TRADEMARKS FORENSIC EXAMINATION
Trademarks forensic examination (examination of confusing similarity degree) is appointed in cases involving the issues of trademark infringement or questioning the validity of trademark registration. If the first type of cases usually deals with trial or pretrial investigation, the second one becomes subject-matter of deliberation at the Chamber for Patent Disputes.
Taking into account the relatively recent changes of the trademark legislation (The Act “On Trademarks, Service Marks and Appellations of Origin“ No. 3520-I of 23 September 1992 became invalid and was totally substituted by the Part IV of the Russian Civil Code from the 1st of January, 2008), the current legal background for trademarks forensic examination includes:
1. The Civil Code of the Russian Federation, Part IV (adopted by the State Duma on the 24th of November, 2006, approved by the Federation Soviet on the 8th of December, 2006, published in “Rossiyskaya Gazeta“, No. 289, December 22, 2006, effective from the 1st of January, 2008);
2. The Rules of preparing, filing and examination of trademark and service mark applications (approved by the Order of the Russian Patent Office (Rospatent) on the 5th of March, 2003, No. 32, registered with the Russian Ministry of Justice on 25.03.2003, reg. No. 4322, Moscow, 2003).
In addition, for the purposes of construction of the aforementioned regulations the experts often apply “The Guide to the special issues of trademark applications examination“ (approved by the Order of the Russian Patent Office (Rospatent) on the 23d of March, 2001, No. 39) and “Guidelines for evaluation of likeness of goods and services in the process of trademarks and service marks applications examination“ “ (approved by the Order of the Russian Patent Office (Rospatent) on the 27th of March, 1997).
P. 3 of the Article 1484 of the Civil Code stipulates that no one has the right to use, without the permission of the rightholder, indications similar to his trademark with respect to the goods for the individualization of which the trademark was registered or goods of the same type, if as the result of such use a likelihood of confusion will arise.
Due to the fact that the functions of public trademarks registration have been assigned to the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent), the criteria used by Rospatent in the process of state examination of trademark applications on the grounds of possible or impossible grant of protection are also applied to establish likelihood of trademarks to the confusing similarity degree.
The above-mentioned criteria are provided by the Rules of preparing, filing and examination of trademark and service mark applications. In accordance with p. 14.4.2 of the Rules a designation should be construed as confusingly similar to another one if it can be associated with the said designation in general, notwithstanding some particular distinctions. At the same time in order to find a basic opportunity of confusion of the goods, one should evaluate the degree of homogeneity with respect to the goods for which the compared marks are intended. Homogenous goods and services are understood to be that ones which pertain to the same gender and type, lacking distinctivity and creating in consumer’s mind an idea of their production by the same manufacturer.
In accordance with the effective legislation the goods and services cited in trademark applications must be indicated as pertaining to certain classes of the International Classification of Goods and Services (ICGS). The current version of ICGS includes 45 classes of goods and services, while each of them consists of many different groups of goods (generic terms).
In many cases the homogeneity of goods is apparent. Thus, “sour cream“ and “butter milk“ undoubtedly belong to the same gender. But in some other cases an examiner should substantiate his decision as to classifying of the goods as homogenous. For example it is not evident whether “steam cookers“ relate to the same gender of goods as “steam-raising units“ indicated in the 11th class of ICGS.
Some experts argue about homogeneity of such goods like beer and other alcoholic beverages (like vodka), flour-milling products and ravioli (pelmeni).
Goods can be considered as pertaining to the same gender as services, e.g. “computer programs“ (ICGS 9th class) and “computer programming“ (ICGS 42d class); “clothes“ (ICGS 25th class) and “dressmaking» (ICGS 40th class).
The homogeneity established, the examiner starts to conduct comparative analysis of designations on the grounds of confusing similarity. In such analysis the standards of sound (phonetic), graphic (visual) and semantic (meaning) standards are regarded, furthermore, significance of identical or similar element in the scope of the claimed trademark is taken into account.
According to p. 18.104.22.168 of the Rules
a) Phonetic similarity is to be found based on the following criteria:
- Availability of similar and coinciding sounds in compared designations,
- Affinity of sounds forming the marks;
- Location of close sounds and sound compositions relative each other;
- Availability of coinciding syllables and their position;
- Number of syllables in compared word elements;
- Location of coinciding sound compositions in the scope of designations;
- Closeness of vowels composition;
- Closeness of consonants composition;
- Character of coinciding parts of marks;
- Inclusion of one designation into another one;
b) Graphic similarity is to be found based on the following criteria:
- General visual impression;
- Type of font;
- Graphic spelling with account for character of letters (e.g. block or scriptory letters; capital or small letters);
- Location of letters relative each other;
- Color or combination of colors
c) Semantic similarity is to be found based on the following criteria:
- Likeness of notions, ideas expressed by marks, i.e. coincidence of meanings in different languages;
- Coincidence of one of the elements of the marks, being under logical stress and having an independent meaning;
- Polarity of notions, ideas expressed by marks.
d) The criteria cited in p.p. (a – c) can be taken into consideration individually as well as in different combinations.
The expert comes to conclusion on availability or absence of confusing similarity for consumers on the basis of analysis of the compared designations using the above-described standards.