Homogeneity of goods and services as an obstacle to the alienation of the exclusive right to a trademark

E. A. Konovalova,
patent attorney of the Russian Federation, intellectual property lawyer at Erfis LLC
     The problem of assessing the homogeneity of goods and services when registering the alienation of the exclusive right to a trademark in relation to part of the goods and services is analyzed, including significant differences in the approaches of Rospatent and the courts to assessing homogeneity. An algorithm for identifying homogeneous goods is proposed, including analysis of classes of the International Classification of Technical Regulations, identification of cognate words and semantic connections. Key words: homogeneity of goods and services; trademark; alienation of exclusive right.

     The category of homogeneity of goods and services occupies a central place in the institution of trademarks. Neither the examination of a designation when registering a trademark, nor the consideration of disputes about violation of an exclusive right, challenging the provision of legal protection, or early termination of legal protection of a trademark can be done without assessing the homogeneity of goods and services. Alienation of a trademark in relation to goods and/or services is also no exception.

     At the same time, the Civil Code of the Russian Federation (hereinafter referred to as the Civil Code of the Russian Federation) [1] does not contain a normative definition of homogeneity. The regulatory framework is limited to the following provisions:

- clause 45 of the Order of the Ministry of Economic Development of the Russian Federation dated July 20, 2015 No. 482 [2];

- paragraph 162 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 [3].

     The theoretical disclosure of homogeneity does not raise any special questions, since it provides a clear criterion - the attribution of goods or services by the consumer to the same source of origin, and also defines a list, although not exhaustive, of specific characteristics for establishing a conclusion. However, in practice, the issue of assessing homogeneity is more multifaceted, since the category is variable depending on the specific legal situation, as well as the subjective opinion of the person conducting the assessment.

     This work does not aim to rethink existing or propose new approaches to assessing homogeneity, but is intended to draw attention to existing regulatory gaps, differences in administrative and judicial practice, and also offers colleagues a possible tool for supporting transactions for the alienation of the exclusive right to a trademark in relation to some goods and services.

     According to paragraph 2 of Art. 1488 of the Civil Code of the Russian Federation, alienation of the exclusive right to a trademark under a contract is not allowed if it may cause misleading of the consumer regarding the product, its manufacturer or place of production. This provision imposes significant restrictions on transactions whose subject matter is only certain goods and/or services covered by the trademark. The homogeneity of the goods included in the subject of alienation, as well as goods in respect of which the legal protection of the trademark remains with the original copyright holder, acquires key importance, as it may become the basis for refusal to register the transfer of rights.

     In this case, it is necessary to take into account the peculiarities of assessing homogeneity when alienating the exclusive right to a trademark.

     The first factor influencing the assessment of the homogeneity of goods and services is the identity of designations. The peculiarity of partial alienation transactions is that the acquirer receives the right to a mark identical to the trademark of the original copyright holder, but in relation to a “dedicated” list of goods or services. This creates a situation where identical trademarks of different rights holders for different product positions can simultaneously exist on the market.

     The second influencing factor is the widespread practice in Russia of registering a trademark in relation to the entire required class of the ICGS, and not its individual sections. Registration of a trademark for different product groups is in itself the basis for an expanded approach to assessing uniformity: there is a need to assess additional factors affecting homogeneity: whether the product is a consumer goods, duration of use, cost of goods, etc. [4]

     The previously existing “Methodological recommendations for determining the homogeneity of goods and services during the examination of applications for state registration of trademarks and service marks” [5] contained the rule: “The stronger the similarity [of designations], the higher the danger of confusion and, therefore, the wider the range of goods that can be considered homogeneous.” The methodological guidelines have lost force, but this approach remains relevant, since in the practice of registering the alienation of trademarks there is a rule - the higher the similarity, the wider the circle of homogeneity. The identity of trademarks generated by alienation entails the use of an expansive approach to assessing the homogeneity of goods and services.

     Determining the balance between the freedom of the copyright holder to dispose of the right and the prevention of misleading the consumer, in the context of homogeneity, falls primarily on Rospatent, whose decisions can subsequently be appealed in court. Despite the fact that when determining homogeneity, the court and the administrative body proceed from the same approach, in practice their conclusions may differ significantly.

     Thus, in litigation in this category, the Intellectual Property Rights Court made/supported the conclusion that the goods “tea” and “coffee” are not similar to the goods “cocoa” (case No. A40-197933/2020 [6]), and clothing products are not similar to the goods “shoes”, “shoes” (case No. A40-182408/2014 [7]).

     At the same time, in the current practice of registration of alienations, there are such goods recognized by Rospatent as homogeneous, such as:

- hairsprays; nail varnishes (03 class MCGS) and varnishes (02 class MCGS);

- aluminum foil; metal foil and powder for 3D printing; metal foil for wrapping and packaging (06 class ICTU) and printing of designs; printing photographs; offset printing (40 class ICTU);

- billiard tables, billiard tables with advance payment machines, table tennis tables (28 class ICGS) and counters [tables]; tables on wheels for computers [furniture]; kneeling work tables; dressing tables; wash tables [furniture]; tables; tables for typewriters; tables for drawing, drafting; massage tables; metal tables; wall-mounted changing tables; saw tables [furniture]; desks; portable working tables; serving tables; serving tables on wheels [furniture] (ICTU class 20), etc.

