Several years ago, a company registered a trade mark no
616808 on application no 2015721705 with priority of June 14
2015 for services in Class 41.
The image contained a stylised picture of a lion under which
there was a wavy ribbon with the inscription DOCENDO
The owner of international registration no 1198888 valid in
Russia in respect of the same services in Class 41 appealed
against the registration no 616808. The trade mark of the
appellant is also a combined designation including a stylised
picture of a shield with an image of a lion. The shield is
inserted into a circle resembling a fastened belt with the
inscription KING′S COLLEGE. A stylised
picture of a crown is located above the whole image while under
it there is a wavy ribbon with the word elements
HONESTY FAITH COURAGE.
The owner of the contested trade mark, in response to the
appeal, argued that the picture of the lion is not decisive
when comparing both trade marks because the image of the lion
has lost distinctiveness resulting in a number of trade marks
which have been registered with the image: nos 917640, 1217015,
Despite this, the Chamber of Patent Disputes upheld the
appeal and cancelled registration no 616808. Why did it do
The designations under comparison include word elements
different in their pronunciation: DOCENDO
DISCIMUS, KING′S COLLEGE and
HONESTY FAITH COURAGE respectively. On the
other hand, the compared designations should be recognised as
similar due to the overall visual impression they create; they
include similar compositions laid out in the same graphic
In the first place, stylised pictures of lions placed in the
central part of the designation strike the eye. The lions are
practically the same. They stand on their hind paws and are
pictured in profile. The designations include lions in the same
location standing against the background of a shield placed in
a circle. Ribbons curved at their ends occupy the same position
and both include word elements.
As a result of the above, and considering that most of the
essential individual pictorial elements in the designations are
similar, the Chamber of Patent Disputes came to the conclusion
that they are similar despite their insignificant
The owner of the disputed trade mark argued that the image
of the lion should not be decisive when comparing the
designations because the image had lost its distinctiveness.
The Chamber dismissed this argument and stated that other cited
trade marks include images of lions that are different from
those in the compared designations.
Both trade marks were registered in relation to Class 41 and
the owner of trade mark no 616808 did not dispute this.
There were also arguments regarding relevant trade marks and
court judgments outside Russia. However, these arguments were
dismissed as irrelevant.
Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123