Key Takeaways
- Rospatent recognized the standing (interest) of the applicant (FoodWay LLC) in challenging the grant of legal protection to the trademark under Certificate No. 922991, despite the absence of registered exclusive rights to the opposed designations, because the disputed mark potentially hindered the registration of earlier filed applications.
- When comparing the designations, the Chamber found phonetic, semantic, and visual similarity of the dominant verbal element "Dr Pepper", which led to the conclusion that the designations were confusingly similar with respect to part of the goods of Class 32 of the Nice Classification.
- Only goods in the category of non-alcoholic beverages and ingredients for their production were recognized as similar (homogeneous); the good "beer" was excluded from the scope of coincidence due to differences in purpose, consumer circle, and conditions of sale.
- Despite the established similarity of the designations and partial similarity (homogeneity) of goods, the opposition was not satisfied due to the subsequent refusal of state registration of the opposed applications No. 2022715182 and No. 2022715183.
- Rospatent effectively confirmed that the mere existence of a filed application may confirm a person's procedural standing, but does not create an independent substantive legal ground for terminating the protection of an earlier registered designation if the prospects for registration of the opposed designation are lost.
Legal Analysis
Subject matter and procedural standing
This case is of practical interest from the perspective of the relationship between the procedures for challenging the grant of legal protection to a trademark and the legal status of a person possessing only an earlier application for registration of a designation.
The subject matter of the administrative dispute was an opposition against the grant of legal protection to the trademark under Certificate No. 922991, registered with respect to goods of Class 32 of the Nice Classification. The grounds for the opposition were the provisions of Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, which prohibit the registration of designations that are identical or confusingly similar to trademarks of other persons having an earlier priority date with respect to similar (homogeneous) goods.
The opponent referred to the existence of earlier filed applications for registration of designations containing the dominant element "Dr Pepper", believing that the registration of the subsequent designation hindered the exercise of its rights to obtain legal protection.
The Chamber of Rospatent proceeded from the provisions of Paragraph 2 of Article 1513 of the Civil Code of the Russian Federation, according to which the initiation of a procedure for invalidating the grant of legal protection is permitted by an interested person. It was indicated in this regard that the existence of filed applications for designations that potentially conflict with the disputed trademark itself evidences the applicant's legal interest.
This conclusion warrants attention because it confirms the established approach according to which standing in administrative trademark disputes is not identical to the existence of an already arisen exclusive right. It is sufficient to find an objective connection between the existence of the disputed registration and a restriction on the possibility of obtaining legal protection in the future.
Similarity of designations and homogeneity of goods
When examining the issue of similarity of the designations, the Chamber applied the provisions of Paragraphs 41–45 of the Rules for the Preparation, Filing, and Examination of Documents Serving as a Basis for the State Registration of Trademarks. The comparison was carried out based on a combination of phonetic, visual, and semantic criteria.
The Chamber found that the verbal element "Dr Pepper" occupies a dominant position within all of the compared designations and is perceived by consumers as the main distinguishing element. Additional elements ("zeroooh", "Est.1885") were recognized as secondary and not altering the overall commercial impression.
With respect to the similarity (homogeneity) of goods, the classic criterion of the likelihood that consumers will form an impression of a common source of origin of the goods was applied. Non-alcoholic beverages, fruit drinks, syrups and other beverages of Class 32 of the Nice Classification were recognized as similar (homogeneous) due to the coincidence of purpose, distribution channels, consumer circle, and consumer characteristics.
The category of goods "beer" was separately examined. The Chamber refused to interpret the criterion of similarity (homogeneity) broadly and indicated that beer belongs to an independent product category, differing in functional purpose, target audience, and conditions of circulation, as a result of which it cannot automatically be considered similar (homogeneous) to non-alcoholic beverages.
Procedural interest vs. substantive ground and outcome
However, the established similarity of the designations and partial similarity (homogeneity) of goods did not lead to the satisfaction of the opposition.
Subsequent changes in the factual circumstances became of key importance: decisions refusing state registration were issued with respect to the opposed applications, one of which was subsequently confirmed following an administrative review.
As a result, the Chamber concluded that there was no legal ground for invalidating the disputed registration.
Effectively, in this case, the Chamber drew a distinction between the existence of procedural interest and the existence of a substantive legal ground for removing a registered trademark from the register. The mere fact of an application's existence does not provide priority in isolation from the prospects of acquiring an exclusive right.
Commentary by Patent Attorney A.V. Leonov
This position is of significant practical importance for participants in the beverage market and, more generally, for rights holders implementing a strategy of registering series of trademarks.
In practice, a situation often arises where an applicant attempts to use its own earlier application as a tool to block a competitor's registration. This case demonstrates the limitations of such an approach.
Attention should be paid to the fundamental conclusion: the existence of an application allows one to confirm standing for initiating an opposition procedure, but does not guarantee a favorable outcome on the merits of the dispute.
For businesses, this means the need to accompany a confrontational strategy with parallel defense of one's own applications. If the opposed application does not pass examination or subsequently receives a refusal, the entire construct of the administrative opposition may lose its legal basis.
Recommendations for rights holders
- Conduct a preliminary audit of your trademark portfolio and monitor the status of dependent applications;
- When filing oppositions, assess not only the likelihood of establishing similarity of designations, but also the stability of your own registration prospects;
- Do not postpone the formation of a series of trademarks and the protection of variant forms of a designation;
- Remember that references to previously existing registrations within a series do not exempt a new designation from examination for compliance with absolute and relative grounds for refusal.
For applicants attempting to introduce to the market designations that reproduce well-known verbal elements, this dispute demonstrates an additional risk: even successfully proving similarity does not compensate for the absence of one's own protected asset.
The prospects for similar disputes appear moderate. Under the current approach of Rospatent and the Intellectual Property Rights Court, the key factor will be not so much the filing date of the application, but rather the applicant's ability to complete the registration to the point of acquiring an exclusive right and to maintain the legal stability of the designation throughout the entire period of dispute resolution.
Related Materials
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