In the light of the above, an article in The Economist was fun to read.

As Carl Oppedahl of e-trademarks-l nicely summarized it:

“DESIGNERS of fancy apparel would like their customers to believe that wearing their creations lends an air of wealth, sophistication and high status. And it does—but not, perhaps, for the reason those designers might like to believe, namely their inherent creative genius. A new piece of research confirms what many, not least in the marketing departments of fashion houses, will long have suspected: that it is not the design itself that counts, but the label.”

I couldn’t say it better in English.

BTW, guys at The Economist produce absolutely fascinating wall calendars – check them out! I got mine in the post couple of weeks ago and it keeps me amused ever since – so much fun to study all those tiny details, it’s always sets me in positive mood

See also:

Our client wrote:

Q: I have prepared an Intellectual Property Licence Agreement for my client from UK. It is proposed that a licence will be granted to a Russian company which will be for a business venture in Socci. The Agreement is in English. The Licensee will probably get legal advice in Russia and issues relating to Russian law may arise.. And I don’t know whether a translation of the Agreement will be required.

Do you do work of this nature?

A: Yes, we can do it. First, the Agreement can be signed not sooner than after the date of the registration – this is not available yet (but should be soon). Second, it does require to be translated in to Russian – we’ll have to submit three copies of the executed bilingual agreement to Rospatent, and pay fees.

Q: Is registration a prerequisite to achieving enforceability of the IP licence in Russia?

A: Yes.

Q: With regard to the translation, what happens if there is a discrepancy between the two versions? Can we include a provision which says that the English language version will prevail in the event of any inconsistency between the two versions?

A: You can do that, I think it will not prevent registration of the agreement in Rospatent, but as in the case of judicial
trial what court will decide, I do not know.

Q: Can we choose the jurisdiction and the applicable law?

A: Russian trademark will be only valid on the territory of the Russian Federation. What might be other jurisdictions? Legal relations connected with the Russian trademark will be governed by Russian legislation.

See also:

Some time ago there was a topic at INTA mailing list regarding Russian domains and tradmark filing – the topic was started by yours truly, so I’d like to share with you that I’ve gathered in the discussion.

My question was as following:

We file trademark applications in Russia on behalf of foreign companies,
and it occurred to me that it might be wise to register a domain in Russia simultaneously – to guard the mark being filed against trademark crooks.

Do you think it makes sense to register domains along with regular trademark registration?

Answers:

Yes, of course. And more importantly, if the domain name is not available then you might consider finding a new name to trademark.

We always make sure the domain is available and purchase it before we file for the trademark, just to make sure your scenario below doesn’t arise. You can always drop the domain later if you end up not using it.

When my clients apply to register trademarks, I always suggest that they may wish to register the TRADEMARK.com, TRADEMARK.co.uk, TRADEMARK.ru etc. domain name of countries where they will do business, or anticipate doing business. As you know, in most countries the cost of domain name registration is paltry compared to the cost of wrestling the domain away from a cybersquatter.

In that situation, I’d definitely say it would be a good idea to register
the DNs. They are probably very cheap, compared with trade marks.

In my opinion, that is an excellent idea if someone intends to conduct
business in Russia and needs the domain names.

And today I heard this bit of news:

Icann’s launch of domain names in non-Latin alphabets was applauded by bloggers this week. On Class 46, Sasha Yelnick provides some guidance to how the rules will work in Russia, where registration of new domains will start on November 16 and will be phased in gradually before being open to everyone in March next year.

Russian domains WHOIS (in English)

You can purchase necessary Russian domains directly at RU Center.

See also:

Since August we received only one inquiry for free search in Russian trademarks (as compared to tens of inquiries for regular Russian trademark search) – and results of the free search only cemented my opinion that free trademark search in Russia being total and complete waste of time and totally misleading.

Here is the story – rather short, and structured in the table for your convinience.

So, effectively, a $150 search saved out client US$735 in filing fees – cause if they’d file just based on the results of the free search, Russian Patent and Trademark Office would turn the application down due to the fact that confusingly similar application was already filed.

But that’s not all – now, the most intriguing part of the story…I wondered what company happened to file an application for exactly the same word in exactly the same class? I googled the company’s name (say, THECOMPANY LLC) up and found out that domain in the email address my client sent the inquiry from had been registered in the name of…THECOMPANY LLC.

