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Another example of successful enforcement of trademark owner rights is cancellation of Cyrillic trademark registration РАМКА (in English -RAMKA) in name of"Tandem " (Saint-Petersburg, Russia) for "butter and food fats " and other goods.
Said registration was opposed by Unilever N.V., one of largest producers of butter and food fats, owner of several registrations for RAMA, who had been spending large budget to advertise their trademark for several years and are still spending money for advertising of products under mark RAMA. The products marked by RAMA are well known to Russian consumers. The Russian company decided to get a benefit from such popularity, filed an application for a Cyrillic trademark of PAMKA and obtain edits registration. Non-Russian consumers do not see how much similar Cyrillic words PAMA (in English RAMA) and PAMKA (in English RAMKA) are, and they need additional explanation. But first of all we should mention that Unilever N.V. who has been successfully marketing their products on Russian market for many years, has not forgotten to register their mark in Cyrillic. Though many foreign companies neglect our advice and do not register Cyrillic versions of their trademarks. Anyway, Unilever N.V. got a registration for Cyrillic version of their trademark RAMA, namely, PAMA (in Cyrillic).
The word of RAMKA in Russian is a diminutive for RAMA and means a frame of smaller size. Thus Cyrillic words in question of PAMKA and PAMA are similar against phonetic, semantic and visual criteria. While comparing word of RAMA with Cyrillic PAMA, one could notice only phonetic similarity, but Cyrillic PAMA and Cyrillic PAMKA are similar also semantically and visually. The Board of Appeals accepted arguments provided by GORODISSKY &PARTNERS and canceled registration of Russian company.
One more example is our opposition to registration of SCANDY trademark.
The trademark of SCANDY was registered in name of one Russian company with respect to such goods as "stainless kitchen sinks "in Class 6 and "sanitary technical equipment for bathrooms, sinks for kitchen "in Class 11.
Said registration was opposed by our client CANDY S.p.A., Italian manufacturer of popular sanitary equipment and owner of well-known trademark CANDY in Russia.
Our opposition mentioned that opposed trademark was confusingly similar to trademark of CANDY earlier registered in name of CANDY S.p.A. for similar goods, and therefore opposed registration was granted in violation of Article 7(1)of Russian Trademark Law. Trademark attorneys of GORODISSKY &PARTNERS provided comparative analysis against phonetic and visual criteria, and concluded that marks were confusingly similar. The Board of Appeals accepted their arguments and canceled registration for SCANDY of Russian company.
It should be mentioned that in this case Russian company tried to appeal Decision of Board of Appeals at Higher Patent Chamber of Russian PTO but failed.
Russian trademark attorney Law firm: "Gorodissky & Partners" Russian Patent/Trademark Attorneys
From 1982 till 1994 worked as an examiner in the Russian Patent Office. From 1994 till 1998 worked in major IP firmes. In 1998 joined "Gorodissky & Partners". Deals with trademarks, namely, trademark proceedings and enforcement of trademark owners' rights. In 1999 participated at MARQUES International Conference, Drezden (Germany).