21 DEC 2017

The owner of the brand White Horse could not prohibit the use of TM Black Horse in Russia

The Сhamber for patent disputes of "Federal Institute of Industrial Property" of Russia has upheld the decision of Rospatent on registration of the brand Black Horse by "VTM establishment" from Liechtenstein. The initiator of the proceedings was British Diageo — owner of the brand whiskey White Horse.

Rospatent has registered the trademark Black Horse in March 2017.

In this case, Diageo believes that it is similar to their TM: logical stress in both names have the word "horse", and they belong to one group of products – alcoholic beverages.

However, the defendant believes that the word "white" isn’t secondary in the title, and "black horse" can be translated into Russian language as a stable phrase – "dark horse" (“wild card”). In this case TM Black Horse was registered for vodka, and White Horse for whiskey.

The Chamber on patent disputes has come to the conclusion that the words "white" and "black" have different semantic meaning and cause various images of horses of different colors. Also, the products have different production technology, the price category, the type of material from which they are made, as well as different target audiences.