Semantic criteria in conducting the examination of claimed designation to register as a trademark in the Russian Patent Office

This short article is intended to provide a brief glimpse of some particulars of the examination procedure on the trademark applications filed with the Russian Federal service on intellectual property (here and further Russian Federal service). The examples, which are quoted to demonstrate how the registration procedure works, are taken only from our own practice.

As provided by the Russian Civil Code, section 4, trademarks enjoy the legal protection only, if the Russian Federal service has registered these trademarks. That is the main idea.

The registration procedure consists of two examinations: a formal examination and an examination of the claimed designation (mark). Examination is one of the main steps in the registration procedure.

 

Here I would like to attract the attention to the examination of the claimed designation (mark).

The examination of the claimed designation (mark) is very important, so as the result of this examination is the issuance of the final decision.

The final decision may be an Official Action of granting the protection to a claimed designation (mark) or an Official Action of rejecting to register the claimed designation (mark).

The examination is a long (12 months) and a complicated procedure.

A claimed designation (trademark) must meet a number of requirements, such as not to be a descriptive or deceptive; must have distinctive features; not to be generic; not to be against public policy or principles of morality, not to be similar as to cause a confusion with the earlier registered trademarks or the marks filed for registration and some others.

So, how to determine that the claimed designation (mark) is not really similar as to cause a confusion with the earlier registered trademarks or the marks filed for registration?

If is it to listen to the examiner’s opinion?

But the examiner’s opinion is subjective, and it depends on many details regarding the examiner himself, namely, the examiner’s attitude to the life and to the world, to the examiner’s intelligence and mentality and many other details of the examiner as a person.

The Russian Federal service has issued some special document on the criteria to be applied while analyzing the marks, in order to state that the similarity to cause a confusion with other marks takes place.

There are three main criteria: phonetic, graphics and semantic criteria. Just see that the semantic criteria has been put on the last place. And this is in the time when every mark must be distinctive. More over, when consumers take a look at a mark, or a trademark or a brand they think “What does it mean? “

 

I would like to give just three examples from my own practice when some claimed designation (mark) were denied for registration by examiners because of phonetic and graphic criteria.

The first example is about the claimed designation (mark) MANGO in the Cyrillic, which was claimed for the registration regarding the services of fitness clubs. The examiner stated that the claimed designation (mark) MANGO can not be registered as a trademark because it is similar to cause a confusion to the earlier trademark MANGA in the Cyrillic with respect to the same services. The main point is that the marks are similar, and the only one difference between them in one letter is not sufficient to distinguish them from each other. There was no any word from the examiner regarding the semantic meaning of these two words.

My arguments against the examiner’s opinion was very short: the word MANGO means a juicy fruit from numerous species of tropical trees belonging to the flowering plant genus Mangifera, cultivated mostly for their edible fruit. At the same time, MANGA are comics created in Japan in the Japanese language, conforming to a style developed in Japan in the late 19th century. They have a long and complex pre-history in earlier Japanese art.

The examiner accepted my opinion, and as a result, now there are two registered trademarks MANGO and MANGA, Registration No 519052 and No 338441. They are enclosed herewith at the end of the article to demonstrate the result.

 

Another my example is about the similar marks in the English language Devino Telecom and Divina. So, we had Devino Telecom vs Divina.

And again, we have received the examiner’s opinon about the similarity of the marks and the preliminary rejection in registering the designation DevinoTelecom as a trademark. The main reason is “The marks are conflicting, because they are similar in the phonetics and graphics criteria! What about the meaning of each of these two words?”

DevinoTelecom is a combination of words made by the Applicant, and therefore there is no any determine meaning of the word, there is also no such a word in a dictionary. We say that the DevinoTelecom does not have any meaning.

Divina is a word in Latin language, and from its side, it has the semantic, it means prophetess.

We have based our arguments on the above-mentioned details, and the examiner has taken off her preliminary objection.

Now, we have two registered trademarks Devino Telecom and Divina.

 

One more example, SiliCat vs silica+.

Examiner also ignore the semantic criteria, because it is the last one in the list of criteria to apply during conducting the examination. The more important are the phonetics and the graphics.

As you can see in a dictionary the word silica and you will see the meaning of silica, which are quartz, silex and so on. But, you will never find the meaning of the word SiliCat, because the Applicant has created this word by himself.

We came to the conclusion that there is no semantic similarity between the claimed designation “SiliCat” and trademark “silica +”. These days we have filed our arguments to support my opinion regarding the lack of similarity of SiliCat vs silica+. Now we are waiting for the final opinion from the examiner.

 

The above-mentioned examples are not all that we had in our practice, there much more of them.

Taking into account our practice, we came to the conclusion of the real influence of the semantics criteria on the results of the examination procedure. We believe that it is worth to make the semantics criteria is the first one in the list of criteria, which applies to determine if there is a real similarity between the compared marks.

We are intending to file a proposal to insert the changes into the documents of the Federal services, which regulates the examination procedure, in order to improve and to facilitate work of the state examiners of the Federal service on intellectual property.

 

Irina Kvasova

Russian Patent Attorney

Partner “Kvasova and partners” LLP

Moscow, Russia

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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