Key Takeaways
- The Rospatent Chamber dismissed the application for early termination of legal protection of the trademark under certificate No. 780517, as the applicant failed to prove that the designation "ХОББИ ХОРСИНГ" had become a generic designation of goods or services of a certain kind.
- For the application of Subparagraph 6 of Paragraph 1 of Article 1514 of the Civil Code of the Russian Federation, it is necessary to confirm a set of criteria of genericness: long-term use of the designation by various persons, its perception by a wide range of consumers and specialists as a generic designation of specific goods or services.
- The materials submitted by the applicant (Wikipedia, publications on its own website, communities in the VKontakte social network) were deemed insufficient to confirm the loss of distinctiveness by the designation and its acquisition of generic status.
- The Chamber recognized the public organization's interest in filing the application; however, this fact alone does not relieve the applicant of the obligation to provide proper and sufficient evidence of the genericness of the designation.
- Arguments regarding bad faith acquisition of the exclusive right to a trademark fall outside the competence of Rospatent when considering an application under Subparagraph 6 of Paragraph 1 of Article 1514 of the Civil Code of the Russian Federation and are subject to resolution by a court or an antimonopoly authority.
Legal Analysis
Subject matter, standing, and the Article 1514 framework
The subject of the administrative proceeding was an application for early termination of legal protection of the trademark under certificate No. 780517 on the grounds of Subparagraph 6 of Paragraph 1 of Article 1514 of the Civil Code of the Russian Federation in connection with the alleged transformation of the verbal element "ХОББИ ХОРСИНГ" into a designation that has come into common use as a designation of goods (services) of a certain kind.
The Rospatent Chamber first examined the procedural prerequisite for consideration of the application — the existence of the applicant's interest. Based on the nature of the public organization's activities, the coincidence of its distinctive part of the corporate name with the disputed designation, as well as the use of the corresponding term in organizing events and developing a youth movement, the Chamber concluded that there was a legally significant interest in initiating the procedure for early termination of legal protection of the trademark.
In resolving the dispute, the Chamber proceeded from the content of Subparagraph 6 of Paragraph 1 of Article 1514 of the Civil Code of the Russian Federation, which provides for the possibility of terminating legal protection only in the presence of a proven fact of the designation losing its function as a means of individualization as a result of its transformation into a generic designation of goods or services of a certain kind. In doing so, the legal approaches formulated by the Presidium of the Supreme Arbitration Court of the Russian Federation were applied, according to which it is the applicant who bears the burden of proving the fact of the disputed designation having come into common use.
Criteria of genericness and assessment of the evidentiary record
The Chamber elaborated in detail on the criteria characterizing a generic designation. These include use of the designation by specialists, manufacturers, participants in commercial circulation, and consumers as the name of specific goods or services; use of the designation by various business entities in relation to homogeneous products; and the long-term nature of such use. Only the cumulative presence of the aforesaid circumstances indicates that the designation has lost its distinctiveness as a subject matter of exclusive rights.
Having examined the evidence presented, the Chamber concluded that it was insufficient. The materials posted in the Wikipedia encyclopedia were assessed in light of the legal positions of the Intellectual Property Court regarding the admissibility and reliability of internet evidence. It was stated that information from freely editable internet resources does not by itself confirm the existence of relevant legally significant circumstances. A similar approach was applied to information from social networks, which may be used only in conjunction with other objective evidence.
Additionally, it was established that there was no confirmation of the existence of goods or services officially designated as "ХОББИ ХОРСИНГ" in state classifiers, official dictionaries, standards, or the International Classification of Goods and Services. Moreover, the application materials did not allow for the determination of which specific goods or services the disputed designation had allegedly acquired generic character. The mere use of the relevant word combination by public associations or participants in thematic communities does not evidence its transformation into a generic designation of goods or services. The absence of the corresponding sport in the All-Russian Register of Sports was also taken into account in assessing the evidentiary record.
Outcome and the boundary with unfair competition claims
Based on the comprehensive assessment of the submitted materials, the Chamber concluded that there were no grounds provided for by Subparagraph 6 of Paragraph 1 of Article 1514 of the Civil Code of the Russian Federation for terminating the legal protection of the trademark. At the same time, it was explained that the applicant's arguments regarding the bad faith acquisition of the exclusive right fall outside the scope of the administrative procedure under consideration, since issues of qualifying the right holder's actions as unfair competition fall within the competence of a court or an antimonopoly authority. Consequently, the application was dismissed, and the legal protection of the trademark was maintained.
Commentary by Patent Attorney A.V. Leonov
The legal position under consideration is of substantial practical interest for trademark right holders whose marks contain designations used in developing areas of sport, culture, or public activity.
First of all, we draw attention to the fact that the mere widespread use of a certain term in mass media, social networks, or a professional community does not yet indicate that the trademark has lost its distinctiveness. In practice, the burden of proving genericness is extremely high. The applicant must confirm that the designation is perceived precisely as a generic name for specific goods or services, and not as the name of a movement, phenomenon, discipline, or community.
For right holders, this decision confirms the stability of legal protection of trademarks provided there is no objective evidence of their "genericide." At the same time, maintaining the registration does not mean the absence of other legal risks. If competitors believe that the registration was obtained in bad faith, corresponding claims may be brought in court or through an application to the antimonopoly authority. Consequently, trademark owners are advised to build an evidentiary record of the good faith in the selection of the designation and its use in civil commerce in advance.
For public organizations and other persons planning to challenge such registrations, this decision demonstrates the need to prepare a substantially larger body of evidence. In practice, it is recommended to use the results of sociological surveys, information from official classifiers, industry standards, regulatory documents, expert opinions of specialists in the relevant field, materials from professional associations, statistics on the use of the designation by independent market participants, and other objective sources confirming the loss of distinctiveness specifically in relation to specific goods or services.
Particular attention should be paid to the Chamber's conclusion regarding the distinction between the administrative procedure for termination of legal protection and disputes concerning unfair competition. An attempt to combine these grounds within a single proceeding, as a rule, does not lead to a positive result. Therefore, when developing a strategy for protecting a client's interests, it is recommended to determine in advance the appropriate means of legal protection and the competent authority authorized to consider the relevant category of disputes.
The prospects for similar cases will depend primarily not on the public notoriety of the disputed designation, but on the quality of the evidentiary record confirming its transformation into a generic designation of specific goods or services within the meaning of Subparagraph 6 of Paragraph 1 of Article 1514 of the Civil Code of the Russian Federation.
Related Materials
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