On 13 April 2009, “NTA-Privolzhye” information agency released a message that Rospatent issued a provisional decision about lawfulness of granting legal protection to the trade mark “Sarova” owned by “Mineral water and beverages” LLC. The legal protection was opposed by competitor, the “Greentown” company. Objections were based on the fact that Sarov is the place of production of the mineral water “Sarova”. Russian law prohibits using geographical names as trade marks.
Natalia Vasilieva, Trademark Attorney of Levant & Partners law firm, informed that on June, 2008, Rospatent made similar decision and granted the legal protection to the trade mark composed of the geographic name.
For this case Levant & Partners law firm prepared response to the refusal for granting of legal protection to a Finland trademark for marking of the low density (wood) chipboards. Production premises were placed in a little town which name served as a trademark. Rospatent provisional decision denied the grant of legal protection due to Clause 1 Article 6 Federal Law “On trademarks, service mark and appellation of origin” as a trademark consisted from a name of origin only.
In its opposition Levant & Partners law firm indicated that discussed town is out of the common geographical atlas and there are no other premises in this town. Documents filed in reviewing objections proved that this name is well known in Russia due to the intensive use before the date of filing the application and it is apprehended by consumers as a trademark.
Due to Clause 1 Article 6 Federal Law “On trademarks, service mark and appellation of origin” and Clause 220.127.116.11 Article 6 “Regulations of drawing, filing and reviewing application for legal protection of to a trademark or service mark”, restriction on using geographical name doesn’t apply for names which have got distinctive character as a result of using them. Chapter IV of the Civil Code of Russian Federation containes the same clauses.