Co-published editorial

Gorodissky & Partners Non-traditional – a changing picture

The Russian regime does not set down separate regulations to govern applications for non-traditional trademarks, although moves are afoot to improve the legislation

Today in Russia, there is growing interest in possibility of registering a mark based on marks, position marks, hologram marks, non-traditional trademarks. The the fact that the applied designation has motion marks and taste marks. This list is prosecution practice has developed rapidly acquired distinctiveness – that is, exceptions not exhaustive and may be added to as new and intensively over the past few years. This may be made for designations that have types of mark and combinations of non- is illustrated by the number of publications gained the ability to distinguish goods as traditional marks appear. The list is limited on this issue, as well as the fact that non- the result of acquired distinctiveness. Thus, only by the creativity of producers and their traditional trademarks have become a if a is rejected due to a lack of desire to obtain protection for the popular topic at many seminars and distinctiveness, the applicant can respond to indications that they use to identify their conferences relating to different aspects of the examiner’s objections by arguing that products and services. trademark registration and protection. The the applied mark is distinctive enough and, growing tendency to register these kinds of if the trademark has been used by the Colour marks trademark can be explained by the applicant in Russia, evidence of such use Of all non-traditional trademarks, colours development of new production can be submitted and considered during and colour combinations attract the most technologies and multimedia technologies, examination or at the appeal stage. In such attention from manufacturers and services which often enter the market aggressively. cases evidence of use of the mark in Russia providers. However, although colour may be Producers of goods and service providers before the filing date is vital. The legislation easily represented graphically, the must fight for markets and consumers, and does not prescribe a list of documents to be distinguishing capability of a mere colour alongside advertising and promotion, submitted, but practice shows that various or colour combination is questionable. trademark function is a key means of materials may be used, including shipping According to the Civil Code, a trademark attracting consumers’ attention. An and customs documents, invoices and may be registered in any colour or colour interesting, original and non-traditional copies of agreements; results of an opinion combination. In this connection, it can be trademark is just one way to attract poll confirming that consumers associate asked whether a mark consisting of a colour consumers. the mark with the applicant and its goods; per se or a combination of colours, without The trademark legislation sets down no copies of annual reports (extracts indicating word or figurative elements, may be limitations in respect of what can be Russia as the country of supplies and the protected. Taking into account that the registered as a trademark, provided that the volume of sales); statements or evidence does not forbid such registration, the sign is distinctive. Article 1482 of the Civil from local distributors and/or local shops, answer is affirmative – but the condition for Code, which governs trademarks, provides including dated price lists; Russian quality such registration is that the particular that verbal, pictorial, three-dimensional and and conformance certificates; and colour may have enough distinguishing other indications or their combinations may advertising materials. All documents should capability and identify a product (ie, be be registered as trademarks. A trademark prove a strong link between the trademark, associated with the producer of the relevant may be registered in any colour or colour the products or services and the applicant. goods). In other words, the colour must have combination. The wording “other In general, all kinds of trademark except acquired distinctiveness. indications” confirms that the law is quite word marks, figurative marks and The practice of the RPTO shows that liberal in this regard. Nonetheless, the Civil combination (word and device) marks may trademarks consisting of a mere colour or a Code provides that a trademark cannot be be considered non-traditional. As the combination of colours are considered to granted for a designation that lacks the registration of three-dimensional marks has lack distinctiveness and are usually rejected capability to distinguish (Article 1483 of the been common practice in Russia for some during examination for this reason. While Civil Code); under the current practice of time, these types of trademark can now be the Trademark Register contains marks the Russian and Trademark Office ranked among the traditional trademarks. consisting of mere colours, a trademark (RPTO), indications that may be deemed More unusual are trademark applications application consisting of just one colour or ‘non-traditional’ trademarks are often and registrations for colour marks (either a combination of colours has little chance of rejected by examiners as lacking colours per se or colour combinations), being registered. However, in theory, the distinctiveness. The law provides for the sound marks, texture marks, olfactory possibility of registering a colour or

