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Kitekat v MrCat – EU registered trademark is not protected in Russia

One company – Mars Incorporated – has registered the trademark for cat food in EU. The production of this company is sold and available in many markets, including Russian market. But this company is not only one trading cat food in Russia. There is also Russian company from Borisoglebsk town. This company also sells cat food in Russia. The ways of these companies in Russian market have crossed thanks to their trademarks.

Russian company has received protection for its trademark in 2016 – the trademark has been registered. The mark consists of cat image. The cat holds oval plate, framed with redline, in one paw and the other cat’s paw raised up and giving “thumbs up”. The oval plate contains word element “Mrcat” designed with original typeface and letters of the Latin alphabet. The cat is in bow tie. This trademark is used for individualization of products in form of pet food.

The Mars incorporated also has applied for registration of trademark in Russia. Its trademark also depicts a cat. Mars already has registered a trademark in EU in 2007 and products with this trademark were and still available for Russian consumers over internet outlets. The Mars company believes the trademarks at issue are similar to the point of confusion, therefore in order to let the Mars to register its trademark in Russia in priority order the registration of Russian company’s trademark is to be revoked. The revocation of Mrcat’s trademark would allow the Mars company to register its trademark in Russia. The Russian company did not agree with Mars’s position.

Mars also claimed that the Russian company infringed Mars’s copyright in image of cat. In order to support the claim the company provided an expert opinion. This expert stated that indeed he found similarity in “compositional construction” of both images, in proportional ratio of cats’ ears, noses and eyes size in relation to cat’s heads, in angles of both cats. Mars believes the both (similar) trademarks in Russian market would lead to the confusion of consumers and bear the risk of association between two trademarks. Such opinion is a result of research made by relevant organisation among 1500 respondents.

The Russian company underlined that the Mars did not provide any information on author and right holder of original image served as the basis for trademark at issue. The Mars has rights in trademark, but it does not have any rights in image itself, as the object of intellectual property. Mars’ cat has not been used as trademark in Russia for commercial purposes until the point when the Russian company applied for trademark registration. EU trademark registration is irrelevant for trademark disputes in Russia. Besides, there are no substantial similarities in graphical elements of both trademarks at issue.

After due and careful consideration of the case the Russian federal intellectual property service (Rospatent) has decided as follows:

  • the Mars company did not provide any evidence confirming ownership of copyright in depiction of cat, which allegedly has been illegally used in Russian company’s registered trademark;
  • Mars’ registered and protected in EU trademark is not protected in Russia;
  • from Mars’ position and arguments it is not clear in what depiction of cat the copyright has been infringed by the Russian company, because the Mars has provided different depictions of cat, including naturalistic.

Therefore the Rospatent did not revoke the Mrcat trademark registration in Russia because the Russian company did not infringe the provisions of Russian civil code on time priority and similarity of trademarks.