When asked about Cardiff, only Russian people who have studied English may recall that it is the name of a city somewhere in the United Kingdom or England (for many Russians England means all of the UK). For still many others Cardiff is vaguely reminiscent of a football or rugby team.

A French company Cardif Assurance Vie sought to extend protection of the international registration number 930304 (Cardif) in respect of classes 35, 36 and 45 to Russia. The Russian Patent Office turned down the application because, according to the examiner, the applied designation Cardif phonetically reproduces the name of the geographical object, the city of Cardiff in Great Britain. According to the examiner, the designation could mislead consumers with regard to the place of the provided services because the applicant resides in France. The applicant gave credit to the erudition of the examiner but appealed against the decision.

Research was conducted in the dictionaries of the main European languages and it was found that the word Cardif does not have an independent lexical meaning. The dictionaries gave information about the city of Cardiff in the territory of Great Britain with a population of 290,000, which featured such industries as machine building, ferrous metallurgy and automotive. However the small population and its location in the territory of another country resulted in a general lack of awareness among Russian people about the existence of a town of Cardiff in Wales so that an average Russian consumer will perceive the designation Cardif as a coined word in respect of the claimed services.

The Chamber of Patent Disputes considered the case and concluded that the designation Cardif will not be understood by the average Russian consumer as an indication of the place of providing services, or the place of residence of the French applicant. Hence the consumer will not be misled.

Another point considered by the Chamber of Patent Disputes was that the trade mark Cardif reproduces the distinguishing part of the company name of the applicant, which is one of the world's largest insurance companies. The Cardif company has been present in the Russian market since 2003. It was set up in 1973 and is one of three insurance companies forming part of the group BNP Paribas. The Cardif company operates in 27 countries and specialises in insurance services for corporations and individuals.

Considering these circumstances the trade mark Cardif was registered in Russia in the name of the French company Cardif Assurance Vie.

Vladimir Biriulin

Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123
pat@gorodissky.ru
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