Key Takeaways
- The Chamber of Rospatent found that the verbal element “MOSTABAK” possesses signs of descriptiveness with respect to goods of Class 34 of the Nice Classification and services of Class 35 of the Nice Classification, as it is perceived by consumers as meaning “Moscow tobacco” (moskovsky tabak).
- Despite the established descriptive character of the designation, Rospatent concluded that the disputed designation had acquired distinctiveness as a result of the intensive use of the trademark by the rights holder and a network of users under commercial concession (franchising) agreements.
- The arguments of the opponent regarding the non-protectability of the element “MOSTABAK”, based on the case law of the Intellectual Property Rights Court and examples of registration of similar designations containing the element “MOS”, were found insufficient to terminate the legal protection of the trademark.
- The Chamber separately indicated that the assessment of a trademark’s protectability must be carried out on a case-by-case basis with respect to specific goods, services, and factual circumstances as of the filing date of the application.
- The evidence of use of the designation “MOSTABAKTORG” submitted by the opponent was found to be improper and not confirming the actual use of the designation prior to the priority date of the disputed trademark.
Legal Analysis
Subject matter and opponent’s position
The subject matter of the administrative dispute was an opposition against the grant of legal protection to the trademark “MOSTABAK” under Certificate No. 900878, registered for goods of Class 34 of the Nice Classification and services of Class 35 of the Nice Classification in the name of MOS GROUP LLC.
The opponent referred to the non-compliance of the disputed designation with the requirements of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, pointing to the lack of distinctiveness of the verbal element “MOSTABAK” due to its descriptive nature. According to the opponent, the designation is formed by combining the commonly used abbreviation “MOS” (meaning “Moscow”) and the word “TABAK” (tobacco), which directly characterizes the type of goods sold and the scope of services rendered.
In support of its position, the opponent cited the established case law of the Intellectual Property Rights Court, which allows for the semantic analysis of composite designations by breaking them down into independent verbal elements. In particular, references were made to cases No. SIP-497/2023, No. SIP-913/2023, No. SIP-247/2020, and No. SIP-1366/2021, in which the courts examined the descriptiveness of composite designations with respect to the claimed goods and services.
Furthermore, the opponent pointed out that the use of the verbal element “MOS” in the disputed designation is reinforced by a figurative element associated with the Spasskaya Tower of the Moscow Kremlin, as well as the location of the rights holder in the city of Moscow. Collectively, according to the opponent, these circumstances formed a direct association in the consumer’s mind with tobacco products of Moscow origin.
Rospatent’s findings on descriptiveness
The Chamber of Rospatent, having examined the case materials, agreed that the designation “MOSTABAK” could be perceived by consumers as derived from the phrase “Moscow tobacco.” The opinion directly states that the disputed verbal element is a composite word formed from the parts “MOS” and “TABAK,” which exist in the Russian language and possess independent semantic meanings.
At the same time, the administrative authority concluded that the designation exhibits signs of descriptiveness with respect to goods of Class 34 of the Nice Classification and services of Class 35 of the Nice Classification related to the sale and promotion of tobacco products. Thus, it effectively recognized the existence of grounds for the application of the provisions of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation.
Acquired distinctiveness and franchising evidence
However, the key factor determining the outcome of the dispute was the application of Sub-paragraph 1 of Paragraph 1.1 of Article 1483 of the Civil Code of the Russian Federation, which provides for the possibility of granting legal protection to a designation that has acquired distinctiveness as a result of its use.
The Chamber established that the rights holder had formed an extensive network of users under commercial concession (franchising) agreements since the registration of the trademark. The case materials contained information about a significant number of entities using the disputed designation on the basis of registered commercial concession agreements, which, in the opinion of the administrative authority, indicated centralized and controlled use of the trademark.
Particular attention was paid to the fact that the use of the designation was carried out under the control of the rights holder, as a result of which the disputed designation became associated by consumers with a single source of origin of the goods and services. Thus, Rospatent effectively recognized that the designation had acquired distinctiveness.
Opponent’s evidence and case-by-case assessment
The opponent’s arguments regarding its own use of the designation “MOSTABAKTORG” were dismissed as not documented. The Chamber indicated that the submitted agreements, invoices, website development information, and other documents did not confirm the actual use of the disputed or a similar designation prior to the priority date of the trademark under Certificate No. 900878. It was also noted that there was a lack of proper evidence of the execution of contracts related to the production of signs and products bearing the designation “MOSTABAKTORG.”
A significant finding of the opinion is Rospatent’s position on the inadmissibility of mechanically transferring conclusions from other cases to the dispute at hand. The administrative authority indicated that the existence of different approaches to the registration of designations containing the element “MOS” does not indicate the formation of a unified practice and does not relieve the authority of the obligation to independently assess each specific designation, taking into account the specific goods, services, and factual circumstances of the case.
As a result of the examination of the opposition, Rospatent denied it and maintained the legal protection of the trademark under Certificate No. 900878 in full.
Commentary by Patent Attorney A.V. Leonov
This opinion is of significant practical interest, primarily regarding the application of the mechanism of acquired distinctiveness to designations that initially exhibit signs of descriptiveness.
It should be noted that Rospatent effectively agreed with the arguments regarding the semantic decomposability of the designation “MOSTABAK” and recognized its descriptive characteristics with respect to tobacco products and services for their sale. However, the key factor for maintaining legal protection was the existence of an evidentiary record confirming the intensive and systematic use of the designation in commercial circulation.
In practice, this means that even potentially weak designations can remain protectable provided that a strong association between the designation and a specific business entity has been established.
Opportunities and risks for rights holders
On the one hand, the decision confirms the possibility of protecting designations containing elements indicating territorial origin or product characteristics, provided the rights holder can prove acquired distinctiveness. Of particular importance is the use of franchising models and commercial concession agreements, which allow for a unified perception of the brand across a significant territory.
On the other hand, rights holders must consider that the mere registration of a trademark with potentially descriptive elements does not guarantee the stability of legal protection. In the absence of proper evidence of intensive use, such registrations remain vulnerable to subsequent challenge on the grounds of Article 1483 of the Civil Code of the Russian Federation.
Recommendations for building an evidentiary record
- Information on the geographic scope of use of the designation;
- Data on product sales volumes;
- Advertising materials;
- Documents on promotional expenses;
- Commercial concession (franchising) agreements;
- Confirmation of quality control over goods and services;
- Results of marketing and sociological research.
Of particular importance is documenting the use of the designation as of the priority date or during the period preceding the filing of the application. As this case shows, documents executed after the priority date have significantly lower evidentiary value.
For parties planning to challenge such trademarks, the decision demonstrates the need to prepare a full-fledged evidentiary record. Simply pointing out the descriptiveness of a designation is insufficient if the rights holder can prove acquired distinctiveness due to long-term use.
Additionally, we note that currently the Intellectual Property Rights Court (IP Court) and Rospatent continue to develop the practice of analyzing composite designations by examining their semantic components. In this regard, when developing new brands, it is recommended to avoid constructions that directly indicate the type of goods, place of origin, or field of activity, especially in highly competitive market segments.
The prospects of similar disputes will largely depend on the quality of the evidentiary record, rather than solely on a formal analysis of the verbal element.
Related Materials
Further IPPRO analysis on trademark opposition, Article 1483, and Rospatent Board practice: