of the Chamber of Patent Disputes for this and similar cases are usually as follows:
“… part of the evidence submitted by the Applicant, except for a few, concerns the use of the sign different from the registered as a trademark in Certificate No.155915”;
“…the Applicant is entitled to claim protection as a well-known sign not only with regard to the trademark in the form it’s been registered but also to the sign in the form it’s being used”;
“…the Law does not provide for an opportunity to confirm trademark use, recognized as well-known, with any changes …”.
Despite Applicant’s arguments the Chamber of Patent Disputes refused to recognize the trademark “MTS” as well-known specifying that the submitted documents did not confirm the use: the trademark had been registered as a black and white image but as an evidence of frequent use there were submitted signs in yellow-blue-red-white colours. Moreover the sign had been registered without the additional GSM element but the submitted documents had images with these letters.
The decision of the Chamber of Patent Disputes was appealed to Moscow Arbitration Court that discharged such decision. In the course of hearings the representatives of the Chamber continued to point out as the main argument to refuse registration the fact that the sign had been registered as a black and white image and therefore should be used only in this form. According to Rospatent representatives the design trademark can be protected only in colour. If the colour is not mentioned in the application the trademark is registered in black and white.
Due to the fact that the scope of legal protection for the “MTS” trademark is determined in compliance with legislation acting at the moment of application filing and trademark registration (i.e. on the basis of Law of the Russian Federation No.3520-1 On Trademarks, Service Marks, and Appellations of Origin of Goods of September 23, 1992 and Rules on Compilation, Filing and Consideration of Applications for Trademark and Service Mark Registration approved by Rospatent on September 29, 1995), in Applicant’s opinion, registration of the trademark No.155915 was carried out without specification of colours thus permitting the Owner to use it after registration in any colour execution. Such a position gave rise to no doubts as was stipulated by Regulations on Trademarks* acting on the territory of the USSR prior to Law of 1992, Article 14 of these Regulations stated as follows: “ The sign filed for registration as trademark without indication of any specific colour shall be registered as a black-and-white image. The trademark registered as a black-and-white image may be used in any colour combination unless it is similar in colour to another trademark registered in coloured execution”.
*Approved by Goskomizobreteniy USSR on January 8, 1974 with addenda and amendments of January 22, 1976, March 22, 1979, July 9, 1982, October 12, 1982, April 14, 1983, June 11, 1987.
Passing of the Law and the Rules did not change the approach to this issue of the Applicants and Rospatent. If no colour was specified in the Application form for trademark registration (item 591 “Colour or Colour Combination”) it was considered that the sign without colour claim, i.e. in any colour execution.
In compliance with Article 19 of the Regulations Rospatent published information about trademark registration, inter allia specification of the colour or colour combination of the trademark provided the trademark had been registered as a colour image, such publication were made in the Official Journal “Trademarks, Service Marks and Appellations of Origin of Goods”.
The Rules of 2003 incorporated alternations of the above stated Article in accordance with which Rospatent should specify colour or colour combination of the trademark if the trademark was registered in a different, not black-and-white colour at announcement of trademark registration information. This alternation made it possible for Rospatent to interpret item 2 of Art. 5 of the Law on Trademarks (“Trademark may be registered in any colour or colour combination”), with it not being amended since 1992, in such a meaning that a figure trademark cannot be registered only in colour combination and cannot be registered without colour specification.
Approach to the scope of legal protection for trademark registered without colour specification fully complies with international treaties ratified by the Russian Federation. Thus, according to Art. 3 of the Trademark Law Treaty of October 27, 1994 application for colour protection as a characteristic feature of the trademark should contain identification of the main parts of the trademark executed in such colour as well as name of the colour or colours applied for and in connection with each of such colours if the Applicant intends to apply for such kind of protection. Thus, it is determined the right of the Applicant to claim protection both in colour and without colour specification.
