The Russian IP Court calls for Scientific Council to work out positions on trademark protection of a product shape
The need to grant legal protection to 3D trademarks is indisputable, while in practice trademark applicants in Russia face a restrictive interpretation of the current rules of law by Rospatent, especially if the claimed designation is the shape of a product or its packaging.
A modern approach to 3D marks, protecting the shape of a product, has some historical background. When reforming the trademarks laws in 2002, the legislator introduced restrictions for the shape of goods as trademarks. According to the new version of paragraph 1 of Article 6 of the Law «On Trademarks, Service Marks and Appellations of Origin of Goods», which was later replaced by subparagraph 4 of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, 3D marks consisting only of a shape of goods, which is determined exclusively or mainly by the property or purpose of goods, are not protected. Thus, the legislator excluded the possibility of the initial distinctive character in the shape which is determined solely or mainly by the property or purpose of the goods. But this does not mean that the legislator does not admit that in other cases the shape of the goods may have a distinctive character initially.
At the same time, the Rospatent Rules made the next step towards restrictions: The Rules generally exclude the possibility of the existence of the distinctive character of a shape of goods without long-term intensive use. The reasons for this restriction are clear: the regulator reacted that way to cases of abuse, but the response cannot be called adequate to the threat. As a result, the approach adopted does not correspond to either economic relations or the practice of other countries, which recognizes the fundamental ability of a shape of goods to have a distinctive character. At the same time, indeed, the burden of proving the presence of distinctiveness in the form of goods should rest on the applicant, but one can choose what exactly he needs to prove: that consumers are able to recognize a product by its shape initially, due to the originality of the form, or that consumers started recognizing the product by its shape over time, since a product of this form was brought to the market a long time ago and artificially created an associative relationship «the form of the product is the right holder».
This approach seems to be more reasonable than the currently adopted approach of Rospatent.
To some extent, the IP Court considered that issue in the case SIP-860/2019, where the Presidium of the Court pointed out the need to assess the initial distinguishing ability of the shape of the goods.
With regard to the form of packaging of goods, the Russian legislator did not impose similar restrictions other than those of any other types of signs, but the court practice worked out an approach, that a packaging shape can be protected if it is not traditional and functional.
In September 2021, the IP Court organized a discussion among IP academics and practitioners, regarding the scope of protection granted to 3D marks being the shape. The IP Court systematically calls for a meeting of the Scientific Council, where the IP practitioners can participate and share their views on the topic of discussion, and on September 10, 2021, such a meeting was devoted to defining a shape in a trademark.
The following questions were set up:
- Should the term «shape of the product» (subparagraph 4 of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation) mean exclusively an external contour of a product (a set of lines and contours that define the boundaries of the corresponding product in space)? Is it possible to take into account the International Classification of Pictorial Elements of trademarks when analyzing the shape of the goods and their elements (if so, to what extent)?
- How should we approach the evaluation of various elements of the shape; should we consider the corresponding designation as a whole (synthetic approach), or should we single out the elements of the shape and analyze them separately (analytic approach)?
- What circumstances should be taken into account when determining whether the shape of the product is traditional?
- Can patterns, stickers, colors on the product be considered as an element of the product shape?
After reviewing the discussion, it becomes clear that there is no unified view on any of the questions above. The Council agreed with the proposal given by Aleksey Zalesov, Managing partner of «A.Zalesov & Partners», that the term «shape of the product» should mean not just an external contour, but a contour that is visually perceived - in some cases, it comprises also additional elements of the shape, which are seen to consumers and contribute to distinctiveness. It is also important to mention, that our respected colleagues criticized the approach of Rospatent to disclaim the shape, granting protection to 3D marks, since disclamation is not seen to consumers: a mark is either distinctive on the whole, or not. In view of this, a position of the representative of Rospatent on this point is very reasonable, which suggests applying an analytic approach only when estimating confusing similarity with earlier trademarks, but the distinctiveness of the shape per se should be estimated on the whole. And, which is also very important, the respectful meeting came to the conclusion, that when estimating traditionally and functionality of the shape, Rospatent should consider existing analogs, but should not apply the same principles to the prior art and analogs, as when estimating originality of an industrial design: a shape may be not new, but consumers may associate it with a particular manufacturer, therefore, it may have distinctiveness for the specific market at a certain point of time.
If the IP Court decides that a summarized opinion can be made based on the discussion results it will issue a Review of the practice on the determination of the scope of protection of a product shape as a trademark, which will be very welcome in view of the current uncertainty of the scope of protection of three-dimensional trademarks in Russia.
by Irina Ozolina