The Dutch company Formula One Licensing BV filed an application for a trade mark – Formula 1 Russian Grand Prix. The examiner of the Patent Office refused registration in classes 09, 16, 18, 25, 28, 38, 41 arguing that the claimed designation was confusingly similar to a number of trade marks (no 217978 and others) which include word elements Grand Prix for homogeneous goods and services in classes 09, 16, 18, 25, 28, 38, 41 and with a combined trade mark no 361073 which includes word elements Grand Prix de Russie in classes 09, 16, 18, 25, 28, 38, 41 for homogeneous goods and services in classes 16, 25, 28, 41. The examiner also argued that since the claimed designation included the word Russian it could mislead the consumers with regard to the provider of the goods and services because the applicant was a foreign person.

The applicant appealed the decision of the examiner to the Chamber of Patent Disputes. He argued that he had organised championship Formula 1 car racing since 1950 and that there are no races which are more popular in the world. The trade mark Formula 1 is registered in almost all countries and Russia is not an exception. There are more than 10 trade marks in Russia which include the designation Formula 1.

The world championship consists of several legs (stages) which are called Grand Prix, which are organised in different countries on tracks especially built for this purpose. The name of each stage includes the designation Grand Prix and the name of the country where the contest is being held. In this context, the Chamber of Patent Disputes held that the designation Russian Grand Prix can be rightly used in relation to the championship stage to be held in Russia. The Chamber of Patent Disputes also took into account the construction of a race track – started in 2008 – in the Moscow region. Hence, the Chamber of Patent Disputes granted legal protection to the claimed designation that include the word elements Russian and Grand Prix as unprotected elements in class 41 – organisation of sports events in relation to car races. The Chamber of Patent Disputes handled this issue carefully and confirmed the rejection of registration in classes 09, 16, 18, 25, 28 and other services in classes 38, 41.

It seems that the Chamber of Patent Disputes was greatly influenced by the construction of the race track in the vicinity of Moscow and by the plans of the foreign applicant to organise a Formula 1 championship in Russia. This is a rare case where the word Russian (even though disclaimed) was allowed to be included in a trade mark owned by a foreign applicant.

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
www.gorodissky.com