{"id":2253,"date":"2018-07-06T10:25:26","date_gmt":"2018-07-06T10:25:26","guid":{"rendered":"http:\/\/www.dekuzu.com\/en\/?p=2253"},"modified":"2018-07-06T10:25:26","modified_gmt":"2018-07-06T10:25:26","slug":"kitekat-v-mrcat-eu-registered-trademark-is-not-protected-in-russia","status":"publish","type":"post","link":"https:\/\/www.dekuzu.com\/en\/2018\/07\/kitekat-v-mrcat-eu-registered-trademark-is-not-protected-in-russia.html","title":{"rendered":"Kitekat v MrCat \u2013 EU registered trademark is not protected in Russia"},"content":{"rendered":"

\"\"<\/a><\/p>\n

One company \u2013 Mars Incorporated \u2013 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.<\/span><\/p>\n

<\/p>\n

Russian company has received protection for its trademark in 2016 \u2013 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\u2019s paw raised up and giving \u201cthumbs up\u201d. The oval plate contains word element \u201cMrcat\u201d 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.<\/span><\/p>\n

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\u2019s trademark is to be revoked. The revocation of Mrcat\u2019s trademark would allow the Mars company to register its trademark in Russia. The Russian company did not agree with Mars\u2019s position.<\/span><\/p>\n

Mars also claimed that the Russian company infringed Mars\u2019s 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 \u201ccompositional construction\u201d of both images, in proportional ratio of cats\u2019 ears, noses and eyes size in relation to cat\u2019s 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.<\/span><\/p>\n

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\u2019 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.<\/span><\/p>\n

After due and careful consideration of the case the Russian federal intellectual property service (Rospatent) has decided as follows:<\/span><\/p>\n