An application for a trademark was filed by a Russian individual entrepreneur in 2022 and the registration No. 926023 was made in 2023 in Classes 03, 05, 21 and 35. The English language is not a strong point for most Russian people, so one may be surprised why an ordinary Russian entrepreneur all of a sudden coined a rather unusual composite word, and in English. 

The situation became clear soon. It so happened that a company under the same name DoggyMan H.A. Co. had been founded in Osaka, Japan. It trades in pet products and has partnered with Premium Pet in Russia, which sells animal food and pet grooming tools. Both companies learned about the registration and appealed against it. They argued that the registered trademark elicits associations with the Japanese producer and is, in fact, part of the company name of the Japanese company, and that the company’s products are sold in Russia under the designation which is very well familiar to Russian consumers. Both companies are partners and promote the name DoggyMan on the Russian market. Long before the priority of the Russian trademark the parties signed a supply contract in 2014 and successfully sold pet products in Russia. 

DoggyMan Co. has a series of trademarks worldwide. Its International Registration No. 1698068 for was extended to Russia and its trademark application for was pending during which examination procedure the patent office revealed confusing similarity with the Russian trademark No. 926023 (see above). As the situation unrolled, the owner of the Russian trademark started a campaign of sending out warning letters to distributors of DoggyMan products, which led to the DoggyMan Co. appealing against the registration of the Russian trademark No. 926023.  

The trademark owner put forward a number of flimsy arguments trying to retain her right to the trademark, which did not impress the Chamber of Patent Disputes. A company name is protected regardless of the registration. The right to the company name emerged before the priority date of the Russian trademark. This was not the only argument in favour of cancellation of the trademark.  

Finally, after detailed analysis of the arguments by both parties, the Chamber of Patent Disputes satisfied the appeal of the Japanese company in relation to Class 03. It should be pointed out that trademark No. 926023 was also registered in Classes 05, 21 and 35, which the Chamber of Patent Disputes did not recognize as similar to those sold by DoggyMan Co. and inferred that the Russian consumer would not be confused with regard to the goods in other classes. 

DoggyMan Co. sued the patent office at the IP court and asked the court to cancel the decision of the patent office. The reason for involvement of IP court was that in the opinion of the Japanese company, only part of the goods in Classes 03, 05, 21 and 35 was recognized by the patent office as similar, and their protection was cancelled while other goods were not recognized as similar and their protection was maintained. 

Indeed, the above classes include many goods that are not related to pet care, but the Japanese goods were and are sold under a company name which is protected from the date of registration. The consumer may be confused and think that any goods on the market, be it under the Russian trademark or under the Japanese company name, are produced by the Japanese company. Indeed the Russian trademark and the Japanese designation are highly similar because strong word elements are identical in both designations. With account for the documents submitted by the Japanese company, the court recognized that the patent office erroneously opined that the goods sold by the Japanese company do not confirm existence of associative links in the minds of consumers between the grooming pet goods and the Japanese company. The patent office inappropriately examined and evaluated the submitted documents in their entirety. Further, the court reminded the parties that the law forbids registration of a trademark identical or similar to a company name with earlier priority in relation to similar goods. 

It is interesting to note that an earlier Decree No. 10 of the Supreme Court explained that in order to recognize infringement no real confusion between a trademark and the disputable designation is necessary, only a threat of confusion is sufficient.  

In fact, the patent office recognized similarity of the designation. The decision of the patent office was appealed by the Japanese company because it did not agree with the conclusions of the patent office regarding similarity of goods covered by the trademark. The patent office refused cancellation of the trademark in Class 5 regarding such goods as amino acids for veterinary purposes, reactive paper for veterinary purposes and other similar products. The court agreed with the Japanese company in that those goods are similar to those sold by the Japanese company.  

The same situation exists in regard to Class 3: alum stones for shaving, aftershave lotions, shaving soaps, etc. were cancelled while the patent office retained protection for pastes for razor strops. The court indicated that the patent office was inconsequential in its conclusions: it cancelled a group of products in one case and retained protection for other similar products. Under these circumstances, the decision of the patent office was cancelled because it contradicts the law and violates lawful interests of the Japanese company. The court ordered the patent office to review its decision with consideration for the court judgment. 

Now, the patent office appealed against the judgment at the Praesidium of IP court with a cassation complaint. It insisted that it had correctly evaluated similarity/dissimilarity of goods. The patent office argued that some goods recognized as dissimilar may be used also for pets, which does not prove their similarity to the goods produced by the Japanese company. 

The cassation instance of the court dismissed the arguments of the patent office and upheld the judgment. Now the patent office will have to reconsider its decision and satisfy the initial appeal of the Japanese company. Cats and dogs will receive healthy food and grooming tools of good quality. 

Time and again history repeats itself with frightening recurrence. Before you go to the market you should register your trademark under which you are going to do business. Failing to do this will inevitably incur expensive consequences.