Nike International filed an appeal against the refusal of
the Patent Office to register its mark (application number
2011725665) for class 25. According to the documents on file
the claimed designation is figurative and represents a stylised
head of a bull.
The Patent Office examiner rejected the application citing
similar trade marks numbers 255295 and 359824 both in the name
of a Dutch company.
The first cited trade mark is a combined designation which
also includes a stylised image of the head of a bull and word
elements "Texans" and "Houston". The word element "Houston" is
excluded from protection and the registration is also valid in
respect of Class 25.
Another trade mark is also figurative and represents a
stylised image of the head of a bull and the registration also
concerns Class 25. The applicant did not contend similarity of
the trade marks and therefore the Chamber of Patent Disputes
agreed that the official action of the Patent Office had been
well grounded. At the same time, while considering the appeal
of the applicant, some circumstances were revealed which could
not have been taken into account by the Patent Office examiner.
These circumstances consist in the first place in that the
Dutch company did not object to the registration of the
contentious trade mark and provided a letter of consent to that
The practice of submission of letters of consent has been
routine with applicants for quite some time. Before the
enactment of Part IV of the Civil Code this practice was the
goodwill of the Patent Office; however after 2008 a relevant
provision was included in the law. Now, the letter of consent
may not be accepted by the Patent Office only if it may cause
confusion in the eyes of consumers.
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