Key Takeaways
- The Chamber of Rospatent annulled the decision to refuse registration of the designation "VK Fest" under Application No. 2024720746 and found it to comply with the requirements of Article 1483 of the Civil Code of the Russian Federation.
- The abbreviation "VK" was recognized as possessing independent distinctiveness due to its widespread recognition among consumers and a stable association with the VK group of companies.
- The Chamber concluded that the designation "VK Fest" is perceived by consumers as a single phrase associated with the applicant's activities, and the element "fest" does not perform an independent descriptive function with respect to the claimed goods and services.
- Even with respect to services of Class 41 of the Nice Classification, where the designation could potentially be perceived as an indication of the field of activity, the applicant proved acquired distinctiveness as a result of long-term and intensive use of the designation since 2015.
- The previously registered trademark "VK Capsule Neo" was not recognized as an obstacle to registration, since the designations originate from a single economic source — the VK group of companies — and the relevant legal entities were affiliated structures.
Legal Analysis
Initial refusal and examination findings
The Chamber of the Federal Service for Intellectual Property examined an opposition against the decision to refuse state registration of the trademark "VK Fest" under Application No. 2024720746. The grounds for the initial refusal were the provisions of Paragraphs 1 and 6 of Article 1483 of the Civil Code of the Russian Federation, which prohibit the registration of designations that lack distinctiveness, as well as designations that are confusingly similar to previously filed or registered trademarks of other persons.
During the examination, it was established that the designation consists of the elements "VK" and "fest". The examination proceeded from the fact that the combination of letters "VK" is a simple letter combination that does not possess a verbal character, whereas the element "fest" is perceived as an indication of a festival event and, consequently, characterizes the purpose or type of the relevant goods and services. According to the examination, the combination of these elements did not form a protectable designation.
When reviewing the examination's conclusions, the Chamber applied the provisions of Paragraph 1.1 of Article 1483 of the Civil Code of the Russian Federation, which provide for the possibility of granting legal protection to a designation that has acquired distinctiveness as a result of use.
Distinctiveness of “VK” and perception of “fest”
Of significant importance for the resolution of the dispute was the issue of consumer perception of the element "VK". Based on the submitted sociological study, it was established that the designation is known to the vast majority of respondents, is perceived as an independent word, and is stably associated with the social network "VKontakte" and the corresponding group of companies. The Chamber concluded that the designation has a verbal character and independent semantic content, precluding its qualification as a simple letter combination.
The analysis of the verbal element "fest" warrants particular attention. The Chamber noted the ambiguity of this word and the absence of direct descriptiveness with respect to the claimed goods and services. It was observed that within the phrase "VK Fest", this element is perceived not in isolation, but exclusively in conjunction with the dominant element "VK", forming a single associative image of the event organized by the rights holder. Consequently, there are no grounds for concluding that the designation directly characterizes the goods or services by their type, properties, or purpose.
At the same time, the Chamber recognized that with respect to some services of Class 41 of the Nice Classification related to the organization of cultural and entertainment events, the designation could potentially be perceived as an indication of the applicant's field of activity. However, this risk was mitigated by evidence of acquired distinctiveness. The case materials confirmed the continuous use of the designation "VK Fest" since 2015 as the name of a large-scale music and entertainment festival held in various regions of the Russian Federation. In support, information was submitted regarding a multi-year advertising campaign, significant promotional expenses, publications in federal media, marketing research, and high consumer recognition of the event.
Assessing the totality of the evidence presented, the Chamber concluded that as of the filing date of the application, the designation was already perceived by consumers as a means of individualizing the services of a specific business entity. Consequently, the requirements of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation cannot serve as an obstacle to the registration of the disputed designation.
Single source of origin and outcome
A separate block of analysis was devoted to the application of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation. The examination cited the trademark "VK Capsule Neo" with an earlier priority as an obstacle. However, the Chamber found that on the filing date of the application in question, V KONTAKTE LLC and VK LLC were part of the same group of companies, were under common corporate control, and effectively represented a single source of origin of the goods and services. Additionally, it was noted that subsequently, V KONTAKTE LLC ceased its activities by merging into VK LLC.
Taking into account the established judicial and administrative practice regarding the single source of origin of goods and services, the Chamber concluded that there was no likelihood of misleading consumers as to the manufacturer or organizer of the relevant goods and services. Accordingly, the cited mark was not recognized as an obstacle to the registration of the disputed designation.
Based on the results of the examination of the opposition, the decision to refuse registration was annulled, and the applied-for designation was found to be subject to state registration as a trademark.
Commentary by Patent Attorney A.V. Leonov
This decision is of significant practical interest, primarily regarding the proof of acquired distinctiveness and the assessment of designations consisting of commonly used or potentially weak elements.
In practice, many applicants encounter refusals under Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation with respect to designations containing words such as "fest", "market", "forum", "expo", "event" and similar indications of the format of an event. This case demonstrates that the key factor is not a formal analysis of individual elements, but rather the perception of the designation as a whole by the specific consumer audience.
Particular attention should be paid to the evidentiary record. The applicant submitted a comprehensive set of evidence: sociological studies, media publications, contracts for organizing events, documents on advertising expenses, marketing research on the audience, and information on the long-term use of the designation. It was precisely the combination of such evidence that made it possible to confirm that the designation had acquired distinctiveness.
For rights holders, this position means the need for systematic accumulation of evidence of brand use long before a dispute arises. In practice, it is recommended to retain advertising materials, contracts with contractors, event attendance data, media presence statistics, marketing research results, and other documents capable of confirming the recognition of a designation as of a specific date.
No less important is the second conclusion of the Chamber — the application of the concept of a single source of origin of goods and services. In large holding structures, rights to various intellectual property objects are often distributed among several legal entities. This decision confirms the possibility of overcoming objections under Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation if common corporate control is proven and there is no risk of misleading consumers as to the origin of the goods or services.
At the same time, businesses should not perceive this approach as universal. Proving a single source of origin requires submitting convincing corporate documents, information on affiliation, and confirmation of an actual connection between the companies within the group. In the absence of such an evidentiary record, the likelihood of refusal remains.
In terms of the prospects for similar disputes, one can predict the further development of practice in favor of well-known brands capable of proving long-term and intensive use of a designation. At the same time, for less well-known market participants, the standards of proof remain quite high. Therefore, the issue of building an evidentiary dossier for a brand must be addressed long before filing a trademark registration application.
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