116 World Trademark Review August/September 2011 www.WorldTrademarkReview.com Country correspondent: Russia

combination of colours as a trademark in the registration may be rejected if the Russia exists, provided that the applicant examiner finds that the trademark lacks can prove that the colour or combination of distinctiveness. A sound mark may also be colours functions as its trademark and that rejected if it misleads consumers or this trademark has acquired distinctiveness conflicts with public interests and morals. through intensive use in Russia. One such Information about registered sound example is the trademark registration by marks is published by the RPTO in the Reckitt Benckiser of its pink colour for Official Bulletin and on its website. The Vanish stain remover. This colour mark was online publication of a sound mark usually registered by the RPTO in 2006 as contains written notes. Occasionally, 310048. files in mp3 format are available online for The RPTO has also granted legal download. Examples of registered sound protection to several colour combinations. marks include Russian Registration 172216 For example, Deere & Company filed a by Intel Corporation in Class 09 and combination of green and yellow colours for International Registration 729484 by registration as an international trademark Deutsche Telekom AG in Classes 09, 16, 25, designating Russia (among other countries) Vladimir Trey 28, 35, 36, 37, 38, 39, 41 and 42. as Application 883509. Deere is a well- Partner and trademark attorney known producer of agricultural appliances [email protected] Position marks and vehicles, which have been painted in Position marks also deserve special green and yellow for many years. The Vladimir Trey graduated from Moscow attention as the registration of such marks trademark was described as a combination State Linguistic University in 2000 as a is becoming popular in Russia, particularly of green and yellow applied to the listed linguist. In 2004 he graduated from the among clothing and shoe manufacturers. goods, with the green colour applied to the law faculty of the Russian State Institute of Several recent cases connected with position vehicle body and the yellow colour to the Intellectual Property as a lawyer, joining marks gave an indirect explanation of the wheels. This use of the colours has been IP law firm Gorodissky & Partners in 1999. nature of a position mark and its intensive and is highly recognisable. This He specialises in trademarks, in particular functionality. According to recent practice allowed the applicant to overcome the trademark proceedings in Russia and the of the RPTO, if registration of a position objections raised by the RPTO and obtain Commonwealth of Independent States, as mark has been applied for, the description legal protection for its trademark. well as the Baltic states. He also handles of the trademark should indicate that the Thus, although in some cases colour trademarks under the Madrid Treaty on applied mark is a position mark, which marks have been registered, some issues international trademark registration and means that the shape of the product is not still remain undecided, as the ability of the the Madrid Protocol. Mr Trey speaks both subject to separate legal protection and trademark owner to enforce its trademark English and German. functions only as a representation of the rights in such cases is still uncertain. In way in which the trademark is affixed to the regard to ordinary marks, the similarity product. A good example of a position mark criteria (eg, phonetics, visual appearance) phonogram. The form of expression may is International Registration 902264 by are easy to check. However, if a colour mark depend on the trademark registration HUGO BOSS Trade Mark Management leads to litigation, the absence of procedure chosen by the applicant: an GmbH & Co KG in Class 25 comparators may mean that the trademark international filing or a national application. owner is unable to defend its trademark In the latter case, the applicant has more Comment rights sufficiently. possibilities, since in case of an Unlike in some other jurisdictions, the international filing through the World Russian legislation does not set down Sound marks Intellectual Property Organisation, a sound separate regulations to govern the legal Sound marks are another good way to mark can be presented only as written notes protection and procedural issues connected capture consumers’ attention. (ie, an applicant cannot register natural or to applications for non-traditional Entrepreneurs increasingly use tunes or functional sounds). In contrast, a national trademarks. Nevertheless, the need for such music to identify their products or services. application for a sound mark filed with the regulations is clear and, based on existing For example, music that is repeatedly used RPTO can be presented in different forms, practice in Russia and abroad, the RPTO is in advertising or a tune which is played such as a magnetic tape or a CD with working on proposals for further when a device is turned on or off may recorded music files or a frequency chart. improvements to the legislation. WTR function as a means of individualisation This allows for the registration not only of and may distinguish products. The different tunes, but also of sounds that do registration of sound marks is possible in not represent a melody playable on a Russia, but there have been few such musical instrument. registrations so far. In a similar fashion to an ordinary mark, The RPTO applies the same a sound mark must go through all of the requirements to sound marks as it does to examination stages, including substantial ordinary marks. Different forms of examination, where the issue of similarity expression of sound marks are available – of the trademark to prior applications or for example, a sound mark may be registrations is examined. An examination presented as written notes, an audio file or a on absolute grounds is also conducted, and www.WorldTrademarkReview.com August/September 2011 World Trademark Review 117