An application for a trademark no 2016739384 was filed by Chicago, a Russian beauty parlour from S-Petersburg.
The patent office refused registration arguing that the claimed designation had a word element, Chicago, which is a geographical indication, the city of Chicago in the state of Illinois in the Midwestern region of the United States which may be understood as the place of manufacture of goods and services. This, however, is not true because the applicant is resident in S-Petersburg.
The applicant appealed the patent office's decision at the Chamber of Patent Disputes. The board of the chamber examined the appeal and noted that the word element Chicago was claimed as part of the claimed designation where the word combination beauty parlour is also present. Hence, consumers will perceive it as a beauty parlour in the first place. At the same time, the services rendered in beauty parlours are not services which depend on geographical location. Services which rely on geographical location cannot be rendered at a distance and therefore the claimed designation will not be of associative character in respect of those services.
The collegium of the Chamber of Patent Disputes noted that not every geographical name will be perceived by the consumer as an indication of the place where the manufacturer of goods (services) is located. Some geographical names are understood to be invented names and consequently may be registered as a trademark.
The claimed designation cannot be considered as pointing to a specific place of providing services or capable of confusing the consumer. Hence, the Chamber of Patent Disputes saw no reason to refuse registration of the trademark in Classes 35 and 44.
Nevertheless, the decision to register CHICAGO as part of the trademark raises questions. The law does not impose limitations on the creativity of people wishing to register a company name. Only the word Russia, Russian Federation and derivatives thereof must receive special permission. The names of foreign countries cannot be included either, but otherwise people's imaginations are allowed to roam freely. Chicago is famous for many things, but not for its hairstyles. There is no prohibition in the law regarding the registration of whatever comes to mind, but the name Chicago used in the name of the company inevitably creates associations with something that might be connected to Chicago. The owners went one step further and filed a trademark application for a trademark where the word Chicago stands out. The examiner at the patent office was wise to reject the application. The Chamber of Patent Disputes was less inquisitive. The owners of the company are not patriotic, at least in relation to their own city. O tempora! O mores!
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Vladimir Biriulin |
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