What happened?

BAGGINS COMPANY LLC filed an application to register the designation BAGGINS as trademark for a wide range of goods and services (application No. 2021716396).

The Rospatent examination refused to register the trademark. The applicant filed an objection to the Chamber of Patent Disputes, however, and the Chamber supported the opinion of the examiner. The applicant, confident that he was right, appealed to the Intellectual Property Rights Court.

Arguments of Rospatent.

During the examination, Rospatent received an appeal from The Saul Zaentz Company containing arguments about the inconsistency of the designation with paragraphs 3 and 9 of Article 1483 of the Civil Code of the Russian Federation.

The Saul Zaentz Company (hereinafter referred to as the Company) was founded by American film producer Saul Zaentz, the company is known primarily for being the copyright holder of J. R. R. Tolkien's works about Middle-earth, including The Lord of the Rings and The Hobbit.

The company asked to refuse registration because:

  • Firstly, according to paragraph 3 of Art. 1483 of the Civil Code of the Russian Federation, the designation misleads the consumer, because the consumer will associate the designation with the works of J. R. R. Tolkien and their copyright holder;
  • Secondly, according to paragraph 9 of Art. 1483 of the Civil Code of the Russian Federation reproduces the surname of characters known in Russia without the consent of the copyright holder, we are talking about the hobbits Bilbo and Frodo Baggins.

Rospatent listened to the Company’s opinion.

Applicant's Arguments

The word "Baggins" was not coined by John R.R. Tolkien, but represents a real-life Anglo-Saxon surname.

In some translations of the novel "The Lord of the Rings", the surname is translated not "Baggins", but "Baggins".

In The Lord of the Rings, there are many hobbits named "Baggins", so consumers will not associate the name specifically with the characters Frodo Baggins and Bilbo Baggins.

What did the court decide?

The court asked itself the main question: does it reproduce trademark character of the work, that is, does this trademark use individualizing characteristics of the character that make him recognizable?

In answer to this question, the court reasoned:

  • The name (as well as its parts, for example, the surname) is one of the key individualizing features of a character that makes him original, recognizable and distinctive from other heroes.
  • An analysis of publicly available dictionary and reference sources has shown that the designation BAGGINS is not a lexical unit of any language that uses letters of the Latin alphabet in its writing.
  • The court found that the Company, on the basis of an exclusive license, has the rights to the works of J.R.R. Tolkien, as well as the exclusive rights to the 1978 animated film The Lord of the Rings.
  • Thus, since the designation BAGGINS uses the individualizing characteristics of the characters of the novel "The Lord of the Rings" and the animated film of the same name, Frodo Baggins and Bilbo Baggins, the designation reproduces these characters.

The court rejected the applicant’s arguments, stating:

  • Firstly, the word “Baggins”, although it represents a real Anglo-Saxon surname, is associated by the Russian consumer with the surname of the characters in the works of J.R.R. Tolkien;
  • Secondly, although there is an option to translate the surname as “Baggins”, the most popular translation is “Baggins”, not only within literary but also audiovisual works, therefore the Russian consumer associates the designation with the translation “Baggins”, and not “Baggins”;
  • Thirdly, it is true that many hobbits with the surname Baggins are mentioned in the works, however: (1) Frodo Baggins and Bilbo Baggins are key characters, through their actions the main plot of these works develops, due to which the surname Baggins will be associated among consumers with these characters; (2) in this case, even if the designation BAGGINS will be perceived as the name of another hero of the works of J.R.R. Tolkien, then this designation will in any case be similar to the character of the named works.

Based on the above, the court supported the position of Rospatent.