Just before the 2010 New Year some of the big Russian banks received a notification from their colleague, the Eastern Express bank, to the effect that the words Christmas, New Year, Vacation can be used only after signing a licence agreement. Eastern Express registered the words as trade marks and decided to improve its business by collecting royalties from the other banks using those words. The marks were registered in relation to bank and insurance services, and also services connected with evaluation of real estate and works of art.
The news caught the other banks unawares: one Rosbank spokesmen said it was surprised to receive a letter from Eastern Express. The words Christmas, New Year and Vacation are commonly used words and it could not be expected that those words all of a sudden would become the subject of trade mark protection. Eastern Express confirmed the mass mailing and said that it had sent out 100 notifications to Russian banks demanding a royalty of $10,000 yearly from each bank.
One of the banks was offering a savings programme under the name "Christmas Gift" and said that it did not intend to renounce its right to use the word Christmas. Other banks adopted a similar stance. Another bank has been using the words "New Year St-Petersburg" for five years to name its seasonal deposit programme and does not intend to relinquish it either.
When asked about the doubtful registration, the Patent Office said indeed there are limitations in the use of common words but since the words have no connection with banks and finances Eastern Express correctly claimed those words and they can be registered for those services. On the surface of it, the registrations do not contradict the law but it may also be argued that they can be cancelled through the Chamber of Patent Disputes procedure.
Sometimes real situations cannot be laid on the procrustean bed of law and in such cases it would indeed be advisable to apply to the authority of the Chamber of Patent Disputes, which is expected to be guided not only by the relevant provision of the law but by common sense too. Someone should stop Eastern Express half way.
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| 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
pat@gorodissky.ru
www.gorodissky.com