The world-famous cocktails can not be registered as TM

One of the main goals that must be executed by each TM is to cause the goods or services of one manufacturer to stand out from the goods or services of others. According to the requirements of the legislation, that TM, which does not possess the distinctive capability, just simply can not pass the registration procedure. So, well-known names, abbreviations, images, etc. can not become a trade mark. Though, sometimes some signs may seem as original and exotic ones, e.g. a name of an alcoholic cocktail, first of all, TM's functions have to be considered. Rospatent canceled the registration of the TM “Chernyiy Russkiy” (transliteration of Russian word in Roman script; the meaning is “Black Russian”) in the name of the Dutch company Berklee Capital S.A. The Supreme Court of the Russian Federation upheld the decision of the patent authority. Berklee Capital S.A had registered TM “Chernyiy Russkiy” in respect of 33 class for goods and services of Nice Classification (alcohol drinks, cocktails). On April 20, 2015 another Dutch company (TSN Brands Ltd.) had filed a notice of opposition of the legal protection for the disputed trade mark. Rospatent upheld such notice and decreed that sign “Chernyiy Russkiy” is just the title of a well-known cocktail and it is incapable to differentiate the products of this manufacturer (Berklee Capital S.A) within the market. Berklee Capital S.A terned to the Court for Intellectual Property Rights (CIP) with a request for cancellation of Pospatent's decision. However, the Court reached the same conclusions driving by following. Cocktail Black Russian/“Chernyiy Russkiy”:
  • is known in the world since the middle of the last century (in the Russian Federation since the 1990s);
  • is included in the International Bartenders Association's list of classic cocktails;
  • is also a part of the compulsory program of bartenders' training.
These facts have provided the basis for the final decision: the sign “Chernyiy Russkiy”, that is Black Russian, is deemed by consumers as a specific type of cocktail, which has a special recipe (based on vodka and coffee liqueur) and constitutes a sign for goods of a particular type. Consequently, it does not possess distinctive capacity. Thus, whether they are “Black Russian”, “Green Mexican” or “Bloody Mary”, trademark registration under such verbal symbols is impossible.