Key Points
- Absence of similarity of goods and services: The Board of Rospatent established fundamental differences between transport and logistics services (Nice Classes 35, 39) and goods for packaging/sealing (Nice Classes 17, 22). Differences in relevant consumers, channels of trade, and functional purpose excluded the likelihood of confusion as to commercial origin.
- Dissimilarity with an international mark: The contested word mark "LAF" was found dissimilar to a mark containing Chinese characters (International Registration No. 1512514) due to graphical and phonetic differences; the characters were perceived by the Russian consumer as a figurative element rather than a transcription of "LAF."
- Inapplicability of Article 6-septies of the Paris Convention: The prohibition on registration by an agent without the principal's consent was not applied, as confusing similarity was not established and evidence of registration in the country of origin for the disputed services was absent.
- Failure to prove misleading nature: Arguments under Article 1483(3) CC RF were rejected due to insufficient evidence that the opponent had provided similar services in Russia before the priority date.
- Procedural aspect: Rospatent noted that abuse-of-rights issues under Article 10 CC RF fall within court competence, notwithstanding that legal protection had already been terminated by the IP Court on other grounds.
Legal Analysis
Subject matter of analysis: determination of the legal position of Rospatent when examining an opposition against the grant of legal protection to a trademark in the context of previously concluded agency agreements and existing court decisions.
Within the administrative proceedings initiated by Qingdao Laf Technology Co., Ltd., the validity of legal protection of trademark No. 817433 ("LAF"), registered in the name of Europack LLC, was examined. The key issue was compliance of the contested designation with Article 1483 of the Civil Code of the Russian Federation and Article 6-septies of the Paris Convention for the Protection of Industrial Property.
Assessment of Similarity of Signs and Similarity of Goods/Services
In applying paragraph 6 of Article 1483 CC RF, the Board conducted a differentiated analysis of two opposed marks relied upon by the applicant. With respect to International Registration No. 1512514 containing Chinese characters, the Board found no likelihood of confusion with the word mark "LAF."
This conclusion is based on paragraphs 42-44 of the Rules for drafting, filing, and examination of trademark applications. For the average Russian consumer, such characters function as a figurative element, while their phonetic transliteration ("LANGFU") is not identical to "LAF."
With respect to mark No. 772961 containing the element "LAF," graphical and phonetic similarity was established. However, the decisive factor was similarity of goods and services. Under paragraph 45 of the Rules and Resolution No. 10 of the Plenum of the Supreme Court dated 23 April 2019, similarity depends on whether the consumer may assume common commercial origin.
The Board concluded that services in Classes 35 and 39 (logistics, transportation, freight forwarding) and goods in Classes 17 and 22 (packaging materials, rubber products) have different functional purposes, channels of trade, and consumer segments (primarily B2B in distinct industries). In the absence of evidence that logistics companies also manufacture packaging materials, dissimilarity was established.
Application of International Norms and Protection Against Bad-Faith Registration
The applicant relied on Article 6-septies of the Paris Convention, alleging unlawful registration by an agent. This rule is implemented in Russian law through Article 1512(2)(5) CC RF and requires cumulative proof of (i) an agency relationship and (ii) identity or similarity of marks.
Since one opposed mark was dissimilar and the other related to dissimilar goods/services, there were no legal grounds for invalidation under this provision.
Arguments on misleading nature under Article 1483(3)(1) CC RF were also rejected. The burden of proof for notoriety and prior provision of similar services in Russia lies with the opponent. Submitted evidence (certificates, isolated agreements, video-hosting materials) was deemed insufficient to establish a stable associative link in the mind of the Russian consumer.
Delineation of Administrative and Judicial Competence
A significant procedural aspect is Rospatent's position on abuse of rights under Article 10 CC RF. The authority correctly indicated that assessment of good faith under general civil-law principles falls outside administrative competence and must be addressed by courts.
Notably, at the time of the decision, legal protection of the mark had already been terminated by the Intellectual Property Court of the Russian Federation; however, this did not affect the Board's reasoning, underscoring a formal approach focused solely on grounds invoked within the administrative procedure.
Commentary by Patent Attorney A.V. Leonov
Risks for rights holders and brand protection strategy in agency relationships: this case illustrates a classic conflict between a principal (foreign manufacturer) and its former distributor (agent), who registered a similar designation in its own name. Although the decision is largely technical in light of the prior court ruling, it provides important methodological guidance.
1. Critical Importance of Proving Similarity of Goods/Services
The applicant's key mistake was attempting to extend protection from goods (packaging, flexitanks) to services (logistics, transportation). In practice, courts and Rospatent increasingly require strict proof of overlap in consumer perception.
Recommendation: adopt a broad filing strategy covering not only goods classes but also related service classes (distribution, logistics, installation, maintenance), even where such services are outsourced but controlled by the brand owner.
2. Specific Application of Article 6-septies of the Paris Convention
This is a powerful anti-bad-faith tool but strictly tied to similarity of marks. Here, the existence of a mark with Chinese characters did not prevent registration of a Latin equivalent, as they were deemed dissimilar.
Recommendation: principals should ensure identity of marks registered by agents with their core marks. Distribution agreements should expressly prohibit registration of derivative marks (graphics, transliterations, localized versions).
3. Proof of Notoriety and Misleading Nature
Evidence of recognition was rejected as insufficient. Isolated videos and references on partner websites do not create legal certainty.
Recommendation: to rely on misleading nature or unfair competition, accumulate substantial evidence of active use before the filing date: sales volumes, advertising expenditure, customer feedback, geographic scope, customs declarations, and audit reports.
4. Procedural Economy and Choice of Forum
Administrative proceedings before Rospatent and judicial proceedings before the IP Court run in parallel but apply different standards. Rospatent is limited to registrability criteria, while courts may assess bad faith under Article 10 CC RF more broadly.
Strategy: in clear bad-faith cases by agents, priority should often be given to court action before the IP Court seeking termination of protection based on abuse of rights or infringement of trade name/commercial designation rights.
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