When registering a trade mark in Russia, the question often
arises whether it is worthwhile to register a Cyrillic version
of the trade mark in addition to the Latin one. The decision is
with the trade mark owner who will appreciate having
enlightening knowledge of what may happen in this situation
though there is no hard and fast rule to decide this or that
way.
There is a trade mark registration (number 335180) for Le
Pain Quotidien (daily bread). The owner of the trade mark filed
an appeal against another trademark registration (number 01143)
(daily
bread in Cyrillic). Naturally, the goods covered by the trade
marks are identical. The appellant argued that the word
combination "pain quotidien" is a French set expression in the
11th verse of the sixth chapter of the Gospel of Matthew in the
New Testament and is part of the Sermon on the Mount. This
verse is one of the best known parts of the entire New
Testament: "Donne-nous aujourd'hui notre pain quotidien" (Give
us this day our daily bread). The designation
«ХЛЕБ
НАСУЩНЫЙ»
is a Russian equivalent of the French expression "pain
quotidien" and is in fact a traditional translation of the
French text. The appellant argued that the existence of the
appealed registration is an obstacle to the operation of the
appellant on the Russian market in case he wants to use the
Russian equivalent of his trade mark, either himself or through
his licensees.
The Board of Appeals examined both expressions and decided
otherwise. It stated that the French expression is not deeply
rooted in the Russian language, unlike other words and
expressions such as "accessoire" –
аксессуар,
"boutique" – бутик and
"Cherchez la femme" –
шерше ля
фам. These words and expressions are borrowed
from the French language and are widely used by the Russian
rank and file. In fact, they became the Russian words.
If one evaluates the words
«ХЛЕБ
НАСУЩНЫЙ»
and "pain quotidien" from the phonetic point of view they are
absolutely different and have no common features when phonetic
similarity is examined. The compared designations have a
different combination of consonants and vowels, letters,
sounds, different phonetic length, different position of sounds
and combinations of sounds in relation to each other, etc.
Visually, the designations are quite dissimilar, they
produce a different visual impression because the characters
belong to different alphabets, word combinations are different
and juxtaposition of letters is different. Complete phonetic
and visual dissimilarity results, and the lack of any
association in the eyes of the consumer between the two
designations leads to the conclusion that the designations are
not similar in general, hence the Board of Appeal did not find
any grounds to make a conclusion that the trade mark number
401143 is not protectable.
This is a clear cut case however it brings the problem to
light. In many other cases the picture may not be so obvious.
There are cases, and their number is not so small, where lack
of a Cyrillic registration led to lengthy conflicts in the
Patent Office.
|
| 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