Anyways, as my client mentioned in his followup email, all’s well that ends well.

–
Source: Russian patents blog

• (Updated) quick guide to trademark registration in Russia in 2009
• Some facts about Russian trademark search services
• Some of trademark applications we’ve filed in Russia recently
• Russian patent service says YES to trademarking (RU2007719479)
• Report: Foreign Trade Mark Registrations in Russia by Country and Companies for Two Months of 2008

Among recently filed trademarks are ones from
China (2 marks), Israel (2 marks), Indonesia, New Zealand (2 marks), South Korea (2 marks), Ireland, Thailand and Argentina.

And recently there were quite a few requests for trademark search in Russia originating from Japanese companies – I wonder whether it’s a sign of future expansion of Japanese companies into Russian market? They’d have to compete with Chinese though – because most of inquiries come from China.

Related posts:

• (Updated) quick guide to trademark registration in Russia in 2009
• Report: Foreign Trade Mark Registrations in Russia by Country and Companies for Two Months of 2008
• Russian TM watch service – 2 weeks of February
• A quick guide to trademark registration in Russia
• New “trademark registration in Russia” and “Document delivery service” pages

Associated Press says that “The Rospatent federal patent agency (aka Russian Patent Office) tells the RIA-Novosti news agency that the symbol was trademarked only as part of the company’s brand and has not been trademarked on its own.” – but AP, RIA-Novosti and Russian Patent Office representative are all wrong – Teterin INDEED has gotten rights for pure emoticon and not for a combined mark – take a look at RU2007719479 trademark certificate which clearly shows it:

smiley emoticon trademark russia

emoticon trademark is registered in three classes: 35, 38, 41 (so, actually, I can’t see how Superfone might sue McDonalds – anybody?)

The only problem is, Oleg Teterin is yet to pay registration fee (as of December 12, 2008).

Download RU2007719479 trademark certificate as PDF.

Source: Russian Patents blog

Related posts:

• Refreshed our Wall of Trademarks filed in Russia
• (Updated) quick guide to trademark registration in Russia in 2009
• New “trademark registration in Russia” and “Document delivery service” pages
• Case study: free trademark search in Russia
• Some of trademark applications we’ve filed in Russia recently

Daniel wrote:

I anticipate the client will want to know a bottom-line price,
so I would be much obliged if you could run me through, A to Z, on the costs of one
trademark registration in Russia (assuming of course it is not contested). (In
actuality, the client is seeking to register a number of trademarks).

Here is a (updated) quick guide to trademark registration in Russia.

Prior to filing trademark application in the territory of Russian Federation,
it is necessary to conduct search on identity and similarity in the official database of registered trademarks and filed applications.

This search includes a search of Russia’s Trademark Office records – both in Latin and Cyrillic symbols – of all registered, expired, canceled or abandoned word marks similar in sight, sound or meaning, INCLUDING trademark applications.

Cost of preliminary search is:
Preliminary Search within 7 days (including registered marks and filed applications)
- word/combined mark in 1 class: $150 ($40 per each additional class)

For example, if a company wants to register 3 trademarks in 2 classes each
(according to The Nice Classification of goods and services),
the search will cost
($150+$40) x 3 = $570

If the search proves that there is no obstacle to registration of your trademark, we enter 2nd phase – application filing.

Involved costs for this stage (including official fees):
$560 – Registration of one trademark in 1 ICGS class
$82 – for each additional ICGS class

For each additional mark applied for at the same time, we charge $50 less for registration:
$510 – Registration of one trademark in 1 ICGS class
$82 – each additional class in second or subsequent application

For example, if a company wants to register 3 trademarks in 2 classes each,
the filing will cost
($560 + $82) that’s for the 1st mark in 2 classes
+
($510 + $82)x2 that’s for 2nd mark in 2 classes
= $1826

To summarize: at the initial stage, a company shall transfer to us funds
1) to cover the search fees
and
2) to cover the filing fees.
In this example, to register 3 trademarks in 2 classes each, a company shall transfer
$570 (the search fees) + $1826 (the filing fees) = $2396

Futher on, upon submitting the application, within a month we’ll get the priority notice.
Substantive examination process at Russian PTO takes about 12 months.
Upon receiving notification of positive decision, a company shall pay trademark registration and issuance of certificate fees
$560 (incl. official fee and attorney fee).
In case of 3 trademarks, it’ll be $560 x 3 = $1680 (no discount here due to low attorney fee).

