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At the Chamber of Patent Disputes the lawyers of PATENTUS contested a decision on refusal of state registration for the trademark “OSCAR Collezioni”

Date: 19 January 2015

“OSCAR Collezioni” is an Irkutsk network of clothing salons in which offers its customers a collection of men's and women's clothing, shoes and accessories of leading French, German and Italian brands.

In April, 2012 the owner of the retail chain “OSCAR Collezioni” filed an application with the Federal Service for Intellectual Property (Rospatent) to register the store name as a trademark (in respect of services in class 35 of the Nice Classification – “sales promotion for others”).

In October, 2013 Rospatent issued a decision to refuse the registration of the trademark alleging as its reason that the claimed designation was confusingly similar to trademark No. 383819 with the wording “OSKAR” registered for similar services in class 35 of the Nice Classification.

Failing to agree with the decision, the applicant filed an opposition with Rospatent. The lawyers of PATENTUS did all possible to obtain a letter of consent from the cited mark owner as well as prepare convincing evidence that the registration would not mislead consumers.

However, the Appeals Board of the Chamber of Patent Disputes at its hearing pointed out to the applicant the additional circumstances not given in the contested decision and on its own initiative opposed three new trademarks as follows: “Oskar ENSLAVER” No. 481996, “Oscar” No. 288190, “Oscar by Oscar de la Renta” No. 162623 registered in respect of similar goods in class 25 of the Nice Classification.

The lawyers of PATENTUS laid out several options originating from the receipt of the letters of consent from all the holders as well as the cancellation of the trademarks. As a result, the least expensive option (namely, challenging the similarity and identity of the claimed trademark) was chosen.

The lawyers of PATENTUS made a detailed analysis, prepared supplements to the opposition and on January 13, 2015 the Appeals Board of the Chamber for Patent Disputes at its next hearting took notice of the arguments presented. The decision to refuse the registration of the mark “OSCAR Collezioni” was canceled and instead the Appeals Board of the Chamber for Patent Disputes made a favourable decision to register the mark in respect of the claimed services in class 35 of the Nice Classification (sales promotion for others).

In such a manner, “OSCAR Collezioni” network of clothing salons registered the trademark and will continue their business activities supported by the state protection of their intellectual property.




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