Russia: The Chamber of Patent Disputes considers the similarity of two marks
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: The Chamber of Patent Disputes considers the similarity of two marks

A combined designation was filed as trade mark application no 2016706326 in respect of services in Class 42 of the International Classification of Goods and Services (ICGS). The mark is shown below:

The patent office refused registration because the claimed designation is confusingly similar to trade mark no 489580 with an earlier priority date in the name of another person, also in respect of Class 42. The mark is shown below:

The applicant did not agree with the decision of the examiner and appealed it. He argued that even though both designations are claimed for services in Class 42, those designations are used for individualisation of different services and both designations are visually different. As a result, they produce a different visual impression. The applicant also argued that the claimed and cited designations are different phonetically.

However, the Chamber of Patent Disputes refused the appeal and upheld the decision of the patent office in force.

According to the Chamber of Patent Disputes, similarity between both designations was established on the basis of the similar phonetics of the word elements ONE FACTOR and UNOFACTOR which have identical end parts (FACTOR) and close sounds (O – U – E) and identical sounds (N-N) in the initial part of the designation. Visual separation in the claimed designation in two parts, i.e. ONE and FACTOR, does not affect phonetic perception and does not modify phonetic similarity to the word Unofactor.

The compared word elements consist of verbal units of the English language (ONE) and Spanish/Italian languages (UNO) which have the same meaning and are translated into Russian in the same way. The word FACTOR has the same meaning and is easily understood in Russian even without translation (in fact, it is transliterated and has the same meaning). Accordingly, likeness of concepts and ideas imparted by these designations determine semantic similarity of the compared word elements.

Taking into consideration phonetic and semantic similarity, it should be noted that visual differences between these designations do not affect to any significant degree the conclusion about their similarity.

The Chamber of Patent Disputes did not agree with the assertion of the appellant who argued that there is considerable visual difference between the compared designations because writing the compared parts in capital letters and in Latin characters just enhances visual similarity.

The services in Class 42 claimed in the designation and in the cited trade mark are in the same field. Those services concern scientific research and development of computer technologies and information/communication services which can be used in any field.

Finally, the claimed designation and the cited trade mark in Class 42 elicit like associations. Despite some differences, it can be concluded that they are confusingly similar.


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 ros bottom lb

More from across our site

A team of lawyers who joined Norton Rose Fulbright from Polsinelli say they were drawn to the firm's global platform
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers say a ruling concerning liability for trademark infringement could give company directors an easy way out and create litigation uncertainty
The LMG Life Sciences Awards announces the winners for the 5th annual awards
Some US lawyers have strengthened their connections with European firms as they help clients determine whether the UPC will become a 'centre of gravity'
In the latest episode, the team discusses the battle to take control of listed company and IP business Qantm IP, and looks at some recent hiring trends
To mark Mental Health Awareness Week, lawyers explain how they manage their mental health, and how they pluck up the courage to ask themselves difficult questions
IP lawyers unpick a case heard at the CJEU’s Grand Chamber this week that could potentially create a new world for litigation in Europe
A lawyer who replied to a cease-and-desist letter with just two words has shown others how to deal with vexatious infringement allegations
The suggested rule change surrounding terminal disclaimers could ease the burden on defendants, but risks complicating prosecution strategies
Gift this article