Russia: Using the internet in trade mark examination

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

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

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

Russia: Using the internet in trade mark examination

The appeal board of the patent office examined an appeal against refusal of registration of the trade mark Svenska Handelsbanken on IR number 1107500 filed by the Swedish company Svenska Handelsbanken АВ (publ) in respect of services in classes 35, 36, 45.

The official action of refusal initially issued by the patent office explained that the claimed designation Svenska Handelsbanken when translated from Swedish means "Swedish Commercial Bank". Not knowing the Swedish language himself, the examiner found a reference on the internet in Google Translate. Based on his findings the examiner concluded that the word elements are lexical units pointing to the place of operation of the applicant and the field of his activities. Hence those words are descriptive in relation to the claimed services in classes 35, 36, 45 классов.

The appeal board of the patent office did not uphold the opinion of the examiner and decided to register the trade mark. While considering the appeal the board again conducted a search on the internet. It was found that the word combination Svenska Handelsbanken has no clear translation. The search engine Yandex did not provide translation for the word elements Svenska Handelsbanken while Google Translate provided translation of the word element Svenska (Swedish) while translation of the word element Handelsbanken could not be found.

It is to be noted that neither the examiner nor the members of the appeal board were familiar with the Swedish language; however they believed they could make a judgment on the Swedish (presumably) words relying on the information found on the internet only. The appeal board noted that the Swedish language is not known to the majority of Russian people and the average Russian consumer may believe that the word elements in question are artificially coined.

The appeal board also noted that according to the appeal and the translation of the professional electronic dictionary (the dictionary itself does not claim to be professional) Valenta it may be inferred that the word element Handelsbanken of the claimed designation consists of Swedish words "handel" and "banken", their combination is not customary in the Swedish language and is not a set term. According to the appeal board the word "handel" may be translated as "commerce" or "business", "market", "deals", "shops" or "traffic". The word "banken" is derivative of "bank" and may be translated as "sandbank", "cloudiness", "bank", "depository" or "embankment".

The appeal board stated that the word element Handelsbanken is not used to designate a commercial bank. The appeal board also consulted a translator who explained that any non-governmental credit organisation providing financial services for legal and physical persons are called an "affàrsbank". The word designation Svenska Handelsbanken is not a definition of a credit organisation in the Swedish language and cannot be descriptive in relation to the claimed services.

Without judging whether the decision of the examiner or of the appeal board is correct, it is necessary to note that both examination authorities made their conclusions on the basis of information they obtained from the internet. The internet is a useful source of information; however whatever may be found there needs careful verification. People who search information on the internet should have some competence in the subject they explore otherwise their findings leave a dubious impression.

Biriulin-Vladimir

Vladimir Biriulin


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

more from across site and SHARED ros bottom lb

More from across our site

Top talking points also included news of an appellate ruling concerning ‘Pisco’ and Indian drugmakers gearing up to launch generic versions of Ozempic as Novo Nordisk’s patent expires
The government’s keenly awaited view on AI and copyright has positive themes but leaves rights owners wanting, says Rebecca Newman at Addleshaw Goddard
While IP Australia’s updated manual could be favourable to computer-implemented inventions, stakeholders would like to see whether a consistent and reliable standard is followed during actual examination
UKIPO will remain a competitive option as long as efficient service continues
A future opt-out has not been ruled out, but practitioners warn that the UK could fall behind in the AI race
US patent lawyers say they are increasingly advising clients on China strategies as corporations seek to gain leverage in enforcement, licensing, and supply chain management
Mike Rueckheim reunites with 12 of his former Winston & Strawn colleagues as King & Spalding continues aggressive hiring streak
As global commerce continues to expand through e-commerce platforms and digital marketplaces, protecting brands has become a growing challenge for organisations worldwide. Counterfeiting, intellectual property infringement, and online brand abuse are increasing across industries, making brand protection strategies a critical priority for businesses.
Henrik Holzapfel and Chuck Larsen of McDermott Will & Schulte explain why a Court of Appeal ruling could promote access to justice and present a growth opportunity for litigation finance
A co-partner in charge says the UK prosecution teams are a ‘vital’ part of the firm’s offering, while praising a key injunction win
Gift this article