Ufa businessman Azamat Ibatullin, known for litigation over trademarks, got a chance to register the rights to the Red Square brand. Rospatent refused to register these rights, stating that if a resident of Ufa would produce goods under the Krasnaya Ploshchad brand, this would mislead the buyers. The Moscow Arbitration Court disagreed with the arguments of the department, and lawyers do not see any legal obstacles to registering a brand with the Ufa copyright holder. Mr. Ibatullin does not disclose plans regarding the use of the brand.
The Moscow Arbitration Court declared unlawful the refusal of Rospatent in registering Ufa businessman Azamat Ibatullin with exclusive rights to the combined trademark "Red Square". The mark was acquired by Mr. Ibatullin from Moscow’s Red Square LLC, which specialized in real estate management, and in 2016 was declared bankrupt and is now liquidated (before the bankruptcy, the company belonged to Igor Gamayunov). The rights to the trademark extended to goods of the sixth, 19 classes of the MKTU and services of 36, 37 classes (metals, alloys, ores, building materials, asphalt, resins, tar and bitumen, insurance services, financial and construction activities, installation of equipment). The terms of the transaction of the parties in the case file are not disclosed.
In June 2017, Azamat Ibatullin applied for alienation of exclusive rights to the Krasnaya Ploshchad company badge and to register them, but was refused in March 2018. Rospatent said that if an entrepreneur registered in Ufa will produce goods under this brand, this will mislead the consumer about the place of production.
Red Square, the representative of Rospatent stated in the arbitration court, is the most famous and significant area of the country, has “a stable semantic meaning and unequivocally indicates a geographical object located in the territory of the city of Moscow”.
On the trademark owned by OOO Krasnaya Ploshchad, the lawyer of the department pointed out, depicts the domes of the Orthodox Cathedral, creating "an obvious association with the Cathedral of the Intercession of the Theotokos on the Moat located on Red Square on the Moat (St. Basil's Cathedral).
The court, satisfying the claim of Azamat Ibatullin, pointed to the groundlessness of the arguments of Rospatent, since the trademark “does not individualize the copyright holder, but the goods he produces. The location of the manufacturer of the goods does not matter to the consumer, since neither the quality of the product nor its characteristics depend on it. Matters the place of production of goods, which may not coincide with the location of the manufacturer, according to a court decision. By itself, registration of a trademark to the right holder, regardless of his place of residence, cannot mislead the consumer, the court noted.
Azamat Ibatullin refused to comment yesterday. He has not clarified his plans regarding the use of the trademark. Kommersant reported on other legal proceedings of the entrepreneur and his family members with Rospatent and the copyright holders for trademarks. In particular, over the years, Mr. Ibatullin tried to deprive the exclusive rights of copyright holders of such well-known Russian and international brands as Orbit, Stimorol, Khokhloma, Belomorkanal, and others. The entrepreneur lost most disputes.
“Rospatent often opposes trademarks containing geographical or geographic-related names,” notes Ekaterina Pronicheva, a partner at Claims law firm. “As a rule, the rule on consumer deception referred to by Rospatent is applied when the mark is not fully transferred, but only a few classes. I think the decision will stand in the appeal, and in the Court of Intellectual Property Rights. The main thing is the place of production of the goods, and the legal address of the right holder is of no fundamental importance. ”
Roman Rechkin, the senior partner of Intellect law firm, agrees that “Rospatent was reinsured by starting to fight an offense, which it probably won't be.” “The court correctly assessed the situation, stating that in itself the alienation of rights to a trademark can not mislead consumers about the properties of the goods. If the entrepreneur, when using it, will mislead consumers, this is a matter that is not related to the current dispute. However, proving misrepresentation is not easy. The rightholder of the mark can register a company or sell goods only in Moscow, ”the expert concluded.