TM vs Well-known name: the first rule to remember
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Famed names, pseudonym, portraits, images, etc. are often the targets for strong headed applicants who want to use them in the capacity of their own TM. Such right holder is expected to acquire a number of successive achievements: his TM is a known sign, so he is recognizable within the market, so most probably he might receive greater economic benefit. However, not everything in the garden is rosy.
Indeed, the Supreme Court of the Russian Federation upheld the decision of the Presidium of the Court for Intellectual Property Rights (CIP), founded for Rospatent and Elena Gagarina.
Elena Gagarina is a daughter of the wold's first cosmonaut Yuri Gagarin. In 2013 she started the 4-year fighting for the cancellation of the TM “Gagarinskiy torgovo-razvlekatelnyiy tsentr” (transliteration of the sign in Russian in Roman script; the meaning is “Gagarin's SEC”), which is owned by LLC “SEC “Gagarinskiy”.
Rospatent had considered the Gagarina's notice of opposition of the legal protection for the disputed trade mark two times.
In 2013, Garanina's notice of opposition was not satisfied: Rospatent considered that the sign “Gagarinskiy torgovo-razvlekatelnyiy tsentr” indicates only the geographical location of the shopping center. It was really located close to Yuri Gagarin Square in Moscow.
After that, the Soviet Union hero's daughter terned to the court. Two instance of CIP took the side of the claimant and caused the Rospatent to reconsider Garanina's notice of opposition.
For a second time, the patent authority recognized the registered TM as illegal according to the Russian legislation standards: “No trademark registration shall be granted to signs identical to: ... 2) the name, pseudonym or a designation derivative from them, a portrait or facsimile of a person known in the Russian Federation as of the application filing date, without the consent of that person or his heir” (Part 9 Article 1483 “Grounds for Refusing State Registration to a Trademark”, the Civil Code of Russian Federation).
In turn, the LLC “SEC “Gagarinskiy” had not contact Elena Gagarina with a review to obtain her consent to use the name of her father in their TM.
LLC “SEC “Gagarinskiy” tried to resume his trademark right and took a legal action, but such attempts broke down.
As can be seen from the above, first and foremost needed to be remembered: in order to register a TM, claimant must obtain the consent of the person whose name, pseudonym, etc. will be used in the sign. Otherwise, TM might not pass the registration procedure or it might be canceled upon the application of such a person/its heir later.