AMexican company Hacienda de los Camichines SA failed to obtain a registration for Purple Label in Russia in respect of goods in class 33 (alcoholic beverages).
Predictably, the patent office refused registration because the claimed designation is confusingly similar to a series of word trade marks: Green Label, Blue Label, Gold Label, Black Label, again Black Label and Red Label according to certificates of registration numbers 276036, 210917, 236314, 197007, 20328 and 20327 registered in the name of another company for the same products of class 33. The products behind those trade marks are very familiar in Russia and enjoy widespread popularity.
The applicant for Purple Label appealed against the decision of the chamber of patent disputes and informed the chamber that he was in the course of negotiations with Diageo, the owner of the cited trade marks aimed at co-existence of the trade marks on the Russian market. He also informed the chamber that he would be able to provide a letter of consent from the owner of the cited brands allowing him registration and use of the controversial mark. The applicant further argued that submitting a letter of consent would confirm the fact that Diageo does not consider the trade marks confusingly similar and that their co-existence on the market will not mislead the consumers. It should be noted however that the label fans would certainly be misled because they are accustomed to having various kinds of labels from a single source.
When the date of the hearing came, the applicant was not able to produce the requested letter from the owner of the series of trade marks which he promised. In fact, the whole series of registered trade marks contains one key element, the word – label – and another variable which indicates to the colour. It is clear that when viewed as a whole, the series of the trade mark will be perceived by the consumer as emanating from a single source no matter how many colours there may be. Refusal of the trade mark owner to provide a letter of consent only emphasises the fact that the owner understood that false association would be inevitable. It is also evident that the owner of the registered trade marks is not willing to help dilution of his marks with his own hands.
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| Vladimir Biriulin |
Gorodissky & Partners
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