Russia: Manchester in London, Chicago in St Petersburg

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Russia: Manchester in London, Chicago in St Petersburg

J.S.S.Tobacco Ltd., a London company, filed a trademark application with the Russian Patents and Trademarks Office

manchester-96.jpg

The application was refused because the examiner opined that the word element "Manchester", a city in North West England points to the place of production of the goods or the location of the applicant.

At the time of filing the trademark application, the address of the applicant was indicated as "London". The word element of the trademark "Manchester" is also a city. Hence, it was stated in the decision of the patent office that this was misleading for consumers with regard to the location of the manufacturer of goods or their place of production.

The applicant understood the situation and appealed the decision. He informed the patent office in his appeal that his address had changed to Centenary Way, Trafford Park, Manchester, M50 1RF. The Chamber of Patent Disputes stated that the applicant exercised his right and made amendments to his trademark application. The change of address removed the reasons for rejecting the trademark application so that the Chamber could recognise that the registration did not contradict the law. The Chamber pointed out that the word element "Manchester" is part of the claimed designation. It is the name of the city in England and characterises the place for production of goods. Hence the registration should be allowed.

In connection with this, one may recall another registration, Chicago LLC.

chicago.jpg

The registration was refused and appealed by the applicant at the same Chamber of Patent Disputes. At that time, it was decided that the word "Chicago" would not mislead consumers (visitors of the beauty parlour) even though the applicant did not change his place of residence (Sankt-Petersburg, Russia).

In the "Manchester" case, the applicant found an easy way to obviate the risk of refusal.

biriulin.jpg

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

more from across site and SHARED ros bottom lb

More from across our site

Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
IP STARS, Managing IP’s accreditation title, reveals its latest rankings for patent work, including which firms are moving up
Leaders at US law firms explain what attorneys can learn from AI cases involving Meta and Anthropic, and why the outcomes could guide litigation strategies
Attorneys reveal the trademark and copyright trends they’ve noticed within the first half of 2025
Senior leaders at TE Connectivity and Clarivate explain how they see the future of innovation
A new action filed by Nokia against Asus and a landmark ruling on counterfeits by South Africa’s Supreme Court were also among the top talking points
Counsel explain how they’re navigating patent prosecution matters and highlight key takeaways from Federal Circuit cases
A partner who joined Fenwick alongside two others explains what drew her to the firm and her hopes for growth in Boston
The England and Wales High Court has granted Kirkland & Ellis client Samsung interim declaratory relief in its ongoing FRAND dispute with ZTE
A UDRP decision that found in favour of a small business in a domain name dispute could encourage more businesses to take a stand in ‘David v Goliath’ cases
Gift this article