     The practice of dealing with the alienation of the exclusive right to trademarks in terms of goods and services comes down to three ways to overcome Rospatent’s arguments about the homogeneity of the goods alienated and retained by the copyright holder:

1) reducing the subject of alienation by reducing the list of categories, which is not always interesting to the client;

2) expansion of the subject of alienation by including categories recognized by Rospatent as homogeneous, which gives rise to an additional expansion of homogeneity;

3) reducing the list of goods retained by the copyright holder.

The last method is used in our practice most often, however, such a reduction in the list requires a thorough analysis of the list of goods and services to identify possible homogeneity, and precisely from the point of view of the approach of Rospatent.

As a rule, a wide list of goods and services in respect of which a trademark is registered complicates the analysis of homogeneity by the need to evaluate a large amount of information, since it is necessary to compare each alienated category with the remaining one, and therefore there is a need to develop an algorithm for working with the list.

     In the course of supporting transactions of this type, our bureau has developed the following algorithm for working with lists of goods and services to identify homogeneity.

1. Identification of homogeneous classes of the ICGS in respect of which the trademark is registered.

At this stage, standard pairs of homogeneous classes are identified, for example, when alienating the exclusive right in relation to goods of class 05 of the ICGS, the lists of 03, 10, 44 classes of the ICGS will be reduced to a greater extent, and in relation to goods of class 12 of the ICGS - the lists of 07, 11 classes of the ICGS.

2. Search for similar-root headings.

Consists of searching for cognate words among alienated headings and headings left to the copyright holder. This method allows you to identify such groups of homogeneous goods as:

- means for cleaning teeth (class 03 MCGS) – dental floss (class 21 MCGS); medicinal toothpastes (05 class ICTU);

- food additives from protein (05 class MCGS) – proteins for the production of food additives (01 class MCGS);

- ammonia alcohol [detergent, cleanser] (03 class ICTU) - ammonia; ammonia alcohol (01 class ICTU).

     The significance of this type of search cannot be underestimated, since in practice it is widely used by Rospatent. It can be assumed that this is the method used to identify such pairs of homogeneous goods as:

- abrasive paper; sandpaper; polishing paper (03 class ICTU) - albumin paper; chemical indicator paper (01 class ICTU);

- developmental mats for children (28 class MCTU) – mats for yoga (27 class MCGS);

- heating pads for teapots (21 class MCGS) – heating pads (11 class MCGS).

3. Semantic search.

     Consists in analyzing semantic homogeneity, with differences in the lexical component. Includes, among other things, a search for synonymous concepts.

In practice, this method involves grouping all alienated goods into semantic groups. For example, for goods of class 03 ICGS such groups may be: cleaning products; polishing agents; cosmetics; hair products; nail products; aromatic products; shaving products, etc. Based on product groups, it is possible to identify the following homogeneous products that belong to the groups in meaning:

- cleaning products: sponges for household purposes; cleaning sponges (21 class ICTU);

- polishing products: abrasive tools [hand tools] (08 class ICTU);

- cosmetic products: pharmaceutical skin care preparations; food additives with a cosmetic effect (class 05 ICTU);

- hair products: hairdressing services (class 44 ICGS);

- nail products: sets of manicure tools (08 class ICTU);

- aromatic products: vanilla flavorings for culinary purposes (class 30 ICGS);

- shaving products: beard trimmers (08 class ICTU).

     This method allows you to identify homogeneity when using different terms to indicate goods.

     Despite the fact that new approaches to determining the homogeneity of goods and services are being proposed, establishing a conclusion about homogeneity is still situational and subjective. The main task when supporting alienation transactions is to find a balance between the interests of the client and the requirements of Rospatent. Principals, as a rule, are not ready to bring disputes of this category to the judicial stage; therefore, Rospatent’s broad approach to assessing homogeneity, based primarily on the principles of interchangeability and complementarity of goods and services, although it requires improvement, still occupies a central place when registering orders.

     Regulatory specification of the concept of homogeneity, unification of administrative and judicial practice would increase the legal certainty and predictability of state registration of the transfer of the exclusive right to a trademark, which would also have a beneficial effect on the institution of the exclusive right to a trademark as a whole.

List of sources used

1. Civil Code of the Russian Federation (part four) dated December 18, 2006 No. 230-FZ (as amended on July 22, 2024).

2. Order of the Ministry of Economic Development of the Russian Federation dated July 20, 2015 No. 482 “On approval of the Rules for the preparation, submission and consideration of documents that are the basis for performing legally significant actions for the state registration of trademarks, service marks, collective marks, Requirements for documents contained in an application for state registration of a trademark, service mark, collective mark, and the documents attached to it and their forms, the Procedure for converting an application for state registration of a collective mark into an application for state registration of a trademark, service mark and vice versa, the List of information indicated in the form of a certificate for a trademark (service mark), the form of a certificate for a collective mark, the form of a certificate for a trademark (service mark), the form of a certificate for a collective mark" (as amended as of March 1, 2023).

3. Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 “On the application of part four of the Civil Code of the Russian Federation.”

4. Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 No. 12 (as amended on March 25, 2022) “On approval of the Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, and their duplicates.”

5. Methodological recommendations for determining the homogeneity of goods and services during the examination of applications for state registration of trademarks and service marks. – Approved by order of Rospatent dated December 31, 2009 No. 198 (lost force).

6. Resolution of the Intellectual Rights Court dated July 30, 2021 No. S01-1144/2021 in case No. A40-197933/2020;

7. Resolution of the Intellectual Rights Court dated September 7, 2015 No. S01-743/2015 in case No. A40-182408/2014.