In Re (#04 April 2012)

Trademarks Reproducing Names, Surnames and Portraits of Famous People

Oleksandr A. Aleksyeyenko, Yevgen O. Blok

Provisional refusal is a decree of an examiner on the stage of qualifying examination, which contains conclusions why a certain trademark cannot be registered in accordance with conditions of granting legal protection to marks. The number of provisional refusals has increased in recent years. Such situation is caused by an increasing amount of registered trademarks, on the one hand and, on the other hand, this fact confirms that the attitude to the examination and construction of legislation clauses among examiners is moving toward international standards. In fact, provisional refusal during prosecution, in most cases, is just another stage of procedure rather than the effect of failure at the stage of filing of the application.

Most common reasons for rejection of trademark registration

Requirements for trademarks are set out in Articles 5 and 6 of the On Protection of Rights on Trademarks Act of Ukraine. These clauses contain the exhaustive list of conditions under which a trademark will not obtain legal protection in Ukraine. The procedure of qualifying examination, to establish that a prospective trademark follows aforementioned clauses, is described in Paragraph 4.3 of the rules of drafting, submission and examination of the application on granting the certificate of Ukraine on the trademark, enacted by the Order of Ukrainian Patent Office No.116 of 28 July 1995 (hereinafter — the Rules).

According to data provided by the State intellectual property service of Ukraine, as of 1 January 2011 133,400 trademarks were registered, and on 1 January 2012 the number of registered trademarks was 150,077. So, it is obvious that the most common reason for rejection of registration of a trademark is admission of the mark in the application as identical or misleadingly similar to trademarks registered or filed for the registration earlier for identical or similar goods or services.

It must be pointed out that often such decision is the result of opposition from a proprietor of another trademark. Ukrainian legislation allows any person to submit an opposition to the registration of trademark before a decision of the qualifying examination will be made. Usually, players of a highly competitive market use this tool to prevent the registration of a trademark by their competitor, even if the similarity of two trademarks is not obvious, or if goods or services for which the trademark is registering are not similar or generic. If allegations in such opposition are set out reasonably then these allegations become grounds for rejection in trademark registration.

Another prevailing reason for rejection concerns descriptive, generic or deceptive marks. Often applicants register commercial slogans or names of special editions of their production as trademarks to use in advertising and for protection against ambush marketing or unfair competition. Such types of trademarks could include simple terms of certain goods (for example, in the mark Juices, the term juices will be generic for goods which could be defined as juices) or they could indicate a quality or other characteristics of goods which are marked with such a trademark. In this case a trademark will be admitted as descriptive.

A deceptive trademark means that a designation of a trademark could deceive consumers about origin or features of goods and the services under a certain mark. For instance, if the term Random Juice is being registered for nectars and mineral waters it will be likely admitted as a deceptive mark, because it includes a word, juice, which indicates special quality of that beverage, and nectars and mineral waters have different qualities.

One more reason, which also should be taken into account, is rejection on the grounds that a trademark violates rules of public policy, principles of humanity and morality. Paragraph 4.3.1.1 of the Rules states that a trademark will violate rules of public policy, principles of humanity and morality in case it includes pornographic designations, racist slogans, emblems and symbols of terrorist and extremist organizations, profanities, etc. Unfortunately, there is no definition of rules of public policy in current Ukrainian legislation. So, in fact, the clause which concerns violation of rules of public policy could be construed too broad by an examiner. In practice there were cases when a provisional refusal was issued on the ground that verbal elements of a trademark could cause clogging Ukrainian language and lead to violation of ethical rules and principles of morality. Applicants who use aggressive marketing policy in their business, must remember this reason because trademarks with sexual or military context, or with verbal elements which have dirty pronunciation in the Russian or Ukrainian languages, could face refusal.

All other reasons which are set out in legislation are not common in practice, because trademarks which don’t follow mentioned terms are usually useless in business or could lead to contention and companies try to avoid such registrations.

Avoidance of a provisional refusal

As was mentioned before, a provisional refusal contains assumptions of an examiner which is based on certain clauses of legislation. This means that such a decree will be issued only if there are grounds to assume that registration of a certain trademark will contravene statutory provisions.

The basic rule to avoid further decision of a rejection in registration lies in understanding the conditions of granting legal protection to trademarks and in knowing the procedure of qualifying examination. Preliminary evaluation of a prospective trademark must determine that designation is not descriptive, the generic or deceptive to goods and/or services for which it will be applied. Also, all possible infringements of commercial names, copyrights and industrial designs of third parties must be revealed, as well as the possibility of violation of public policy rules.

