Global IP Matrix - Issue 5

Three
Consonants
A trademark application No 2016737523
was filed by “Gazpromneft” JSC (a
prominent Russian oil company) for the
goods in Class 4 and services in Classes
35, 37, 40, 41, 42.
The trademark application included a
figurative part and a word part – the letters
GPN. The patent office agreed to register
the trademark with the three letters being
disclaimed. The patent office argued that the
claimed designation contains a combination
of three letters in the Latin alphabet. This is
an abbreviation of the name of the company
– GazPromNeft, which is a contraction of
three words (Gaz (gas), Prom (industry),
and Neft (oil). The patent office insisted that
the abbreviation is not a word; it is made in
standard font without any graphical features
that could influence the positive perception
of the designation by the consumer. Hence, it
does not possess distinguishing capability. In
its decision, the patent office relied on Article
1483 of the Civil Code which sets forth that
registration is not allowed if the designation
does not possess distinctive capability. This is
further explained in the Recommendations
of the patent office for examiners. It is stated
there that the combinations of letters which
are not words are not registrable (an exception
to this rule are designations which acquired
distinctiveness over use, such as e.g., BMW).
The applicant appealed the decision
at the IP court. The IP court did not
agree with the patent office, cancelled
the decision, and sent it back for
reconsideration.
The patent office did not reconsider its decision
but appealed the judgment of the IP court at
its cassation instance. The cassation instance
supported the judgment of the 1st instance
court (Case No СИП-453/2018 judgment
of March 25, 2019) and pointed out that the
applicant had initially appealed the decision
of the examiner at the Chamber of Patent
Disputes and argued that the element “GPN”
does possess distinctiveness however he failed
in its attempt to prove it.
When the decision was appealed at the IP
court, it was stated by the court that the patent
office did not give credit to the evidence
submitted by the applicant. The court pointed
out that the patent office had not explained in
its decision why it had declined a linguistic
report of the expert and had not examined
other evidence submitted by the applicant at
the time of filing the trademark application
or during the appeal procedure. The applicant
did argue that the designation “GPN” has the
properties of a word. Furthermore, a linguistic
report confirmed this. The designation does
have the basic characteristics of a word, and
as such, it is a particular unit of the language.
Conversely, the patent office argued that the
claimed designation is an abbreviation used
by the applicant on the market. This is not
correct according to the IP court. The applicant
argued that the word element “GPN” had been
used for a long time and de facto became a
trademark; it plays the role of the trademark
in that it distinguishes his goods and services
from those of other manufacturers.
To support the arguments contained in the
appeal, the appellant submitted sources of
information as follow: a linguistic report,
copies of contracts concerning supplies of oil,
printouts from the Internet.
The patent office declined the arguments
contained in the appeal; it did not accept the
assertion of the appellant that the combination
of letters “GPN” had been used as part of the
company names of several companies forming
part of the Gazpromneft group. According to
the patent office, that circumstance did not
confirm the use of that designation for the
purpose of individualisation of goods and
services of the appellant because company
names serve to identify legal persons but not
the goods and services. The patent office stated
that the appeal did not contain arguments
confirming the famous character of the
designation nor was there submitted evidence
showing that the designation “GPN” acquired
distinguishing capability as a result of its
intensive use.
The court of the first instance cancelled
the decision of the patent office because in
contravention of Article 1483(1) the patent
office did not consider the expert report which
opined that an abbreviation, regardless of the
alphabet in which it is written, is a word.
The patent office simply preferred not to
notice the report.
Besides, the court also pointed out that the
patent office should have taken into account
that the designation was used in the company
26 www.gipmatrix.com
By Vladimir Biriulin, Gorodissky & Partners
www.gorodissky.com
names of subsidiary companies and may be
used in labor relations of the plaintiff. Thus, the
court refuted the assertion of the patent office
that the company name could not be used for
individualisation of goods and services.
Further, the court stated that the patent
office had not duly evaluated the fact that
the designation was used on documents
confirming the manufacture of goods and
rendering services by the plaintiff.
The court also agreed with the plaintiff who
referred to the international experience of
use of company names in their abbreviated
form, such as BMW, CNN, BBC, WWF, and
others. Besides, the court did not agree that the
designation consists of consonants only. When
being read it would be pronounced as Gee, Pee,
eN, i.e., the designation includes vowels as well
as consonants.
In conclusion…
The patent office appealed the judgment at
the IP court cassation instance; however,
the Presidium of the IP court dismissed the
complaint of the patent office. The court also
made a statement that may not be pleasant
for the patent office. It pointed out that the
rules of registration of trademarks do not
endow the patent office with the capacity to
recognise its own conclusions as indisputable
without analysis of the plaintiff ’s arguments.
The Praesidium also concluded that not every
combination of letters is an abbreviation, but
an abbreviation is a word.
As a result, the Praesidium of the IP court
upheld the judgment of the 1st instance of
the IP court and dismissed the patent office’s
complaint.