What name is better to register as a trademark? Does it require thinking up something original, or is it enough to indicate the type of services to be provided in the name, for example, selling tickets online? This is perhaps one of the most important issues when creating a new product or service.

The new edition on the 'Intellectual Environment' topic will answer these questions based on the notorious Afisha case as an example.

Afisha Company LLC owns the Afisha trademark, which was registered back in 1998. Last March, MTS PJSC registered the MTS Afisha trademark for its new service – an online platform for selling tickets to various events. In April 2020, based on the claim of Afisha Company LLC, the registration of the MTS Afisha trademark was partially cancelled, including with respect to ticket booking services for entertainment events.

Why did this happen? The Chamber of Patent Disputes established that the means of identification belonging to another entity (the Afisha trademark) were included in the MTS Afisha trademark, and goods and services in respect of which they were registered were similar or “uniform.” On these grounds, the Chamber of Patent Disputes agreed with the argument of Afisha Company LLC on MTS PJSC breaching Clause 10 Article 1483 of the Russian Civil Code when it registered its trademark.

Here is the translation from legalese into English: pursuant to Clause 10 Article 1483 of the Russian Civil Code, registration of a trademark may be invalidated if two conditions are met at the same time. Firstly, a trademark includes elements that have been previously protected (for example, another trademark). Secondly, both the trademark and the element included in it are registered with respect to uniform goods or services.

The term “uniformity” is defined in Resolution No.10 of the Plenum of the Supreme Court of the Russian Federation dated 23.04.2019: it means a high probability of an ordinary consumer perceiving that different goods or services belong to the same producer. In other words, if two goods have the same purpose and the same target consumers, they can be recognized as uniform (for example, in the Afisha case, ticket booking services for entertainment events and services on organizing sports and cultural events were recognized as uniform).

What consequences does this decision have? Firstly, the owner of the MTS Afisha trademark, despite investments and marketing activities, can no longer use it with regard to certain goods and services (for example, on tickets and other printed products, or in relation to services on providing online marketplaces). Secondly, the decision of the Chamber of Patent Disputes has a retroactive effect, meaning that the registration of the MTS Afisha trademark with respect to part of goods and services has been recognized unlawful from the moment of the application being filed. This allows Afisha Company LLC to claim compensation for the unlawful use of its trademark in relation to certain goods and services (for example, booking tickets for events) for the entire period when MTS PJSC used the word element “afisha,” even during the period it was formally legal (a similar conclusion was repeatedly confirmed by practice, e.g. decision of the Supreme Court of the Russian Federation on case No.A27-23197/2014).

What conclusions can be drawn from this case? Firstly, successful registration of a trademark is not a cure-all, since there is always a risk of cancellation. Secondly, a negligent approach to choosing a trademark can not only lead to wasting investments on its design, but can also create additional losses related to paying compensation (unless, of course, such widely publicized proceedings are an element of a PR campaign).

How to avoid such a risk? The sooner this question is raised, the greater the possibilities: if a company is just at the stage of developing name options, it would be well-advised to search in the Register of Trademarks, which will allow to avoid possible additional costs associated with litigation. You can do your own initial search on linkmark.ru.

If the trademark is already registered, it is worth taking a closer look at competitors with similar trademarks, since there may be grounds for cancelling their registration, for example, due to non-use for three consecutive years. If this is impossible, you should wait: if some trademark is partially identical or confusingly similar to another trademark, its legal protection may be cancelled within 5 years from the date of state registration. For instance, Afisha Company LLC was entitled to file a claim against MTS PJSC until March 2024.

Therefore, the phrase “How you name a boat, is how it shall float” takes on a new meaning: the original name will not only help attract customers, but will also significantly reduce legal risks.