We will need from you following:
# Designation to be protected and Trademark type (word, logo, combined)
# A complete list of goods or services on which the trademark will be used (preferably grouped according to the Nice Classification)
# Information about applicant: official name, legal address, country (indicating a state)
# a Power of Attorney (we will provide the form)

Please do not hesitate to contact us if you need further assistance.

—
[Source: Russian Patents blog]

• Case study: free trademark search in Russia
• Some of trademark applications we’ve filed in Russia recently
• Russian patent service says YES to trademarking (RU2007719479)
• Some facts about Russian trademark search services
• A quick guide to trademark registration in Russia

They wrote:

“During the period of cooperation with another Russian ip firm, we have to conduct trademark search through a Hong Kong firm because Russian charges too much (they just wasn’t acquinted with Patents from RU back when…).
We pay RMB1000 (almost USD140) for one search either for a word mark or combined mark. If you could help conduct search (I suppose the search data should include the registered trademarks and pending applications), we don’t have to turn to the Hong Kong firm. That’ll be very convenient for us.

We just entrusted the Hong Kong firm to conduct two trademarks in Russia 7 days ago and we have given the search result to the client. We suppose they may confirm to file the applications in a few days.”

We asked this Chinese client of ours to send over the search report they got from that Hong Kong firm (you can see it here). They did, and I noticed two important things:

1) the search report does not contain trademark applications results
2) the search report does not list Cyrillic matches

So, in a word, the search report provided by a Hong Kong firm is in no way a complete report – it ignored transliterations into Cyrillic and it ignored Russian trademark applications.

Please beware of such Russian trademark search services originating from outside Russia – you’d better turn to assistance of firms based in Russia.

For you reference, here is two sample trademark search reports – one from RUPTO and another from Patents from RU.

Related posts:

• Case study: free trademark search in Russia
• (Updated) quick guide to trademark registration in Russia in 2009
• Some of trademark applications we’ve filed in Russia recently
• Russian patent service says YES to trademarking (RU2007719479)

I’m not making it a point to post here a scientifically precise data , so I do not have handy start-end date of the data range processed – roughly, it was 2 month period of 2008 (February-March).

As always, the leader is United States of America – US companies filed registration of 87 marks.

OK, let’s see…companies which already have strong presence in Russia have been firming it even more with registering more and more marks:

4 by jimi hendrix (hendrix,authentic hendrix,experience hendrix,jimi hendrix) – hey Jimi, nice to see ya in Russia you’d never been before to!
3 by Xerox (xerox premier,xerox office,xerox exclusive)
1 by Gillett (showerpod)
1 by Procter & Gamble (seduisante)
1 by Mary Kay (beauty that counts)
1 by Herbalife (h3o pro)
2 by Colgate (colgate enamel protect)
1 by IBM (stop talking start doing)
1 by Bell Corp (racer)
1 by Calvin Klein underwear
1 by Universal Studios (universal channel)

Some more well known names I can’t recall (or forgot to write down) owners of:
lucky strike (I’m aware that this was the essense of American Spirit, no? Welcome to wild wild Russia old fellow!)
tide absolute (is it P&G?)
lenor summer day (is it P&G?)
old spice (is it P&G?)
cadillac (is it P&G too? …just kidding)
pizza hut
red bull

One of the most prolific trade mark registrars from US is Illinois Tool Works - they’ve been filing hulluva lots of marks in Russia.
And just for fun, here’s unsorted list of marks recently filed by US companies:

subtile,silite,devtube,2ton 2 ton,tru-bond,dev pack,fasmetal,franklynn industries,diamondkote,korrosflex,plexus,spectrasensors,oster,
restasis,ma310,ma320,ultimatic,ma3940lh,enmotion,ultima,relayfax,nd’s space,bd aqueo premium,georgia-pacific,zingspot,florange, nutrafruit,st-246,siga,kf,korn/ferry international,equifax,densit,densiphalt,ducorit,eukanuba make a good dog great,hammer+sickle,
k&w,nars,ml material london,style & co,fomrez,intermune,aspire fund,pars aspire fund,fittipaldi,lamiglas,tsc,snp,quick descent,quick pump in,clover, speed,nars,fury,geographix,banana republic

