The Russian Patent Office rejected registration of a trade
mark in application 2012715514 with priority of May 14 2012 in
the name of a Russian company Tarantino Ltd Co. The designation
is a figurative representation of the relevant name.
While rejecting the application the Patent Office argued
that that the claimed designation reproduces the name of the
American filmmaker and actor, Quentin Tarantino without his
approval which can mislead the consumer with regard to the
person rendering services.
Regardless of the original graphic representation of the
three word elements and ragged design of the designation, the
word, according to the Patent Office, can be read easily and
perceived as the word "Tarantino". This unequivocal perception
of the claimed designation as the name of a famous American
filmmaker is enhanced by the factual data showing its use. The
internet site of the applicant
http://tarantinorest.ru/ru/about-us/ contains information about
the restaurant opened in Moscow honouring the legendary
American producer. The interior of the restaurant reproduces
the settings of the film Pulp Fiction and other movies by
Tarantino. It is interesting to note that there are no
limitations in registering the company name "Tarantino".
In contrast, the Chamber of Patent Disputes took a different
approach during consideration of an appeal filed by Dr Rehfeld
Fashion AG of Germany against the decision of the examiner
rejecting protection in Russia of an International Registration
The Chamber of Patent Disputes agreed to grant protection to
the trade mark in respect of goods in classes 18 and 25. The
applicant submitted the documents showing that the designation
"Broadway" is not only a familiar name of the street in New
York but also the name of streets in the UK and Australia. This
circumstance proves, according to the Chamber, that the
consumer does not definitely associate the trade mark with a
particular geographical place.
Besides, the documents submitted by the applicant testify
that the trade mark was created by the applicant in the 1980s
for the purpose of marking clothes in a casual style and
accessories hinting at New York. For over 20 years the
consumers of these goods were mainly people between 17 and 30
years old, the goods being sold in more than 30 countries.
Clothes and accompanying accessories under this brand have been
present on the Russian market since 2009. The volume of sales
during eight months of 2011 hit E1,482,751. This shows that the
trade mark acquired additional distinctiveness in respect of
goods in classes 18 and 25.
The applicant also submitted documents confirming the
existence of protection in various countries, which proves the
goodwill of the applicant and his intention to continue
business in Russia.
Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123