An individual entrepreneur filed a trademark application (No. 2019700445) in Cyrillic for ‘ОГНЕННАЯ ВОДА’ (firewater) to individualise the goods in Class 33 (alcoholic drinks).
The patent office refused the application because in the opinion of the examiner the word ‘firewater’ is synonymous with a generic word ‘vodka’ and is descriptive while it may be confusing for other goods in Class 33. The patent office also noted that firewater in Cyrillic is a jocular word meaning vodka.
The applicant appealed the decision at the Chamber of Patent Disputes. He argued that the combination of words ‘fiery water’ is a phraseological unit, it is also an obsolete lexical unit, it does not identify a specific product but elicits associations with any alcoholic drink.
“For the sake of justice it should be noted that similar approach may be observed in the English language. Some sources identify firewater as moonshine, Cambridge dictionary defines it as whisky in the first place. In any case, it is largely understood as a strong alcoholic drink.
In Russia, this word combination is familiar, but indeed, it is not used in day-to-day life though it may be found in print in rare cases. Russian people are familiar with this word combination mostly because the American writer Fenimore Cooper was quite popular among the readers. Firewater could be met in his book The Last of the Mohicans (1826).”
In fact, the Chamber of Patent Disputes confirmed isolated use of the designation because it stated that the appellant had not provided information confirming acquired distinctiveness of the designation showing prolonged and intensive use of the designation.
It also stated that the meaning of the word combination is well familiar to the Russian consumer from fiction and historic literature (which is true). Finally, the Chamber of Patent Disputes turned down the appeal.
The applicant went to the IP court with the appeal against the Chamber of Patent Disputes.
He argued that a number of sources show that firewater is an idiom in Russia, it is not in common use and cannot be regarded as a generic word unit. It may only elicit associations with alcoholic drinks in Class 33 through additional associations. Besides, firewater is not featured in any regulatory documents concerning alcoholic drinks.
He also attached copies of pages from phraseological dictionaries where fiery water was one of the entries.
The court agreed that it is not featured in the regulatory documents concerning alcoholic drinks because it is a phraseological unit and somewhat a slangy word. Nevertheless, the court after examining the designation fiery water came to the conclusion that its meaning is understood by every person (which is true) and is strongly associated with vodka (which may be disputed).
Finally, the court supported the stance of the patent office in that the word combination ‘fire water’ is not used in the regulatory documents concerning ethanol containing products and in the name of particular alcoholic drinks however it is used metaphorically, is a phraseological unit and has a fixed meaning, i.e. vodka.
The court of first instance also relied on the conclusions of the patent office supported by documents (dictionaries and reference books). In his turn, the plaintiff did not provide evidence of associative links proving that the consumer perceives the disputed designation in relation to alcoholic drinks other than vodka (whisky, rum, etc.)
The plaintiff appealed the judgment of the first instance court at the presidium of the same court in its capacity as cassation instance. He argued that conclusions of the court of first instance are based on sources related to day-to-day colloquial use and in fiction literature and do not concern economic relations.
He noted that the judgment is contradictory in that the court agreed that the disputed word combination is not used in regulatory documents concerning circulation of alcoholic products and is not used as the name of alcoholic drinks.
On the other hand, the court of first instance stated that the word combination is well familiar to the consumer as vodka without additional conjectures. The plaintiff argued that if an element is descriptive it should be freely used and protect the interests of producers with the purpose of using these words in economic relations. However, neither the economic entities nor the state controlling bodies feel the necessity to use the word combination ‘ОГНЕННАЯ ВОДА’.
The Presidium of the IP court heard the arguments of the plaintiff and pointed out that a designation should be evaluated proceeding from perception of the designation by rank and file consumers who are ‘addressees’ of the given product.
The Presidium also referred to a number of judgments issued by the Supreme Court and the IP court. One and the same designation may be descriptive in respect of some goods and at the same time may be false in respect of other goods. In other words, one may ask a question whether an element of a designation may elicit in the consumer associative ideas about the product which may cause his confusion.
The Presidium did not accept the position of the plaintiff who was of the opinion that the Chamber of Patent Disputes should have considered the meaning of the designation from the point of view of the producers of alcoholic products. The Chamber has no obligation to collect evidence (conducting statistic research, public polls, etc.).
When examining appeals it should limit itself with the arguments in the appeal and the results of information search from the official action of the examining division. Hence, the court of first instance correctly evaluated the situation proceeding from the documents on file submitted by the applicant when he filed the trademark application and when he appealed the official action of refusal.
The burden of proof lies with the persons who are parties in the process (dispute). The court of first instance has no right to collect evidence required for confirming or refuting circumstances having essential importance for correct solution of a dispute.
The Presidium also confirmed that the lower court correctly had applied the provisions of the procedural and material law.
As a result, the Presidium of the IP court supported the judgment of the court of first instance and rejected the complaint of the plaintiff.
Vladimir Biriulin
Partner, Gorodissky & Partners