Additional confirmation of such provision is directly perceived from Art. 2 of the Rule 3 [Number of Figures]
Guidelines to the Trademark Law Treaty stipulate the following:
if the Application does not contain an identification that the Applicant would like to claim colour protection as a characteristic feature of the trademark the contracting party shall require not more then:
(i) five black-and-white figures of the trademark …
In compliance with item 3 of Art. 3 of Madrid International Trademark Registration of April14, 1891 should the Applicant consider colour as a characteristic feature the Applicant is obliged to claim it and to specify in the Application the colour or combination of colours to be protected.
Under Art. 3 of the Singapore Treaty on the Law of Trademarks (enacted at the Diplomatic Conference on March 27, 2006) any contracting party may require an application containing statement that the applicant would like to claim colour protection as a characteristic feature. Therefore, international legislation complies with item 2 of Art. 5 of the Russian Federation Law on Trademarks that provides for the right to claim registration in any colour or colour combination should the Applicant consider it as a characteristic feature of the trademark but does not limit such right to an obligatory colour specification.
Herewith it is important to pay attention to term use “coloured” and “colour” in the Russian language. As it was stated in item 2 of Art. 5 of the Law there could be used terms “colour” and “colour combination”. As per Russian language dictionaries there is a difference between the words “colour” and “coloured”. “Colour” is an adjective related to colour perception, colouring. The notion “colour” contains all colours, including black and white. While “coloured” means painted in some colour, neither black nor white. In this context it is understood that the Law provides for an opportunity to register a trademark in any or coloured combination including black and white in case such colour combination is specified by the Applicant but not by default.
Analogous rights for trademark protection with and without colour specification are adopted by all states-members of the international treaties, among them the UK, Sweden, Germany and France. Patent attorney of the specified countries confirmed on our request that application for registration as trademark in black and white (without colour specification) is more broad than in coloured execution thus giving the right for protection of the image in any colour execution not limited to black-white-and-grey colours.
Hence, today Rospatent estimation of the scope of protection for trademarks where the Applicant didn’t claim colour protection as didn’t consider it to be a characteristic feature and its appraisal as trademarks characterized only by black-and-white colour execution contradicts with international legislation and routines adopted by foreign countries.
Taking into account that item 2 of Art. 1482 of Ch.4 of the Civil Code of the Russian Federation maintained the same wording of item 2 of Art. 5 of the acting Law on Trademarks: “The trademark may be registered in any colour of colour combination” the stated opinion regarding trademark protection without colour specification remains relevant thereafter.
To the argument of the Chamber of Patent Disputes that the MTS trademark contain an additional image of GSM and thus the Applicant uses not his own trademark but some other sign the Applicant provided the following counterargument: GSM stands for Global System for Mobile Communications which is a name of international standard of mobile communications. Use of the GSM sign together with MTS trademark is an indication that Applicant’s services comply with requirement of this standard. Moreover, any cellular operator providing services in this standard is obliged to inform about that its subscribers. In addition the Applicant underlilned that abbreviation GSM was used by other large mobile operators, like VimpelCom JSC (Beeline) (Fig.3).
Fig. 3
All this indicates that GSM element being descriptive thus unregistrable cannot be considered a reason to make a conclusion that the trademark MTS under certificate No.180560 was not used by the Applicant and this element cannot be considered a sign altering MTS trademark. Unregistrable elements as a matter of principle cannot be included into a well-known trademark as it would contradict with the essence of the well-known trademark.
A different approach to joint use of trademarks and service words may lead to an absurd conclusion that such trademarks as for instance “Akhtamar”, “Ararat” and “Klinskoe” cannot be recognized as well-known as they are always used with together with service words: cognac and beer.
As a result two instances of the Arbitration Court (first and the Ninth Arbitration Appeal Court of Moscow) agreed with the arguments of MTS company during case consideration on lawfulness of refusal to recognize MTS trademark as well-known. Consequently, decision of the Chamber of Patent Disputes on recognition of MTS trademark as well-known was cancelled.
