The current legislation establishes that there are a number of designations that, for one reason or another, cannot be registered as trademarks.
Such designations are generically characterized as “not having distinctive ability” and include, in particular:
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Designations that have come into general use to designate goods of a certain type;
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Designations that are generally accepted symbols and terms;
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Designations characterizing goods, including those indicating their type, quality, quantity, property, purpose, value, as well as the time, place and method of their production or sale;
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Designations representing the form of goods which is determined exclusively or mainly by the property or purpose of goods.
According to clause 1 of Article 1486 of the Civil Code of the Russian Federation: "the specified elements may be included in the trademark as non-protectable elements if they do not occupy a dominant position therein".
Exceptions to the rule
At the same time, this article of the Civil Code allows that the provisions of this clause of Article 1483 of the Civil Code of the Russian Federation do not apply to designations that:
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Have acquired a distinctive ability as a result of their use;
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Consist only of the above elements, forming a combination that has a distinctive ability.
Thus, the legislation provides the applicant with two options for actions using which it is possible to register a seemingly non-protectable trademark or an element of a trademark as a protected one.
Two ways to register a non-protectable trademark
1) The applicant, in the process of registering his designation, can confirm that it, due to the long-term use, has acquired a distinctive ability and, as of the date of filing application for registration, is associated by the consumer exclusively with the applicant's company.
To prove the acquisition by designation of the distinctive ability, one can present the following factual information contained in the relevant documents:
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On the duration, intensity of use of the designation, territory and volumes of sales of goods marked with the declared designation,
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On the cost of advertising, its duration and intensity,
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On the degree of consumer awareness about the declared designation and manufacturer of goods, including the results of sociological surveys;
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Information about publications in the open press about goods accompanied by the declared designation, and other information.
The documents submitted by the applicant to prove the acquisition by the designation of distinctive ability are taken into account when deciding on the state registration of a trademark if they confirm that the declared designation was perceived by the consumer, prior to the date of filing application, as a designation intended for the individualization of goods of a certain manufacturer.
This option of actions to ensure the registration of a non-protectable trademark as a protected one is most suitable for those applicants who have been present on the Russian market of goods or services for quite a long time, but for one reason or another delayed the registration of the designation that has already become known.
2) The second option for the extension of full protection to a designation that includes non-protectable elements assumes the presence in the declared designation of an original composition of such elements, which together would form a unique combination having a distinctive ability.
In particular, non-protectable elements can be connected in such a way that in relation to the declared goods or services, this combination would be perceived as unusual and original.
Examples of our cases
The combination of the words COFFEE OIL in the trademark, in which the word COFFEE means "coffee" and OIL means "oil", was registered by PATENTUS expert as a trademark for services of 43rd class of ICGS (registration No. 771971).
The original combination of simple letters "FF" and the word "GYM" (gym) in the trademark was granted legal protection in relation to services of 41st class of ICGS (registration No. 705954).
Thus, the applicant has several options for how to overcome the grounds for declaring a designation non-protectable in order to register it as a protected trademark.
