Trade marks are attributes of goods and services.
Unfortunately, there is a specific service which none can
avoid: funeral service.
The owner of trade mark number 487945, which included the
words Ritual Service (funeral service), initiated a court
action against the owner of a funeral home which used the words
"funeral service" to designate the funeral home itself as well
as using the words in various documents accompanying the
The court of first instance upheld the claims of the
plaintiffs. The judgment was appealed in the court of appeal,
which dismissed the plaintiff's claims. The case was appealed
in the IP court, which cancelled all previous judgments and
sent down the case for a new examination. In so doing IP court
pointed out that factual circumstances had not been properly
investigated and evaluated. This time the owner of the funeral
home appealed the judgment in the Supreme Court and asked it to
cancel the ruling of the IP court and leave in force the
judgment of the court of appeal.
The Supreme Court noted that the words "funeral service" in
the trade mark are disclaimed from protection. The court of
first instance issued a judgment in favour of the trade mark
owner arguing that the entrepreneurs render similar services.
The court of appeal cancelled that judgment arguing that the
words "funeral service" are disclaimed from protection. The IP
court ruled that the case should be re-examined because in its
opinion it was necessary to investigate the confusing
similarity of the words with consideration for the activities
of the conflicting parties on the same territory from the point
of view of their graphic and visual similarity and existence of
the dominating element.
The Supreme Court cut the Gordian knot in a few simple
statements: the Civil Code provides in Article 1483 that a
non-protectable element may exist in a trade mark but it should
not dominate the trade mark, which means that it does not
affect the general perception of the designation and should not
be protected because it is a commonly used word. It also noted
that the previous court instances confirmed that the words
"funeral service" had been used by the respondent separately
from the figurative part of the trade mark and were commonly
used words. Hence, no more arguments were needed to make the
final judgment. The Supreme Court ruled that the judgment of
the court of appeal should be left in force meaning that that
there was no infringement of the trade mark rights.
The case may seem trivial; funeral services were and will be
rendered regardless of the hassle between the undertakers. What
is worth noting is that this is the first case accepted for
examination by the Supreme Court after the merger of the
Supreme Commercial Court into the Supreme Court six months ago.
The judgment is flawless. However it would have been better if
its first IP case concerned a different trade mark because of
the aftertaste that remains.
Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123