A Russian citizen applied for the combination of letters GB against a white background, the lower part of letter B being highlighted in white (see illustration).

The Russian PTO defended Great Britain, arguing that the dominating element of the claimed designation GB is the two-letter code for Great Britain, according to WIPO and ISO standards.

The applicant objected to the decision of the PTO and argued that the state symbols of Great Britain do not feature that code and nor do the ISO standards set forth the requirements for the means of individualisation. The applicant also argued that he was actively using the claimed designation in the course of his business activities and was not a competitor to Great Britain.

The PTO considered the arguments but concluded that they were not convincing. In its decision, it pointed out that country codes are widely known to Russian consumers and manufacturers because practically all imported goods carry a two-letter code and the code GB is often among them. The information on the country code is generally available and any rank and file person may correlate the claimed designation with a particular country, in this case Great Britain. Hence confusion is highly probable in the eyes of the Russian consumer.

Therefore the Russian PTO rejected the application on the basis of the risk of confusion, which is a lawful ground for rejection. One may further project the possible course of events if the trade mark were registered. There are people who misappropriate domain names and register trade marks unregistered by their true owners and there are also patent trolls. Every IP subject matter has its shadow benefactor. In this case the now low-profile businessman could turn into an avid vulture stopping the import of every article from Great Britain. The unfair competition law could be applied to him but perhaps it is better to avoid going to such lengths?

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