A cancellation action for a trade mark due to non-use is a sharp weapon that is often used in competitive struggles.

In order to avoid possible arguments over the version of the mark that is used (Latin or Cyrillic) it is usually recommended to register both variants. That should not be understood as meaning that a single language registration is doomed to be cancelled though it means the problem may be tricky.

The Chamber of Patent Disputes has considered a case on the early termination of protection of a trade mark due to its non-use. Having considered the documents on file and the statements of the parties in the hearing, the Chamber refused to accept a cancellation action instituted against a trade mark that consisted of a word mark made in standard Latin characters.

The non-use cancellation action was considered against a registered licence agreement for that trade mark. The licensee used it but in a different form, that is in the letters of the Russian alphabet. The Chamber of Patent Disputes deemed it possible to apply the provision of Article 5 C(2) of the Paris Convention which sets forth that "the use of a trade mark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark".

The Chamber construed the words "in a form differing in elements" as meaning that a Russian transliteration of the trade mark registered in Latin could fit the concept of "the form different in elements". The Chamber of Patent Disputes concluded that the used trade mark is a transliteration of the trade mark registered in Latin characters, it does not alter the essence of the trade mark and can be associated with it on the whole. In fact, the Chamber said the trade mark was adapted to specific marketing conditions on the Russian market.

To support his position the licensee also submitted information on the volume of sales of the trade marked goods in various cities of the Russian Federation. The goods were labelled with the Russian version of the trade mark and were supplied in quantities sufficient to meet the demand of the consumers.

This decision of the Chamber of Patent Disputes seems to be precedential, as the use of the transliteration of the trade mark was recognized as the use of the trade mark itself. Nevertheless, it would be premature to recommend that trade marks be registered in one version only. The guide for the choice may be the extent of the similarity between the Latin and the Russian word. The more similar to the eye the words are to the average consumer the more chances there are to recognize one as the other. If the words look different the non-use action still may work.

Vladimir Biriulin

Gorodissky & Partners
Russia 129010, Moscow
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