28 marks:
Japan

About half of the filed for registration in Russia japanese marks belong to well known in Russia companies:
Honda: honda pilot
Matsushita: motion focus technology
Epson: epson photo fine premia
Citizen: citizen cxw,citizen cxh
Seiko: greenmethod
Nissan: nissan gt-r,skyline,silvia,350z, gtr,370z
Daiken: daiken
Mazda: mazda

The rest of the marks I never heard about – my guess is all of these are new, but I might be perfectly wrong and some of these might have a hundred years history back in Japan : oppen,prostaff,tough under force tuf display,chergui,crystal snow,smartmesh,fractal tube,sofy,y.s.park,style works,style & co,tools of the trade,capcom

21 marks:
China (I’ll comment on these marks in my next post re possible trade mark infridgement)

16 marks:
UK
Among these 16 marks there are few already well established in Russia names such as Sobranie (tobacco) and Bentley, and I can see Sela filing thru UK couple of marks: sela softwear and sela extreme. Funny thing is that the Sela company is based in Israel and all clothes are labelled “made in China”. Sela boasts a network of popular affordable sportwear/casual clothes shops throughout Russia.

14 marks:
France
I can see three main tendencies in filing French marks:
1) some come in Cyrillics only (4 out of 14) (hmm, same number as for German registrars…interesting coincidence)
2) distinctively French sounding cliches, like baron de francois, l’officiel voyage, meribelle or la revue des montres
3) names sounding as they could have been hailing from any other country, like malvin, wilfactin, betafact and pullman hotels and resorts

11 marks:
Netherlands (filed mostly by International companies, modifications of well-known in Russia marks: axe by Unilever,Fruittella, Dove (soap).
Germany (4 out of 11 were filed in Cyrillic only)
Spain (My favorite among eleven Spanish marks is contrabandista)

10 marks:
Swiss (there was one filed by Nestle and two filed by tobacco company)

7 marks:
Canada

6 marks:
Finland
Iran (funny thing is, none of the filed marks sound distinctively Middle Eastern – they are quite dumb machine generated names, like
ave, home plus,golrang, o2, cloritex, whitex)
Austria (mm packaging,teadit,supertrans,variotrans,ruslan,metago)
Italy (kmb bank, esseti, .normaluisa, albina, monurelle...)

4 marks:
Estonia (4 modifications of aeroc)
Taiwan (gainward,mali,onpin,eee box)

3 marks:
Korea (pace,hyper,myway) – former two by Samsung
India (rosart tz, socalm, tata nano)
Cyprus (viaggio italiano, tsar-kvas, bering)
Belize (some company decided to claim three kinds of ways – eastway, westway and freeway, both in Latin and Cyrillic symbols)
Denmark (two marks in Cyrillics and one of the most recognized Danish brands – bang & olufsen’s bioline)
Brasil (rhinobaby,penalty,stara)
Sri Lanka (montegree,nature’s harmony)
Luxemburg (diamond cellular,diamond elixir,nutri calm)
Sweden (macrolane,castorx capital,superfect)
Turkey (sunset swimwear,pilsa,monica ricci) – ok, we’ll be await for a line of pseudo-italian women fashion/swimwear.
Israel (tiny love,tosaf,gci)

2 marks:
Columbia (fussione, nuestra tele)
Ireland (cystystat, cystistat)
Mexico (esperanto (that’s tequila), la morena)
Norway (norlife, vikingomega3)

1 mark:
Hungary (coberon chronos)
Cayman Islands (rumalaya)
Seychelles (alessandro manzoni) – well, we’ll be await for yet another line of pseudo-italian shoes or clothes.
Indonesia (sakura)
Sultanate of Oman (amouage)
Qatar (qinvest)
Singapore (rock)
Portugal (topcer industria de ceramica lda)
Czech (thun hotel & restaurant)
Vietnam (ngoc linh)
Thailand (cpf)

Related posts:

• Russian TM watch service – 2 weeks of February
• Some of trademark applications we’ve filed in Russia recently
• Trademark matters: you need authorization from the Russian government to use the word “Russia” in your name
• A quick guide to trademark registration in Russia
• Case study: free trademark search in Russia

Companies like Coca-Cola, which values its brand name at $34 billion, take a very dim view of trademark infringement.
So I’d better say this in the very beginning of my post: “These materials are presented here for private educational, scholarly, and research uses”, OK?

