A US applicant has an International Registration (IR) number 479405 for the American Eagle trade mark. He extended his registration to Russia in respect of part of the goods in class 25, specifically, to pantoufles, chaussures en general d'origine americaine.
The IR 479405 for American Eagle was valid and dormant in Russia for some time until an interested person filed a non-use action in the Chamber of Patent Disputes. The trade mark owner submitted documents testifying to the use of his trade mark which were examined by the collegium of the Chamber of Patent Disputes.
One of the documents was a non-exclusive agency agreement between the American Eagle Srl (manufacturer) and one Irina Chakalina (the Russian agent). The document showed that the manufacturer was interested in the marketing and advertisement of goods marked with the trade mark, American Eagle, while the agent was interested in promoting goods such as socks, shoes, etc marked with the above trade mark. The Chamber however could not correlate the mentioned designation with the trade mark according to the International Registration No 479405 because the agreement did not indicate the registration number but only mentioned the designation itself, ie American Eagle. The cargo invoices which showed the picture of the IR 479405 were also examined.
Nevertheless, it was not clear what goods were covered by the invoices and whether those goods were marked with that designation. The invoices were not accompanied by the documents confirming payment of the goods. Another agreement concerned planned arrangements between the Russian exhibition company Mosshoes and the American Eagle S.r.l. That document however evidenced only the intent to rent exhibition space but not any trading activity. There were no documents confirming the fact that those particular goods would be put on the market. Hence the Chamber of Patent Disputes had no documents to rely upon in favour of continued validity of the trade mark according to IR 479405 and had no other choice but to cancel legal protection of the said trade mark.
Coincidentally, another action was initiated at about the same time by a US company, American Eagle Outfitters Inc, which filed an opposition against the grant of protection to the trade mark, IR 356086, which represents a combined designation in the form of a stylised picture of a flying spread-eagle. To the left of the picture there was a suggestive word Complices, to the right – Eagle.
The opposition was based on non-compliance with the requirements set forth by Article 2(6), 6-bis of the Berne Convention on Protection of Literary and Artistic Works. The basic arguments of the opposition were:
- The picture in the trade mark is an accurate reproduction of the copyrighted work of the petitioner though the words surrounding the picture are not covered by copyright.
- The work of copyright (ie the picture of the eagle) was created by the petitioner in his country, the date of disclosure was October 8 2003. It is customary to register copyright in the US and a relevant certificate was produced.
The Chamber of Patent Disputes noted that Russia had been a member of the Bern Convention since March 13 1995, while the US had been a member of the Convention since March 1 1989, hence the petitioner had every reason to protect his copyright on Russian territory. Considering that provisions of Article 7 of the Law on Trade Marks effective on the priority date of the trade mark provided a solution to the conflict between trade marks and copyrighted works, ie the senior right has priority over junior right, the Chamber of Patent Disputes invalidated the registration in full.
While it may seem like hunting season for eagles, in fact, the above signifies that the Chamber of Patent Disputes exercises a uniform approach to the applicants no matter where they come from.
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| Vladimir Biriulin |
Gorodissky & Partners
Russia 129010, Moscow
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