Court disputes: contestation of Rospatent’s decision

The Federal Arbitration Court dismissed the cassation appeal of Rospatent against the decision of the Moscow Arbitration Court and the Ruling of the Ninth Arbitration Appeal Court in Case No. А40-42354/11-12-370 issued in favor of our client. The decision of Rospatent to refuse legal protection to the trademark on the ground of Article 1483 (3) and Article 1483 (6) of the RF Civil Code was found unlawful. Rospatent’s refusal was based on the alleged likelihood of misleading consumers because of phonetic and semantic identity of the subject trademark with the earlier trademark registration. The Federal Arbitration Court indicated that the Recommendations for Application of the RF Civil Code regarding the trademark owner’s consent to registration of a similar trademark, approved by Rospatent’s Order No. 190 of December 30, 2009, were merely internal recommendations and not the rule of law subject to obligatory application. The Court found Rospatent’s construction of Article 1483 (3) of the RF Civil Code on the grounds of Article 1483 (6) of the RF Civil Code improper. The Court also indicated that Article 1483 (6) of the RF Civil Code contained no legal qualification such as similarity nearing identity. In its decision the Court stated that the refusal to register the trademark confusingly similar to the trademark of another owner registered for similar goods contrary to the consent of the owner of the prior registration was unlawful, because Article 1483 (6) of the RF Civil Code provided for such a possibility (an exception from the general rule). The client was represented in court by Elena Gorodisskaya, attorney-at-law, patent attorney.