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Tobacco Company Trademark Infringement Dispute

Tobacco Company Trademark Infringement Dispute

Svetlana Uskova commented to Delovoy Peterburg on the dispute between two tobacco companies - Petro LLC (St. Petersburg) and Samarin LLC (Moscow).

LLC "Petro" owns trademarks according to certificates of the Russian Federation No. 615526 and No. 310397 (among other things, for electronic cigarettes, as well as tobacco products). Both characters contain the letters "L" and "D". In 2017, a trademark was registered at Samarin LLC according to the certificate of the Russian Federation No. 646146, including for electronic cigarettes and related products; the sign includes the letters "L" and "T".Despite the opposition by the St. Petersburg company of its marks, which had an earlier priority, Rospatent in 2018 refused to satisfy the objection of LLC Petro to the granting of legal protection to the trademark of LLC Samarin. The department came to the conclusion that there was no similarity of signs to the point of confusion. As for the goods for which the trademarks are registered, Rospatent either established their heterogeneity, or noted that there is no threat of confusion of goods, since the marks do not cause similar associations. The decision of Rospatent was contested by the St. Petersburg company in the Intellectual Property Rights Court (SIP, case №SIP-26/2019), however, in the first instance, the SIP refused to invalidate the decision of Rospatent.

Commenting on this case, Svetlana Uskova noted that, according to the general rule, combinations of letters cannot be registered as trademarks. In this case, designations that have acquired a distinctive ability, although they consist of several letters, can receive registration. Regarding the parties to the conflict, Svetlana clarified: "The manufacturers proved during registration: consumers know their product and recognize it when they make a purchase."

Svetlana's full commentary can be found at site the publication "Business Petersburg". At the moment it is known that, as a cassation instance, the SIP left the decision of the court of first instance unchanged, and the cassation appeal of LLC Petro was dismissed.