Key Takeaways
- Rospatent refused to satisfy the opposition filed by CHINA FIRST AUTOMOBILE GROUP CORP. and maintained the legal protection of the trademark “FAW” under Certificate No. 889521 with respect to goods of Classes 01 and 04 and services of Class 35 of the Nice Classification.
- The Chamber found the designations “FAW” under the contested certificate and the opponent's opposed trademarks to be identical or highly similar, but did not find similarity (homogeneity) of goods of Classes 01 and 04 of the Nice Classification with goods of Class 12 of the Nice Classification, for which the opponent's earlier trademarks are registered.
- The argument regarding the violation of Paragraph 8 of Article 1483 of the Civil Code of the Russian Federation was rejected due to the opponent's lack of proper standing (interest) and the lack of similarity between the trade name CHINA FIRST AUTOMOBILE GROUP CORP. and the disputed designation “FAW”.
- The Chamber concluded that there was no evidence that registration of the trademark could mislead consumers as to the manufacturer of the goods, since the Chinese company's activities relate to the production of vehicles, whereas the disputed registration covers auto chemicals, fuels and lubricants, and related goods.
- The submitted materials did not confirm the fame of the designation FAW and of the company CHINA FIRST AUTOMOBILE GROUP CORP. itself on the territory of the Russian Federation as of the priority date of the disputed trademark.
Legal Analysis
Subject matter and grounds for opposition
Rospatent maintained the legal protection of the trademark “FAW” for auto chemicals and fuels and lubricants despite the existence of earlier automotive FAW brands.
The Chamber of Rospatent examined the opposition filed by CHINA FIRST AUTOMOBILE GROUP CORP. against the grant of legal protection to the trademark “FAW” under Certificate No. 889521, registered in the name of OIL TRADE GROUP LLC with respect to goods of Classes 01 and 04 and services of Class 35 of the Nice Classification. The grounds for filing the opposition were the provisions of Subparagraph 1 of Paragraph 3, Paragraph 6, and Paragraph 8 of Article 1483 of the Civil Code of the Russian Federation.
The opponent referred to its earlier rights in the “FAW” trademarks registered with respect to goods of Class 12 of the Nice Classification, as well as the company's active presence on the Russian vehicle market. According to the opponent, registration of an identical designation for goods related to vehicle operation creates a risk of confusion and could create a false impression among consumers of a connection between the rights holder of the disputed mark and the Chinese automobile manufacturer.
Lack of standing under Paragraph 8 of Article 1483
When assessing the arguments regarding the violation of the right to a trade name, the Chamber proceeded from the fact that the application of Paragraph 8 of Article 1483 of the Civil Code of the Russian Federation presupposes the existence of similarity between the disputed designation and the protected trade name, the emergence of the right to the trade name prior to the priority date of the trademark, as well as the use of the trade name with respect to similar (homogeneous) goods or services.
The Chamber found that the trade name CHINA FIRST AUTOMOBILE GROUP CORP. does not contain the element “FAW” and is not similar to the contested designation. Additionally, it was indicated that a reference to the company's Russian representative cannot evidence a violation of rights to a trade name, since the exclusive right to a trade name is inalienable and cannot be granted to other persons for independent use. Consequently, the opponent was found to lack standing (to be an interested person) with respect to the ground provided for in Paragraph 8 of Article 1483 of the Civil Code of the Russian Federation.
Identity of designations vs. homogeneity of goods
When considering the arguments under Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, the Chamber found that the disputed trademark “FAW” is identical to the trademark under Certificate No. 300616 and has a high degree of similarity with International Registration No. 768150. The phonetic and visual characteristics of the compared designations were found to coincide.
However, the mere existence of identity of designations does not in itself constitute an obstacle to registration. In accordance with the legal position set forth in Paragraph 162 of the Plenum Resolution of the Supreme Court of the Russian Federation No. 10 dated April 23, 2019, the likelihood of confusion is determined by a combination of two factors: the degree of similarity of the designations and the degree of similarity (homogeneity) of the goods.