Another important step in avoidance of a refusal is a preliminary trademark research. Unfortunately, in Ukraine applicants have no permission to access the base of pending applications, so the best way to do trademark research is to apply to the Ukrainian Centre of Innovations and Patent Information Services, which is a state body and provides different services in intellectual property, including trademark research. It must be pointed out that a research report by the Centre of Innovations does not contain conclusions on registrability of a designation. It only has the list of trademarks and applications in certain classes of Nice classification, which include similar or identical elements with the proposed mark. So a lawyer or a patent attorney must provide a preliminary examination on his own or delegate it to experts of the Centre of Innovations.

There is a popular practice among IP lawyers and agents to file an application for a trademark registration with a list of goods and services which contains all possible goods or services from a certain class, even if most of them will not be marked by a mark which is designated in the application. There is an assumption that a trademark with larger list will get a larger protection. But according to Article 18.4 of the On Protection of Rights on Trademarks, if a trademark has not been used for goods and services, for which it was registered, for three years since a certificate of a trademark was granted, then any person can apply to a court to revoke the certificate in full or in part. In addition, increasing items in a list of goods and services will slow down a registration procedure as well as increase a risk of admission of a trademark as deceptive or similar to another trademark. Basically a list of goods and services relies on the results of a preliminary trademark research report to avoid a rejection in registration.

One more step in trademark clearance must be done if a prospective trademark is an abbreviation. Before the trademark application is filed it is necessary to ensure that it will not violate rights on abbreviations of international intergo-

vernmental organizations, which are protected by Article 6ter of the Paris Convention for the Protection of Industrial Property.

The online services of World Intellectual Property Organization (WIPO) allow identifying such type of protected intangible assets.

Overcoming a provisional refusal

According to the Paragraph 4.5.3 of the Rules, an applicant has the right to submit an opposition to a provisional refusal, with arguments in favor of registration of a trademark, which will be considered before the final decision of qualifying examination will be made.

In many cases the trademark clearance report shows that the probability of a provisional refusal is low. But it doesn’t mean that such probability is absent. Generally, a provisional refusal will be issued not earlier than eight or ten months after the filing date of an application. Even if there were low chances of rejection in registration, an applicant or his representative must prepare all the necessary documents and evidence for successfully overcoming a contingent refusal. According to legislation, there are two months from the date of receipt of a provisional refusal to submit an opposition.

If a provisional refusal contains assumptions that a mark in application is not subject to appropriate statutory clauses, an opposition must contain information that deny such assumptions. The key point here is that the examiner doesn’t try to prevent a registration, so it is unreasonable to take a defensive position and try to dispute the assumptions of an examiner. The purpose of an opposition is to persuade and ensure an examiner that a registration of a trademark will not contravene legislation and will not infringe the rights of third parties. That is why a policy which is directed at showing that an examiner made a mistake will not lead to a positive result.

So, the first step in drafting an opposition is to provide clear and reasonable arguments with proper evidence that will persuade an examiner that his or her assumptions were groundless. Sometimes such arguments can rely on reports by expert, sometimes on official documents of WIPO and sometimes even on court precedents.

In some cases it will be useful to show an examiner that a trademark’s registration is necessary to protect interests of consumers of goods and services under certain mark from counterfeits. According to Article 6.2 of the On Protection of Rights on Trademarks, trademarks designations which don’t have a distinctive character and didn’t acquire one due to their usage cannot be registered. Often applicants begin to use trademarks soon after an application is filed and sometimes even sooner.

So in many cases at the moment when a provisional refusal was issued, such a mark already had a distinctive character due to its usage. This is very strong argument in any opposition. A market research report will help to prove that a certain mark is already familiar among consumers and thus registration is needed to protect it from counterfeiting and to protect an applicant from acts of unfair competition.

Of course, market research is very expensive and small companies or sole traders cannot afford it. But today many businesses use their own websites or social media for promoting their goods and services and these resources could help too when it is necessary to show that a trademark is known among consumers.

It is important to remember that even if overcoming a provisional refusal has failed, an applicant still has the chance to register a trademark. Ukrainian legislation allows a final rejection in trademark registration to be overruled either by a decision adopted by the Appeal Chamber of State Intellectual Property Service of Ukraine or by a court decision.

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