Key Takeaways
- Rospatent initially refused to grant legal protection to international registration No. 1831551 on the grounds set forth in Article 1483(3)(1) of the Russian Civil Code, finding a risk of misleading consumers as to the manufacturer of the goods and services.
- The key circumstance in the reversal of the decision was the confirmation of affiliation between the applicant, Europapier Austria GmbH, and the company Micro ASU through the common corporate structure of the "Europapier" group, which excluded the likelihood of creating a false impression as to the manufacturer.
- The Rospatent Chamber held that the existence of an identical trade name used by an affiliated legal entity does not in itself constitute a ground for refusal of registration, provided that unity of economic control is proven and there is no risk of misleading the Russian consumer.
- Additionally, technical deficiencies in the application were remedied: the applicant voluntarily excluded duplicate goods items from the list of goods in Classes 16 and 24 of the Nice Classification, thereby eliminating the grounds for the application of Article 1497(3) of the Russian Civil Code.
- Following the examination of the opposition, the refusal decision was overturned, and international mark No. 1831551 was granted legal protection on the territory of the Russian Federation in the amended scope of the claimed goods and services.
Legal Analysis
Subject matter and initial refusal
The present Rospatent opinion is of interest from the perspective of developing administrative practice in the application of Article 1483(3)(1) of the Russian Civil Code in situations involving corporate affiliation between the applicant and the person whose designation is perceived as an indication of the manufacturer of goods or provider of services.
The subject of the review was an opposition filed by Europapier Austria GmbH against the decision to refuse legal protection on the territory of the Russian Federation to the designation under international registration No. 1831551 in respect of goods in Classes 06, 16, 17, 22, 24 and services in Class 35 of the Nice Classification. The refusal was based on the examiner's conclusion that the designation "MICRO ASU" was capable of creating in the consumer's mind a mistaken impression as to the person manufacturing the relevant goods or rendering the services.
Applying the provisions of Article 1483(3)(1) of the Russian Civil Code and Rule 37 of the Regulations, the Chamber proceeded from the position that the assessment criterion is not the formal coincidence of the designation with an existing economic entity, but rather the likelihood of an enduring associative link arising in the consumer's mind that does not correspond to the actual state of affairs.
Corporate affiliation and consumer perception
The examiner had previously established the existence of the company Micro ASU in Bulgaria and the operation of an identically named internet resource. From this, a conclusion was drawn as to the potential ability of the designation to mislead consumers as to the manufacturer. However, during the administrative review, the applicant submitted documents confirming the corporate structure of the group of companies, demonstrating that the applicant and the company Micro ASU are under common control through a chain of ownership.
The Chamber attached material significance not only to the legal affiliation of the group participants but also to the factual interconnectedness of their commercial activities. It was established that the applicant confirmed lawful ownership of the company Micro ASU, and the information regarding ownership of the website corresponded to the submitted registration documents. These circumstances allowed the Chamber to conclude that there was no independent, unaffiliated entity with which the Russian consumer could associate the origin of the marked goods and services to the detriment of the applicant's interests.
An additional argument relied upon by the Chamber was the assessment of consumer perception within the Russian jurisdiction. It was specifically noted that there was no Russian-language version of the Micro ASU company website, which, in the administrative body's view, reduces the likelihood of the relevant entity acquiring established recognition among Russian consumers. This approach demonstrates a trend toward analyzing not only formal registration data but also the actual accessibility of information to the relevant audience.
Article 1497(3) and outcome
Of separate note is the application of Article 1497(3) of the Russian Civil Code. The duplicate items in the goods list identified by the examiner were qualified as technical errors. After the elimination of the repeated terms, the obstacle to further examination of the application was removed without the need for a new filing.
Thus, in the present case, Rospatent confirmed the possibility of overcoming a refusal based on the ground of consumer deception, provided that evidence of corporate affiliation, transparency of the ownership structure, and the absence of a risk that the Russian consumer would form a mistaken impression as to the source of origin of the goods and services is submitted.
Commentary by Patent Attorney A.V. Leonov
The present decision is of practical interest primarily for international groups of companies employing unified brand architectures and distributed ownership structures for intellectual assets.
In practice, refusal under Article 1483(3)(1) of the Russian Civil Code frequently arises in cases where the applicant and the actual manufacturer of the products or the local operating company do not formally coincide. The present case demonstrates that the mere existence of an identically named legal entity or the use of a designation within a group of companies does not automatically constitute an obstacle to registration.
We draw attention to the fact that the evidentiary record is of critical importance. In the present case, the result was achieved not through declaratory explanations, but by submitting the corporate structure, registry information, confirmation of the chain of ownership, materials on the operation of the group of companies, and evidence of control over digital assets.
Recommendations for rights holders and opponents
- If a brand is registered in the name of the parent company but actually used by a subsidiary, prepare in advance: documents on the group structure; confirmation of control over the use of the designation; internal license or corporate documents; materials confirming the common origin of the goods and services;
- The absence of a pre-prepared set of documents may lead to refusal even where an intra-group relationship is obvious;
- For potential opponents, what must be proven is the actual likelihood of misleading the consumer, rather than the formal existence of a coinciding entity.
The prospects for similar disputes appear favorable for applicants, provided that intra-group relationships are properly documented. At the same time, it should be borne in mind that the conclusions in each case retain a high degree of casuistry and depend on the composition of the evidence, the recognition of the designation, and the specific characteristics of the relevant goods market.
Related Materials
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