The above mentioned decisions of the Court inspire optimism regarding possible return of the understanding of the scope of protection of pictorial trademarks registered without colour specification, meaning that the trademark registered in a black-and-white execution can be used in any colour execution and use of the trademark together with unregistrable (service) sign will not lead to a conclusion that there is used not a trademark but a different sign.
The issue discussed in the publication Well-known Trademark: Evidence of Use regarding estimation of the scope of legal protection of the trademark with no colour or colour combination claimed turned out to be not only unsettled but developed owing to revision of the awards of the first and appeal instances in the cassation instance. In spite of the fact that the awards of both instances remain in force the Court of cassation instance took a stand of Rospatent with regards to cases of filing the application for registration as trademark not a coloured sign without specification of either colour or colour combination.
It is worth reminding that the ground for taking a legal action in the Arbitration Court was a decision of the Chamber of Patent Disputes containing refusal to register the trademark with specification that the trademark had been registered in black-and-white execution and thus should be used only as such.
The trademark owner insisted that registration of the trademark was carried out without colour specification that permitted to use it in any colour execution. Courts of first and appeal instances agreed with the trademark owner.
Cassation instance evaluating application of substantive laws by arbitration courts that determined the scope of legal protection of the trademarks took into consideration two regulations:
- item 2 of Art.5 of Law On Trademarks, Service Marks, and Appellations of Origin of Goods, hereinafter the Law, by virtue of which: “Trademark shall be registered in any colour or colour combination”;
- item 2.3.(3) Rules on Compilation, Filing and Consideration of Applications for Trademark and Service Mark Registration, hereinafter the Rules, by virtue of which if the registration is claimed in colour execution then item 591 of the application form for trademark registration specify the colour or colour combination. Colour description should comply with the colours used in the sign and contained in the reproduction. Should registration be claimed in the black-and-white execution no filling of this item is required.
Apparently interpretation of item 2 of Art. 5 of the Law determining trademark registration in coloured execution do not refuse to register the trademark without colour specification.
As for the Rules, the provision of item 2.3.(3) of the Rules being the basis for conclusion of the cassation instance: “Should registration be claimed in the black-and-white execution no filling of the item (item 591 of the application form) is required” was interpreted in such a meaning that if no colour or colour combination is specified in item 591 of the application form the Applicant claims registration in black-and-white execution. In our opinion such interpretation is wrong on the basis of the following.
It is worth reminding that prior to the Law of 1992 on the territory of the USSR there were in force Regulations on Trademarks* stipulating as follows: “The sign filed for registration as trademark without indication of any specific colour shall be registered as a black-and-white image. The trademark registered as a black-and-white image may be used in any colour combination unless it is similar in colour to another trademark registered in coloured execution”.
Thus the mentioned Regulations made equal the notion “without colour identification” to “black-and-white colour” or to “not coloured execution” that can be used in “any colour combinations”.
Is such equality of terms reasonable?
Pursuant to the dictionary meaning of the word “black-and-white” it means “in black, white, and shades of grey rather than in colour; for example, a black-and-white photo (see Collins English Dictionary).
It is well-known that a black-and-white photo reproduce the appearance of items represented on it but does not give a clear idea of their true colours.
Consequently, in the context of item 2.3.(3) of the Rules the term “black-and-white execution” may mean “not coloured execution” , i.e. without specification of any colour.
Clause 19 “Publication Information Regarding Trademark Registration” of the same revision of the Rules stipulated that Rospatent shall publish specification of colour or colour combination in the Official Journal if the trademark is registered in colour.
Again going back to the meaning of the words “colour” (noun and adjective) it becomes apparent that these words have a large semantic difference from the word “coloured’. “Colour” is an adjective to the word colour. “Colour” means the property of the body to cause visual sensations in compliance with spectral content of the reflected or emitted visible light. “Coloured” have a meaning of painted in some bright colour (not black or white) (words meanings are quoted from a Russian-Russian Dictionary).
