The Patent Office considered an appeal filed by Brouwerij L
Huygne company, Belgium on the decision of the examiner to
refuse recognition in Russia of International Registration
number 1141648 for goods in class 32 and services in class 43.
The trade mark according to the International Registration is a
depiction of a decapitation device, the guillotine, brought
into general use by Dr Guillotin. For those who do not
immediately understand there is also the word element "La
Guillotine" across the device.
Initially the examiner refused registration in Russia
arguing that the word and the picture of guillotine abuse
public interest, the principles of humanity and morals when
applied to goods such as mineral waters and juices (often
consumed by children).
The applicant did not agree to the decision of the Patent
Office and argued that the beer La Guillotine is produced by
one of the famous breweries in Belgium with 500 years of
history. He also argued that the beer was timed to coincide
with the 200th anniversary of the French revolution and that
the beer was of high quality. The applicant explained that the
trade mark also carried a humorous meaning, namely it could be
understood as "cutting off" thirst.
The Patent Office could but did not engage in repartee to
state that a more appropriate connotation could be that the
beer could "cut off' the mind after cutting off thirst, if
consumed to excess. Anyway the Patent Office did not develop
this idea and was satisfied with the request of the applicant
to limit the goods to beer (thus "cutting off" children from
the picture). Additionally the applicant stated that the trade
mark, even if not registered, was used in Russia from 2009 to
2012 and was distributed by Russian companies Force Trade Ltd
and Westbridge Ltd. Besides, the trade mark in question is
registered in a number of countries where French is the
official language including Benelux, France and other European
The fact of registration of the trade mark in European
countries is of special importance because Russia ratified the
Agreement on Partnership and Cooperation with the European
Community. Article 54 of the Agreement obliges Russia to ensure
the same level of protection of intellectual property as exists
in the European Community.
The Collegium of the Patent Office while accepting the
appeal noted that depiction of a device for beheading people on
the products such as waters, juices and other non-alcoholic
drinks could indeed elicit negative emotions among consumers
especially if such products could be consumed by children.
However, since the applicant limited the list of goods and
services to class 32 – beer the collegium decided that
it was possible to grant protection for the trade mark.
The liberal attitude of the Patent Office in this case may
be compared to a harsher approach of the OHIM in its decision
on the appeal by Couture Tech Limited from BVI (case number
1509/2008-2). The applicant in that case sought to register the
coat of arms of the former Soviet Union for some goods, such as
perfume, jewellery, leather and badges. The registration was
rejected because it could 'be perceived as an offence to the
basic values and principles of the European Union". Even though
the Soviet symbol was not understood by young people over 30
the Office rejected the appeal of the applicant.
In contrast to that, the US Federal Circuit's en banc
reversal of In Rem Tam of December 22 2015 decided
that refusal to register disparaging marks is unconstitutional
and provided a detailed discussion to that effect. Different
patent offices. Different decisions. They only testify to the
fact that examination of trade marks and perception of
trademarks by patent offices, by ordinary people and experts
may be quite different. The conclusion: never surrender and
fight to the end.
Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123