Key Points
- Application of Article 1483(9)(1) of the Civil Code to verbal elements of copyrighted works: The Board of Rospatent confirmed that a word designation constituting the name of a character from a work of art (“KUROMI”) is protected against trademark registration without the consent of the right holder, even where the contested mark lacks a figurative element, provided that recognition of the name as part of the work is established.
- Criteria for proving notoriety of a copyright object in the Russian Federation: To establish notoriety of a work in the Russian Federation, a combination of evidence is deemed sufficient, including: existence of deposited rights in foreign jurisdictions; evidence of commercial circulation of goods bearing the designation; availability of audiovisual content on Russian-language platforms; and results of sociological surveys demonstrating recognition above a 20% threshold.
- Distinction between grounds under Articles 1483(9)(1) and 1483(3)(1) of the Civil Code: The Board drew a clear distinction between protection of a copyright object as such and protection against misleading the consumer as to the manufacturer: for the former, recognition of the character's name is sufficient; for the latter, it is necessary to prove a stable associative link between the designation and a specific commercial entity as the source of goods.
- Assessment of evidentiary value of sociological surveys: In assessing the relevance of expert reports, priority is given to methodology reflecting circumstances as of the date of filing the opposition (Article 1512(2) of the Civil Code), rather than the priority date of the contested mark, provided that the sample and representativeness of the data are appropriate.
- Procedural status of an “interested party” in administrative trademark disputes: The applicant's standing is determined not by the formal existence of rights registered in the Russian Federation, but by the actual existence of exclusive rights in the opposed object and demonstrated use in relation to similar goods, supported by documentary evidence.
Legal Analysis
Within the framework of administrative proceedings on an opposition against the grant of legal protection to trademark registration No. 937379 “KUROMI,” with a priority date of 07 October 2022, examined in accordance with Part IV of the Civil Code of the Russian Federation and the applicable Rules of the Chamber for Patent Disputes, the Board of Rospatent formulated a number of legal positions of significance for enforcement practice in intellectual property law.
The central issue in resolving the dispute was the application of subparagraph 1 of paragraph 9 of Article 1483 of the Civil Code, which prohibits the registration of designations identical to the title of a work of science, literature, or art known in the Russian Federation, or to a character or quotation from such work, without the consent of the right holder, provided that rights in the relevant work arose prior to the priority date of the applied-for trademark. Pursuant to paragraph 9, fifth subparagraph, of Article 1483 of the Civil Code, these restrictions also extend to designations confusingly similar to such objects.
Recognition of verbal character names and scope of protection
In establishing the relevant circumstances, the Board proceeded from the need for a comprehensive assessment of evidence confirming both the creative nature of the verbal element “KUROMI” and its recognition by Russian consumers as the name of a character from the anime series Onegai My Melody. In this regard, it was noted that the absence of a figurative component in the contested mark does not preclude application of Article 1483(9) of the Civil Code, since the protectability of a verbal element as part of a work of art is not contingent upon its visual reproduction within the registered designation.
Notoriety evidence: cumulative approach
With respect to proving notoriety of the copyright object in the Russian Federation, the Board applied a cumulative approach, assessing in combination:
(a) certificates of copyright deposit issued by competent authorities in Japan and the United States, covering both figurative and verbal elements of the work; (b) evidence of commercial circulation of goods bearing the designation “KUROMI” on the Russian market prior to the priority date, confirmed by screenshots of online marketplaces, private investigation reports, and sample customs declarations; (c) availability of audiovisual content featuring the character on Russian-language digital platforms; (d) results of a sociological survey conducted by VCIOM, demonstrating recognition above the 20% threshold.
Particular attention should be given to the Board's position regarding the evidentiary value of sociological surveys. Pursuant to Article 1512(2) of the Civil Code, in opposition proceedings, account is taken of circumstances existing as of the date of filing the opposition, rather than the priority date of the contested designation. This approach, applied to the evaluation of the VCIOM report conducted in 2024, made it possible to properly establish the character's recognition among Russian consumers despite the later date of the survey.
Article 1483(3)(1): stricter evidentiary threshold
With regard to the application of subparagraph 1 of paragraph 3 of Article 1483 of the Civil Code, which prohibits registration of designations capable of misleading consumers as to goods or their manufacturer, the Board articulated a stricter standard of proof. Establishing misleading character requires more than recognition of the designation itself; it requires evidence of a stable associative link between the designation and a specific commercial entity as the source of goods.
In the absence of documented evidence regarding sales volumes, advertising intensity, and duration of use by the right holder in the Russian Federation in respect of Class 28 goods, the argument based on Article 1483(3)(1) was found unsubstantiated.
Thus, the decision reflects a differentiated legal qualification of grounds for opposition: protection of a copyright object as an intangible asset is ensured upon establishing its recognition, whereas protection against misleading use requires proof of commercial reputation and market identification of the right holder.
Commentary by Patent Attorney A.V. Leonov
Practical implications for rights holders and market participants
The present decision of the Board of Rospatent establishes an important precedent concerning the protection of characters from works of art against unauthorized trademark registration. Practitioners should note the following:
1. Broad interpretation of the protected object under Article 1483(9)(1)
A recurring question is whether protection extends to a character's name where the contested mark does not reproduce its visual image. This decision answers in the affirmative: if recognition of the verbal element as a character name (rather than a common lexical unit) is established, such designation may be successfully challenged. Rights holders are advised to emphasize the semantic link between the word element and the work, supported by linguistic expert opinions and search analytics.
2. Formation of evidence of notoriety
A key success factor is a comprehensive evidentiary approach. The Board considered not only formal copyright deposits but also “soft” evidence: availability of content on video platforms, media references, and consumer reviews on marketplaces. In practice, this means systematically documenting the character's presence in the Russian informational and commercial environment.
3. Differentiation of risks across legal grounds
The rejection of the misleading argument demonstrates a higher evidentiary threshold for Article 1483(3)(1). Rights holders should prepare parallel evidence both for copyright protection (recognition) and for commercial reputation (association with a specific source), including supply volumes, advertising budgets, and geographic scope of sales in the relevant Nice Classes.
4. Prospects for similar disputes
This legal position is likely to be replicated in the practice of Rospatent and the Intellectual Property Court of the Russian Federation, particularly in cases involving anime characters, gaming universes, and media franchises. At the same time, success will depend directly on the quality and completeness of evidence demonstrating notoriety as of the priority date. Post hoc sociological surveys may be accepted, but only where their methodology is robust and the sample representative of the relevant consumer group.
Related Materials
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