Russia: Sweet Wi-Fi
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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

Russia: Sweet Wi-Fi

Wi-Fi is perhaps one of the most famous words in the modern world. It would seem it is an acronym which it is not. It is a nonsense word. Phil Belanger, a founding member of the Wi-Fi Alliance, explained that it does not mean anything at all. It just sounds like it means something. Aside from being nonsensical it is a trade mark and thus it acquires very much sense.

A Russian confectionery company FinTour filed a trade mark application number 2013706249 with priority of February 2 2013 in respect of goods in class 30 (food products). The examiner refused the registration arguing that the designation WiFi is a trade mark owned by WiFi Alliance and widely known by Russian consumers. As a result, registration of the said designation in the name of the applicant for the goods in Class 30 would be capable of misleading consumers with regard to the producer of the goods. Besides, the intention of the applicant to register the claimed invention as a trade mark may be regarded as contradicting the public interest because the use of commercial reputation of other persons cannot be regarded as fair behaviour on the market.

The applicant appealed the decision of the examiner and pointed out that the US company Wi-Fi Alliance has a registered trade mark in Russia Wi-Fi Direct according to certificate number 471498 in respect of goods in class 9 referring to computers and software (class 38).

It is obvious that the Russian confectioner FinTour is engaged in production and selling of confectionery products so that the consumer will not be misled with regard to the producers because each of the producers has a different stratum of consumers and those consumers have different preferences. The designation WiFi is a coined designation in regard to confectionery and cannot cause false associations in respect of the producer. Nor can the name of the confectionery products provoke false associations among consumers or contradict public interest, principles of humanity and morals, and it does not offend religious feelings. The applicant, according to him, cannot use the commercial reputation of another person because he is the first and the only producer of original confectionery products under the name WiFi on the Russian market and that designation was used by him even before the filing date of his trade mark application and earned high reputation over the years of his business in the field of confectionery production.

As a result, the Collegium of Patent Office was convinced by the applicant's arguments and decided in favour of the applicant. Finally, the Patent Office granted the registration of the trade mark WiFi for confectionery.

For the outside observer this decision is double edged. Arguments can be put forward on both sides. One of the arguments was that the consumers of the goods (computers and confectionery) are different. It is not clear why the Patent Office ruled out the situation in which a computer wizard clicks on the mouse of his computer and drinks coffee with candies to push sleep away.

Biriulin-Vladimir

Vladimir Biriulin


Gorodissky & PartnersRussia 129010, MoscowB. Spasskaya Str25, stroenie 3Tel: +7 495 937 6116 / 6109Fax: +7 495 937 6104 / 6123pat@gorodissky.ruwww.gorodissky.com 

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article