Key Points
- Differentiated approach to similarity assessment: The Board of Rospatent differentiated the legal outcome of application No. 2024781620 for “JURASSIC WORLD REBIRTH” across Nice Classes: refusal was upheld only in respect of Class 41 services (due to similarity with trademark “REBIRTH” No. 855182), while registration was allowed for goods in Classes 25 and 28 (due to absence of similarity with the mark “ребинт” No. 860149).
- Priority of identity of a key element over series character: The applicant’s argument regarding the dominant role of the acquired distinctiveness of the “JURASSIC WORLD” element was rejected; the Board held that the identical and semantically significant element “REBIRTH,” fully incorporated into the opposed mark, determines a likelihood of confusion overall, notwithstanding the presence of additional verbal components.
- Irrelevance of non-use at the examination stage: It was established that arguments concerning non-use of the cited mark, as well as information regarding the forthcoming liquidation of its proprietor (GR-Group Development LLC), are not to be taken into account when assessing compliance of the applied-for designation with Article 1483 of the Civil Code of the Russian Federation, as examination is based on the formal status of registration rather than actual market use.
Legal Analysis
Assessment of registrability of composite marks containing identical elements: commentary on decision in opposition No. 2024781620
In administrative practice concerning intellectual property disputes, particular relevance attaches to the criteria for distinguishing composite trademarks incorporating both widely recognized series elements and elements identical to protected marks of third parties. The subject of this analysis is the decision of the Board of Rospatent on the opposition filed by Universal City Studios LLC against the refusal to register the designation “JURASSIC WORLD REBIRTH.”
Methodology of comparative analysis and similarity assessment
Pursuant to paragraph 6 of Article 1483 of the Civil Code of the Russian Federation (hereinafter – the Civil Code), designations that are confusingly similar to earlier registered trademarks in respect of identical or similar goods and services are not eligible for registration. Applying the criteria set out in paragraph 42 of the Rules for drafting, filing and examination of documents (approved by Order No. 482 of the Ministry of Economic Development of Russia), the Board conducted a differentiated assessment of similarity based on phonetic, visual, and semantic factors.
With respect to the cited mark No. 860149 (“ребинт”), the absence of similarity was substantiated by fundamental differences in phonetics (different pronunciation of the Latinized “REBIRTH” and the Cyrillic “ребинт”), graphical representation (different alphabets, case, and the presence of a figurative element), and the diminished role of the semantic factor due to the lack of lexical meaning in the cited designation.
A different legal qualification was applied in comparison with mark No. 855182 (“REBIRTH”). The Board found that the complete phonetic and graphical incorporation of the verbal element “REBIRTH” into the applied-for designation, combined with identical semantic meaning (“rebirth”), creates an associative link between the marks as a whole. The applicant’s reliance on the acquired distinctiveness of the prefix “JURASSIC WORLD” was deemed unpersuasive, as, in accordance with established case law of the Intellectual Property Court of the Russian Federation (see decisions in cases No. SIP-658/2021 and No. SIP-210/2017), the presence of a fully identical verbal element constituting an independently protected designation precludes a finding of dissimilarity.
Limits of considering factual circumstances and procedural aspects
A significant aspect of the decision is the delineation between substantive legal grounds and factual circumstances for refusal of registration. The applicant’s arguments based on the non-use of the cited mark, as well as on information regarding the impending removal of its proprietor from the Unified State Register of Legal Entities, were rejected as irrelevant to the subject matter of proof within the administrative procedure for examining absolute and relative grounds for registration. It is emphasized that, at the time of consideration of the opposition, the cited mark retained a valid legal status, which mandatorily requires its protection to be taken into account.
Conclusions on legal protection
Thus, the Board’s legal position demonstrates a balance between protecting the interests of proprietors of well-known franchises and ensuring the stability of the trademark register. Registration of the designation “JURASSIC WORLD REBIRTH” was permitted only to the extent that it does not infringe exclusive rights of third parties (goods in Classes 25 and 28), whereas, in respect of Class 41 services, priority was given to the earlier right in the mark “REBIRTH,” in line with the principle of legal certainty and the prevention of confusion in commerce.
Commentary by Patent Attorney A.V. Leonov
Practical implications of the decision: strategy for protection of composite marks
A.V. Leonov, Russian patent attorney, expert in intellectual property protection
The present decision of the Board of Rospatent establishes an important precedent for proprietors of international franchises seeking to expand their trademark portfolios within the Russian jurisdiction.
Key business risks
The “umbrella brand” illusion: Practice confirms that the existence of a series of marks sharing a common element (in this case, “JURASSIC WORLD”) does not create automatic immunity for new composite designations. If the novel element of the name (“REBIRTH”) is identical to a third party’s registered mark, the risk of refusal under Article 1483 of the Civil Code remains critically high, particularly in core Nice Classes.
Class-based fragmentation of protection: Businesses must be prepared for scenarios where a trademark is registered only partially. In the present case, the company obtained protection for merchandising (Classes 25 and 28) but lost exclusivity for use of the designation in the field of entertainment services (Class 41), thereby enabling lawful market presence of third parties under similar designations in adjacent sectors.
Recommendations for rights holders
- Preventive clearance: At the naming and filing stage, it is essential to conduct comprehensive searches not only for identical but also for similar designations, with particular attention to individual verbal elements that may coincide with protected marks of third parties.
- Opposition strategy: References to global brand recognition and acquired distinctiveness, while relevant, should not constitute the sole line of defense. They should be supplemented with evidence demonstrating the absence of a real likelihood of confusion (e.g., differences in distribution channels and target audiences); however, as practice shows, the formal priority of registration often prevails.
- Register monitoring and invalidation actions: Non-use of a cited mark or liquidation of its proprietor does not automatically remove obstacles to registration. To neutralize such “blocking” marks, separate proceedings must be initiated: filing for early termination of rights due to non-use (Article 1486 of the Civil Code) or challenging the registration before the Chamber for Patent Disputes.
Prospects for litigation
The likelihood of successfully challenging such decisions before the Intellectual Property Court of the Russian Federation remains moderate. The court generally adheres to a formalistic approach to similarity assessment, where the presence of an identical dominant element is often considered sufficient to establish a likelihood of confusion, irrespective of the reputation of other elements of the mark.
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