The foreign owners of the intellectual property rights under the protection of the Russian Intellectual Property Court

Rospatent refused to register an individual entrepreneur’s trademark for telecommunications services on Russian trademark application No. 2022718292, since the verbal element of the claimed trademark «ФАЙБЕРБРИДЖ» (which is a Cyrillic transliteration of the English word «FiberBridge») phonetically reproduces the designation «FiberBridge» used by a US equipment manufacturer (ATTO Technology, Inc.) for communication services, which has become widely known to the Russian consumers of the relevant services and, therefore, may mislead them in relation to the provider of these services.

In the cassation appeal of the Intellectual Property Court (case No. SIP-394/2023), the entrepreneur referred, among other things, to the fact that the foreign manufacturer is registered in the United States, which country is committing unfriendly actions towards Russia. According to the entrepreneur, this circumstance confirms that the American manufacturer is not interested in using the trademark in the Russian Federation. Furthermore, the US company has not registered the designation «FiberBridge» as a trademark.

The Presidium of the Russian Intellectual Property Right Court did not agree with these arguments and its decision of 12 January 2024 noted as follows:

1. The specifics of applying intellectual property rights legislation to persons from countries committing unfriendly actions are determined by the government, but not the individual entrepreneur;
2. Unfriendly actions of the state are not a reason to mislead Russian consumers, since they may think that the disputed trademark refers not to the services of the individual entrepreneur, but to the American company.