Legal dispute between Sokolov Dental Studio LLC and Rospatent

What happened?

SOKOLOV DENTAL STUDIO LLC (hereinafter referred to as the Applicant) filed an application for registration of a trademark in relation to services of the 40th and 44th classes of the ICGS (application No. 2021776802).



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

The word “SOKOLOV” reproduces a well-known and common surname in Russia, and therefore does not have distinctiveness.

The phrase “DENTAL STUDIO” for the average Russian consumer means the place where medical services are provided, and therefore is descriptive and also not capable of individualizing the Applicant’s services, i.e. distinguish the applicant’s services from the services of other persons.

Applicant's Arguments

Despite the prevalence of the surname, this does not mean that the surname has come into general use. In addition, there are other registered trademarks that include the surname Sokolov.

The phrase “DENTAL STUDIO” is original and means a dental studio, further quote: “where there is a creative approach to teeth, something creative with teeth is created, dental creativity.”

The designation “SOKOLOV DENTAL STUDIO” is a reproduction of the Applicant’s trade name (i.e., the unique name of a legal entity, which in itself is an object of intellectual property).

What did the court decide?

The court supported Rospatent for the following reasons.

  • The surname Sokolov is well-known and common. At the same time, the Court cited data from various sources (from Wikipedia to scientific articles), according to which the surname Sokolov is among the ten most common Russian surnames.
  • If the surname is widespread on the territory of the Russian Federation, the lack of distinctiveness is presumed.
  • The phrase “DENTAL STUDIO” (DENTAL - dentistry, dental, dental; STUDIO - studio, workshop) directly indicates the area of ​​activity and purpose of services in respect of which registration of a trademark is sought, therefore the designation does not have distinctiveness.

Comment

The court in the present case made an important conclusion for future law enforcement practice: when registering a common surname as a trademark, the applicant must prove that the designation has acquired distinctiveness.

Distinctiveness means that the average Russian consumer associates a designation that includes a common surname with the applicant, thereby distinguishing the goods bearing the designation from other similar products as being from the applicant.

For example, the surname Pugachev/a is 421 on the list of the most common Russian surnames according to one of the sources cited by the court  ? , however, the trademark “ALLA PUGACHEVA” No. 213030 is obviously associated with the singer A.B. Pugacheva.

It is worth noting that the registry contains many trademarks consisting of common surnames, the distinctiveness of which is not obvious, for example, trademarks:

A decrease in such trademarks should be expected in the near future.