WELL-KNOWN TRADEMARKS
because it is not afraid of “making Rospatent angry” by reversing its decisions. “It’s a great court. A very brave court, too.
It’s never shy to overturn decisions. In nearly two years of operation I have seen no case of bias. Litigation against foreign parties has been extremely fair,” he adds. Of the 149 brands that have achieved well-
known status in Russia, almost half are foreign. Familiar Western brands such as Coca-Cola, Chanel, Nike and Cartier rub shoulders with established Russian names such as Lada, the automobile made famous during the Communist era.
What constitutes well-known? Well-known is a subjective
term, but
there have been attempts by the Russian authorities to define it. Rospatent sometimes commissions opinion polls which, Arievich says, are the most “persuasive” feature for Rospatent when considering an application for well-known status. But these have to be “legally defensible” and
cover a broad scope of the population over a “justifi ed geographic span” rather than just relevant parts. Ford’s application to Rospatent initially suff ered from a lack of evidence, says Arievich.
Defi ning well-known is a problem that also exists
in other jurisdictions. Richard LaBarge, partner at law fi rm Marshall, Gerstein & Borun, says the US system operates on whether a brand is a “household name”. Inevitably, this produces problems for brands in a country as diverse and large as the US. Unlike in Russia, in the US Ford perhaps
benefi ts from being an industrial bastion that has a long history. LaBarge says other companies that have spent many decades sitting in the public’s imagination also benefi t from this system. He says the US Patent and Trademark Offi ce (USPTO) looks at “how long a company has been around” when measuring its fame. For modern companies, however, the question is
trickier, as LaBarge explains. “If the company hasn’t been around for more than a year then you might fi nd it too hard to establish yourself in the eyes of the USPTO. I don’t think the USPTO is particularly sophisticated at looking at evidence of online use as an indication of what people are familiar with, so they tend to look at traditional advertising dollars, rather than online presence,” he says. “Proving fame of a modern company using
an online presence instead of bricks-and-mortar stores will be tricky.” T is highlights a problem with measuring
the fame of a brand in the US. Foreign companies can establish themselves in the
www.worldipreview.com
World Intellectual Property Review May/June 2015
27
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