Colombia made an alcoholic move to Russia. To secure its position a trade mark application for rum was filed Ron Viejo de Caldas (application 2004723531 with priority date of October 14 2004). The application was rejected. The examiner stated in the rejection that the designation did not have distinguishing capability because it consisted only of non-protectable elements characterizing the goods. Indeed, Ron (rum) points to the name of the product, Viejo is old and de Caldas means from the province of Caldas

In February 2007 the applicant filed an opposition to the Chamber of Patent Disputes. He indicated in the opposition that Viejo is indeed old, but the word is not used in relation to wines. There is another specific term for this quality in Colombia and the word is "añejo".

Caldas is indeed a province in Colombia, and is the place of produce and location of the applicant. but the name is not known to the Russian consumer. As a consumer, I can only confirm this: I studied Spanish professionally for many years as well as other subjects related to Spain and Latin America but the province of Caldas in Colombia escaped my attention.

The Spanish language is not widespread in Russia so that the set of words Ron Viejo de Caldas would be perceived by the Russian consumer as some exotic designation with a scent of a far-away country. It is also certain that Russian buyers do not visit wine shops carrying dictionaries. Besides, the applicant owns in his home country a number of trade marks which include the word Cladas and this designation acquired distinctiveness in many countries, such as Colombia, the US, Germany, the UK and Spain. The applicant also provided numerous documents showing the extensive use of the trade mark in Colombia, the US, Germany, etc.

The hearing of the case at the Chamber of Patent Disputes took place in August 2007 and played the same tune: the word Viejo is a translation from Spanish and means old, ancient, etc; de Caldas means from Caldas and may be perceived as indicating the place of origin of the product; the claimed designation consists of non-protectable elements characterizing the products; the arguments of the applicant about long and extensive use of the mark in other countries are dismissed because that does not contribute to distinctiveness of the mark in Russia acquired before the date of filing in Russia.

It would seem that the arguments by the Chamber of Patent Disputes are reasonable but on closer consideration they do not seem that simple. Why did the Chamber choose the date of filing in Russia as the date before which the distinctiveness should have been acquired? Why should acquisition of distinctiveness be linked to the Russian territory? The Russian Trade Mark Law (Article 6.1) directly provides that the relevant provision shall not be applied for rejection on absolute grounds if the designation acquired distinctiveness as a result of its use. This Article does not impose any limitation on the acquisition of distinctiveness specifically on the Russian territory and even more so in connection with the date of filing.

The Chamber of Patent Disputes chose to be over-formalistic when it did not accept evidence from the Colombian government bodies about the exclusive position of the applicant as producer of the said rum. Viewed from the interests of the consumer this decision will only allow free supplies of counterfeit rum to Russia.

Vladimir Biriulin

Gorodissky & Partners
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