The key issue in the dispute was precisely the assessment of similarity (homogeneity) of the goods.
The Chamber conducted a detailed examination of the characteristics of goods of Classes 01 and 04 of the Nice Classification, covering auto chemicals, technical fluids, additives, lubricants and fuels, as well as goods of Class 12 of the Nice Classification, including automobiles, buses, trucks, engines and components.
Based on the analysis, it was found that the compared goods have different physical natures, different functional purposes, are produced by enterprises in different industries, and are distributed through different sales channels. Automobiles are complex technical durable goods, whereas auto chemicals and fuels and lubricants are consumable goods of mass demand.
Significant importance was attached to the difference in the conditions for purchasing the products. The Chamber noted that automobiles are purchased through dealer networks with the involvement of specialists and subsequent state registration, whereas auto chemicals and fuels and lubricants are sold through gas stations, retail chains and specialized stores. These circumstances preclude the possibility of consumers forming an impression of a single source of origin of the goods.
Consequently, despite the identity of the designations, the absence of similarity (homogeneity) of goods precluded the application of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation.
Fame, misleading character, and outcome
An additional argument of the opponent was the reference to the long-standing presence of the FAW brand on the Russian market and the existence of an official representative office. However, the submitted materials were found insufficient to confirm the company's fame among Russian consumers.
The Chamber indicated that the submitted information consisted primarily of Wikipedia materials, isolated statistical data, photographs of events and distributor documents. At the same time, there was no evidence of large-scale advertising campaigns, marketing research, sociological surveys or other objective data confirming the brand's fame among the relevant groups of consumers as of the priority date of the disputed trademark.
When analyzing the arguments under Subparagraph 1 of Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation, the Chamber proceeded from the fact that the designation “FAW” itself does not contain information about the manufacturer, properties or origin of the goods. Furthermore, the opponent did not prove that consumers perceive the designation “FAW” exclusively as an indication of the Chinese vehicle manufacturer.
Given the absence of similarity (homogeneity) of goods, insufficient evidence of the brand's fame, and the lack of proven likelihood of confusion, the Chamber concluded that there were no grounds for finding the disputed registration misleading to consumers as to the manufacturer of the goods.
Commentary by Patent Attorney A.V. Leonov
This decision is of significant practical interest for rights holders of automotive brands, as it demonstrates Rospatent's fairly strict approach to proving similarity (homogeneity) of goods beyond the registered Nice Classification class.
It should be noted that in this case, the opponent managed to prove effectively the maximum degree of similarity of the designations — the disputed mark was found to be identical to the earlier registered FAW trademarks. However, even this was insufficient to cancel the registration. The key factor was the absence of an evidentiary record confirming that consumers associate vehicles and auto chemicals with a single commercial source of origin.
For rights holders of well-known automotive brands, the decision contains an important signal: registering trademarks only for vehicles and components does not provide automatic protection in adjacent markets — motor oils, technical fluids, auto chemicals, fuels, and other related goods. In practice, we advise proactively building an extended portfolio of registrations in Classes 01, 04, 35 and other classes related to after-sales service of vehicles.
Particular attention is warranted regarding the issue of proving the fame of a designation. The Chamber effectively indicated that information about product supplies, participation in exhibitions, and the existence of an official distributor do not in themselves confirm a brand's fame among Russian consumers. In similar disputes, it is recommended to form a comprehensive body of evidence, including marketing research, advertising budget data, media coverage information, sociological survey results, and brand recognition statistics.
For persons registering designations in adjacent product categories, the decision confirms the possibility of the lawful coexistence of even identical designations in the absence of similarity (homogeneity) of goods and proven likelihood of confusion. At the same time, the use of designations that coincide with well-known automotive brands inevitably remains a high-risk area, because if a more convincing evidentiary record is presented, the outcome of a similar dispute could be the opposite.
The prospects for similar cases going forward will largely depend on the opponent's ability to prove market practice of brand extension into adjacent product categories and the existence of a stable association between the relevant goods and a specific vehicle manufacturer.
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