'Made in' or not 'made in'? Analyzing trademark examination practice in Russia

If you are going to register a trademark in the Russian Federation, you should be aware that the Russian Patent Office provides very strict requirements not only for signs filed for registration, but also for the list of goods and services claimed.

Lately, rather frequent provisional refusals of trademark registrations are being observed in the territory of the Russian Federation. The reasons for these refusals vary from the presence of similar/identical trademarks already registered for similar goods and services to misleading consumers as to the products or place of goods manufacture.

As the practice shows, the experts started to refuse in trademark registration on the grounds that the claimed list of goods and/or services for which the application for trademark registration is filed does not comply with Art. 1492 of the Civil Code of the Russian Federation, under which the trademark application must contain a list of goods and services classified in conformity with the International Classification of Goods and Services (ICGS). It, therefore, follows that any deviations from this Classification shall be deemed invalid since they ‘supposedly’ contradict the current legislation of the Russian Federation.

However, it should be noted that there exists a widespread procedure of trademark registration for goods manufactured in a certain geographic region (country or city). Such information is frequently indicated in the list of goods/services for which the application for trademark registration is filed. Such registrations generally apply to the goods like cosmetics, perfumes and alcoholic beverages, e.g. ‘cosmetics from the USA’, ‘perfumes made in France’, whiskey produced in Scotland’, etc. The above mentioned wording in the list of goods/services is particularly justified in case the trademark itself directly indicates a particular place of goods origin (e.g. CX CHARMEX OF SWITZERLAND, Swiss Complexion, FRANCE FEEL, MONETTE PARIS, etc.).

In such a way, as thought being guided by the provisions of the Russian laws on Intellectual Property, the Russian Patent Office (Rospatent) has recently refused the trademark registration on the grounds that the wording stated in the 3-class ICGS list (namely, ‘all the aforesaid goods are from the USA’) does not comply with the law.

The above Rospatent’s position is definitely unreasonable due to the following arguments.

As it is known, the International Classification of Goods and Services has been established by the Nice Agreement for registration of trademarks and service marks. Each of the Contracting Parties to the Nice Agreement when registering trademarks is obliged to follow the Nice Classification as the main (single) or auxiliary classification, and provide the ICGS class numbers in the list of goods / services for which the trademarks are registered in all trademark registration official documents and publications.

Goods and services are to be grouped by classes and indicated in the list, if possible, in conformity with the relevant classes under the Nice Classification (according to par. 2 of the Methodical Recommendations on Making the List of Goods and Services for which Trademark and Service Mark Registration is Applied For, approved by the Order of the Russian Agency for Patents and Trademarks on March 2, 1998, No. 41). Another Rospatent’s recommendation suggests that the names of goods and services defined in the list should correspond to the names contained in the Nice Classification where it is possible. Thus, giving specific names to goods and services according to the Nice Classification is only advisable but not obligatory. Moreover, the departure from the ICGS names cannot be a ground for refusal in trademark registration.

In addition, the practice of preceding trademark registrations in the territory of the Russian Federation also disproves the Rospatent’s recent reasoning for the impossibility of trademark registration with the ‘... made in ...’ and ‘... are from ...’ wordings to be included in the list of goods and services.

All of the aforesaid may be confirmed by the examples of trademarks obtaining registration approval in the Russian Federation despite the presence in the list of goods and services of the ‘... made in ...’ or ‘... are from ...’ wordings, namely, ‘Pöschl'S Casablanca’ (IR No. 537154), “Swiss Complexion” (IR No. 952754), “EXCELLIENCE ARNAUD PARIS” (IR No. 1189459), “30 MONTAIGNE MAISON CHRISTIAN DIOR PARIS” (IR No. 851432), “ROSABOTANICA BALENCIAGA PARIS” (IR No. 1191846), “ice swiss” (IR No. 1066052), “COMTE DE FRANCE” (IR No. 1198278), “BALZERS” (IR No. 1007427), “Küppers-Kölsch” (IR No. 312163), etc.

To sum up, trademark registration for the list of goods / services including the “... made in ...” or “... are from ...” wordings is still quite common in the Russian Federation. Consequently, any refusals in registration of trademark with such wordings will be a priori illegal and contrary to law and established practice.

Oksana Padokh, IPStyle International Department Lawyer