Thus words “colour” (noun) and “colour” (adjective) contain the whole spectrum of colours including black and white while “coloured” means not black-and-white.
As applied to the case when item 540 contain a black-and-white image of the claimed sign would it be regarded as violation to specify black and white colours? And what are the consequences of absence of any specification?
In our opinion, if the trademark registration is claimed in a colour combination of black and white and the Applicant consider that such colour combination is a characteristic feature of the sign then he/she should specify these colours in item 591 of the application form, these colours should also be stated in publication of the information on trademark registration. Should the trademark be claimed as non-coloured in black-and-white execution and its individualizingcharacteristics are not determined by colour but by compositional design then no data on colours should be specified in application nor published.
There are quite a lot of examples when the applicants claimed registration specifying black and white or black, white and grey colours. In these cases the scope of legal protection is determined and stated in the publications of information about these trademarks.
Such approach to the scope of legal protection for the trademarks claimed with and without colour specification fully complies with international act on trademarks ratified by the Russian Federation according to which the applicant is entitled to claim trademark protection in colour if he/she considers it to be a characteristic feature of the sign.
Pursuant to Madrid Treaty, if the Applicant refer colour to the characteristic features of the sign, then he/she is obliged to claim it and specify in the application form the colour or colour combination to be protected.
By force of Art. 3 of Singapore Treaty on the Law of Trademarks any contracting party may require an application containing statement that the applicant would like to claim colour protection as a characteristic feature.
Therefore international legislation complies with item 2 of Art. 5 of the Russian Law on Trademarks that provides for the right of the Applicant to claim registration in any colour or colour combination, should the Applicant consider it to be a characteristic feature of such trademark, but does not oblige him/her to specify the colour.
In the framework of the issue under consideration we inquired our colleagues practising in the countries-members of the same international treaties as Russia, inter allia the UK, Sweden, Germany, France and Japan. Patent attorneys confirmed that application for registration as trademark in black and white (without colour specification) is more broad than in coloured execution thus giving the right for protection of the image in any colour execution not limited to black-white-and-grey colours.
Arguing on this matter we would like to go back to the main provisions of the Law on Trademarks. Relying on the definition of trademark it is a sign capable of individualizing goods. As a trademark there can be registered word, figurative, three-dimensional, and sound and other signs. Words, word combinations, sentences, etc. are regarded as word trademarks. Figurative trademarks include images of living creatures, objects, natural and other objects, as well as other figures of any form, composition of lines, spots and figures on the plane.
In this respect there arise questions like whether a word, for example, “PUMA” or image of the animal without specification of the colour cannot be used for individualizing of goods, for instance, sport clothes? And if the application did not claim colour or colour combination whether the use of the word or image of the animal on the goods in any colour, apart from black on white or white on black, is not the use of the registered trademark?
And one more question: why in the opinion of the cassation instance of the Court if the Applicant would like to register a trademark in yellow-brown-crimson colour he/she should specify the name of the colours in the application but when the same Applicant wants to register a trademark in black he/she receives a bonus from Rospatent – there’s no need to trouble yourself and write anything?
To sum it all up we find essential to point out that the whereases of the Cassation instance statement regarding determination of the scope of legal protection for the trademark claimed without colour specification are based on provisions of subordinate legislation. If the approach practised by the cassation instance in consideration of this case becomes routines there will develop a legal ambiguity at determination of legal protection for trademarks. Thus in respect of trademarks registered before 1992, where colours are not specified in registration certifications nor in State Register publications, in compliance with direct stipulation of the Regulations on Trademarks they are protected in any colour execution; as for trademarks, also not containing colour specification and registered after 1992 in line with interpretation of the Cassation instance of the Court the scope of protection is limited to black, white and grey colours.
* Approved by Goskomizobreteniy USSR on January 8, 1974 with addenda and amendments of January 22, 1976, March 22, 1979, July 9, 1982, October 12, 1982, April 14, 1983, June 11, 1987
