When registering a trade mark in Russia, the question often arises whether it is worthwhile to register a Cyrillic version of the trade mark in addition to the Latin one. The decision is with the trade mark owner who will appreciate having enlightening knowledge of what may happen in this situation though there is no hard and fast rule to decide this or that way.
There is a trade mark registration (number 335180) for Le Pain Quotidien (daily bread). The owner of the trade mark filed an appeal against another trademark registration (number 01143) (daily bread in Cyrillic). Naturally, the goods covered by the trade marks are identical. The appellant argued that the word combination "pain quotidien" is a French set expression in the 11th verse of the sixth chapter of the Gospel of Matthew in the New Testament and is part of the Sermon on the Mount. This verse is one of the best known parts of the entire New Testament: "Donne-nous aujourd'hui notre pain quotidien" (Give us this day our daily bread). The designation «ХЛЕБ НАСУЩНЫЙ» is a Russian equivalent of the French expression "pain quotidien" and is in fact a traditional translation of the French text. The appellant argued that the existence of the appealed registration is an obstacle to the operation of the appellant on the Russian market in case he wants to use the Russian equivalent of his trade mark, either himself or through his licensees.
The Board of Appeals examined both expressions and decided otherwise. It stated that the French expression is not deeply rooted in the Russian language, unlike other words and expressions such as "accessoire" – аксессуар, "boutique" – бутик and "Cherchez la femme" – шерше ля фам. These words and expressions are borrowed from the French language and are widely used by the Russian rank and file. In fact, they became the Russian words.
If one evaluates the words «ХЛЕБ НАСУЩНЫЙ» and "pain quotidien" from the phonetic point of view they are absolutely different and have no common features when phonetic similarity is examined. The compared designations have a different combination of consonants and vowels, letters, sounds, different phonetic length, different position of sounds and combinations of sounds in relation to each other, etc.
Visually, the designations are quite dissimilar, they produce a different visual impression because the characters belong to different alphabets, word combinations are different and juxtaposition of letters is different. Complete phonetic and visual dissimilarity results, and the lack of any association in the eyes of the consumer between the two designations leads to the conclusion that the designations are not similar in general, hence the Board of Appeal did not find any grounds to make a conclusion that the trade mark number 401143 is not protectable.
This is a clear cut case however it brings the problem to light. In many other cases the picture may not be so obvious. There are cases, and their number is not so small, where lack of a Cyrillic registration led to lengthy conflicts in the Patent Office.
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Vladimir Biriulin |
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