In our firm 's practice trademark registrations which reproduce well-known trademarks of foreign owners or similar to them meet routinely.
The grounds for getting such registrations by unfair players are quite clear, but it should be kept in mind that according to Russian Trademark Law they might be opposed and canceled. We would like to illustrate aforesaid with several examples. In 1997 trademark WHITE &MACKAY was registered in name of "FRINO " Ltd.,(Russia)with respect to services in Classes 35,36,part of services in Class 39,namely "transportation, packing and storing of goods excluding alcoholic drinks " and Class 42,namely "restaurants, hotels, realization of goods excluding alcoholic drinks ".
When it revealed, an opposition to said registration was filed for our client, well-known producer of beverages, owner of Russian trademark registration of WHITE & MACKAY, with respect to goods in Class 33 "alcoholic beverages, whisky ".The opposition mentions that registration in name of "FRINO " Ltd .is obtained in violation of Article 7 (1)of Russian Trademark Law, which prohibits a registration of designations confusingly similar to trademarks earlier registered in Russia by other individual or legal entity with respect to similar goods and services. Moreover, said registration of "Frino " Ltd. contradicts to Article 6 (2)of Law that says "a registration should not be granted to a trademark which might mislead a consumer with respect to person who renders services."Among arguments in opposition we put following. WHITE and MACKAY are common English surnames.
MACKAY might be associated with English or Scottish origin of registration owner, which is not true in respect of "FRINO " Ltd. located in Ingushetiya, Russia.
From geographic sources it was showed that WHITE and MACKAY are also geographical names, i.e. WHITE is an island in South-East England, MACKAY is name of town in State of Idaho (USA) and name of town in Australia. Also data about popularity of mark WHITE &MACKAY were supplied, namely, that WHITE & MACKAY Scotch whiskey had been produced since 1844 and enjoyed by consumers all over world. Additionally numerous registrations of said trademark throughout world were presented to Board of Appeals of Russian PTO which accepted some of arguments and stated that opposed and cited marks were similar in view of phonetic and semantic identity thereof, with high degree of visual similarity.
Some of services in Classes 35,39,42 are related to realization of goods, and in view of high degree of similarity of compared marks, a consumer may misunderstand that all these services and goods belong to one and same producer. Having considered all grounds Board of Appeals satisfied opposition and canceled registration of "Frino " Ltd. partially by deleting services in Class 35related to advertising, services in Class 39 related to transportation, delivery and storage of goods, services in Class 42 related to restaurants, hotels and realization of goods.