While Russian bombers continue routine patrol missions over the Atlantic Ocean, we continue our routine trademark watch patrol missions over trademark applications recently filed with Russian Patent Office.

Yesterday, while sorting through our own database of Russian trademark applications, I came across a drawing which struck my mind as resembling something quite familiar…”wait, what was that?” I thought to myself… hmm, looks like a Coca-Cola’s BonAqua. To be certain, I retrieved all BonAqua marks from RUPTO database, and whoa!

Funny thing is, that RusAqua mark was filed the very next day after BonAqua sign got registered (but not the date it was published, so it’s a pure coincidence).

RusAqua

Filed 24/oct/2007 by company from Nizhny Novgorod (where Coca-Cola has one of the largest bottlers companies in Russia).

Bonaqua

Registered in Russia by Coca-Cola Company (US)
Priority date: 2004.10.25
Registration date: 2006.10.23
Published: 2006.12.12

So, the question is – is that RusAqua confusingly similar to BonAqua mark registered by Coca-Cola? We have to wait to see whether RusAqua makes it to Official Gazette (I’ll post update later), but anyways – what’s considered to be confusingly similar?

Coca-Cola is so big, it gets mentioned in all and every trademark infrigement case studies.
For instance, Crashcourse says following on regard of “Use for similar goods or services“:

The most common type of trademark infringement probably occurs when somebody else sells a product or service under a name that in some way resembles a registered trademark, and the products in question are the same or similar to the registered products.

The main criterion here is whether the name of the product is confusingly similar to the trademark. If they are, then potential buyers might accidentally buy the wrong product, and that is exactly the kind of situation that trademark law was designed to prevent.

Determining whether two things are confusingly similar is very complex. The label of the product in question must be compared to the trademark as a whole. Even if certain elements do correspond (for example the same type of graphical symbols are used, and the various elements are arranged in a similar way) the total impression might still be different. And it is the total impression that is important, because consumers will rarely pay attention to details when making a selection of a product.

Two products are considered similar if the public would be of the opinion that the services or goods in question are of the same company or of economically linked companies… Of course, the more famous a trademark becomes, the bigger the chance that the public’s opinion would change. The trademark Coca Cola for example appears on many different products, ranging from T-shirts to duvets. Given this information, the public would easily think that somebody selling pillows with the Coca Cola trademark on it had something to do with the Coca Cola company. Based on this, the trademark holder can act against such use of his trademark.

But even Coca-Cola itself cannot avoid trademark infrigement completely, the classic exmaple would it Coca-Cola Zero launch campaign. No, I’m not talking about famous viral video “Coke sues Coke Zero for Infringement”, although it’s pretty funny by itself (if you dont get it, this is a joke, Coke is owned by the same people who make Coke Zero. They wouldn’t sue themselves, even for such a funny thing as “taste infringement” might be

I’m talking about Zero – there was dispute over the Zero name. As mentioned in Wikipedia, in Norway the Brewery Ringnes claimed that Bryggeriforeningen owns the right to Zero name. The Zero name was used on a non alcoholic beverage from 1972 to 1996.

So despite of being one of the most expensive trademarks in the world and succesfully catching up with recent trends (like becoming Coca-Cola 2.0 and supposedly “releasing” their trademark for Second Life use), it cannot completely secure itself against trademark pirates popping up in third world countries like Russia (but something tells me what Russia is not that much thrid-worldy anymore…My guess is what Russian market is one of the largest for Coca-Cola).

Coca-cola is yet to turn to our service, but they’d better not to wait too long

PS re copyright infringement and most expensive trademarks in the world… Wired recently blogged on quite a thought provoking theme “Is Copyright Infringement So Bad?” – “Where do we draw the line between artistic freedom and copyright infringement? As of now, and this is undeniable, those lines are drawn by legislators, and those legislators are paid by rich people, and copyright owners are rich.” Take a look at it.

See also: