12 January 2011

From Russia with (trade mark) love: a reprise


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Image: “Jing old bells” by Madalena Pestana on Flickr

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About a year ago I blogged on the “Christmas” trade mark that the Russian bank Vostochny Express managed to register. In that post I expressed some doubts as to the registrability of the trade mark in question. Well, I must admit that was really surprised when I found out that Vostochny Express succeeded to defend its trade mark at court in Moscow.

The bank has brought an action before the Moscow Court of Arbitration (a court competent in commercial matters) against another bank, Bank Rossisky Capital, that had used the word “Christmas” on its website. Claimant alleged the use on the website was one in commerce and thus infringing claimant’s rights in the trade mark.

Surprisingly to me, but the court found that defendant’s use was capable of creating confusion between both banks’ products and services. Consequently, the court ordered the defendant to cease using the word “Christmas” in connection with its products and services.

All this would be quite funny if it was not absurd. Like other enterprises, banks also advertise their products and services, especially loans, more extensively during Christmas time. Since the essential function of a trade mark is to identify the origin of product or service, “Christmas” clearly fails to serve as such identifier. It simply cannot distinguish one bank’s business from that of another.

Vostochniy Express’ trade mark registration is definitely amiss and even borders with abuse of law.


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14 January 2010

From Russia with (trade mark) love


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I have always known that Russia and Russians are different. So totally different that they can hardly be compared with other nations’ representatives. And this appears to be true also with respect to their dealings with intellectual property.

According to the Russian newspaper Komersant, Vostochniy Express, a Russian bank, has successfully registered with Rospatent words like

“New Year”, “Christmas”, “Holiday”

as well as derivates thereof as trade marks. Not surprisingly, many banks issue promotional offers specially at Christmas or at year’s end. As a consequence of its trade mark grant however, Vostochniy Express has served such banks with cease and desist notices. The proprietor bank has alternatively offered to license the use of its “trade marks” against payment of license fees.

Vostochniy Express demonstrate they are

A Way Ahead In Making Business With Their IP Assets

This bank’s business drive could, however, be barred since the registration of the “trade marks” in suit has been referred to a board of appeal within Rospatent. Pursuant to the Russian trade mark practitioner Vassily Moiseev, the board of appeal is very likely to vacate Rospatent’s grant as it has frequently done in the past.

In my view Rospatent had to reject the registration as these very words are not really capable of distinguishing the products or services of Vostochniy Express from those of other banks. See whether the board of appeal will deliver a judgment consistent with mine.