PROTECTION OF WORD MARKS IN LATIN AND CYRILLIC LETTERS IN RUSSIA
In the course of registration of word marks of foreign firms in Russia there often arises a question if protection of a word mark in Latin letters also protects the same mark in Cyrillic letters. On the whole the answer is positive, but there are nuisances that should be taken into account in developing the trademark protection policy. The question actually is whether there is a need to register a foreign mark in Russia in Cyrillic transliteration along with the original Latin form and whether absence of protection in Cyrillic script evokes disadvantages.
On the whole it is advisable to analyse each particular case separately. The degree of protection will very much depend upon the mark itself, its form, number of words and letters, goods and services covered, peculiarities and usage. The following factors should be considered. Many foreign firms register the word marks only in Latin alphabet and think it quite sufficient. Such point of view is well grounded. First, it is acknowledged that as a rule the names of foreign firms, especially the easily recognised ones, might be protected only in Latin form. There is usually no need to register the name in Cyrillic letters.
Further, in the trademark examination and trademark infringement cases the marks under study are compared with the similar marks both in Roman and Cyrillic characters. So, if for a filed word mark in Cyrillic form there is already registered a similar mark in Latin form, the registration of the newly filed Cyrillic mark is denied.
If a word in Roman letters is registered, use of the counterpart word in Cyrillic script in repect of the same or similar goods and services would be considered infringement of the protected mark. But this refers only to exact literal transliterations; and there are cases when registration of the mark in Cyrillic form is necessary. If there is used a word in Cyrillic which differs from the exact transliteration of the Roman word by at least one letter or bears a special style in Cyrillic font, then it might be difficult to prove that there is an infringement. Hence, if a mark is protected not only in Roman, but also in Cyrillic counterpart form, the protection would be much stronger.
Certain consumer goods make both registrations almost obligatory. For example, names of drugs and medicines are usually registered both in Latin and Cyrillic letters.
Though it is customary to use the names of drugs in Latin characters and the owner would be able to prohibit use of the Cyrillic counterpart, still it would be better to register the latter also. The Cyrillic form of a mark is far more easily comprehended and memorised by the Russian customers. For this very reason the Cyrillic form might be used by a possible infringer. It is the Cyrillic form of the word that should be (and usually is) used in advertising and marketing, printed on the packages, etc. Finally, one has to ensure solid rights to use the (R) sign along with the mark in Cyrillic.
Also it should be born in mind that several Russian databases on medicines offered for sale, including those freely accessible through Internet, use only Cyrillic forms of names of drugs. Even if compilers of the data base decide to include the drug registered only in Latin form into the database, they will have to transliterate the word themselves. And the customer working with the database might use another word form and consequently, not find and not buy the medicine. For all these reasons many firms register marks not only in Latin, but also in Cyrillic characters. Such protection is much more reliable.
Our investigations of the practice of trademark protection for drugs and pharmaceuticals in Russia show that a great number of names of drugs, produced by foreign firms, are registered and used in Cyrillic form along with the Roman one. They seem to be the majority.
So, for the drugs and pharmaceuticals there is no question at all: it is advantageous to register the marks in Cyrillic form also. And for many other consumer goods it is also advisable.
Source: PastSGr
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Filed under: registration of trade marks in Russia
