Trademark protection in the automotive industry: key points for manufacturers and distributors. CIS trademark practice. Digest # 04, 2018

Tatyana Lipovaya, Ph.D., Head of Licensing Dept., Trademark Counsel for IPR GROUP
Alyona Chernoknyzhnaya, Trademark Counsel for IPR GROUP
Alexander Fomenko, Trademark Counsel for IPR GROUP


In the last decade, the automotive industry has witnessed a drastic evolution. Technological developments have led to some innovations in vehicles, which need proper protection. The effective protection of intellectual property rights is key to successful business strategy and development. Automotive companies need to constantly review their trademark portfolios to ensure that relevant goods and services cover their key marks, as the automotive industry continues to expand.

World major trends in automotive industry developments, also embrace the CIS (Russia, Ukraine, Kazakhstan, Belarus, Armenia, Azerbaijan, Georgia, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan, and Uzbekistan) rapidly growing market. Automotive companies and their dealers in Russia, Ukraine and in other CIS countries, face a number of provisional refusals in protecting their trademarks. Sometimes this happens because auto manufacturers have evaluated approaches and probability of registration of their brands in the countries of our jurisdiction by virtue of the law and procedures established in the EU and the US, without proper attention to peculiarities of the national laws and requirements.

Moreover, automotive companies usually have an intention to register their brands only in one or two classes that clearly relate to the auto sector. Traditionally, automotive trademarks have been filed in Class 12 for vehicles and 37 for repair services alongside a few other related classes such as 07 – for motors and engines, 09 – for batteries, 11 – for headlights, or 39 – for rental.

However, with a view of new trends in innovation and developments in the auto market, based on the use of new communication technologies for driving and tracking vehicles, hands free driving, etc., a number of additional classes with binding goods and services should also be considered during registration. For example, electronic equipment and related vehicle tracking services are in Class 09 and 39, motor and lubricating oils – in Class 04, tuning of car windows – in Class 40, internet and telecommunications services are in Class 38; which are normally registered by telecommunications companies, and by auto producers as well.

Thus, in our current practice, auto companies revert to us with a number of provisional refusals for evaluation by our experts and continuous advice. The most popular ground is a similarity of designation filed by an auto company for particular auto parts (such as filters, electronic and tracking systems, lights, etc.) to the goods of other manufacturer (s), not particularly involved in auto manufacturing.

In this article, we will like to revert to the major grounds for refusals of auto companies’ trademarks, which they could face in countries of our jurisdiction at the stage of substantive examination. We also consider our approaches and arguments to overcome them.

A separate subject to review is our successful practice in obtaining protection for iconic brands of automotive companies, which are known by their unique or exclusive cars. We will concentrate some attention on this issue below:

1. Types of provisional refusals:

A trademark could be refused on the following grounds:

On absolute grounds:

What are the most common absolute grounds for refusal of registration of the trademark, which might face representatives of the automotive industry, while registering their marks in the CIS countries?

• Non-distinctiveness of a trademark, which represents a simple combination of letters and/or digits

According to the Rules of Examination in some countries, especially in Russia, Tajikistan and Uzbekistan, a designation that has no distinctive ability, may not be registered as a trademark since it particular consists of letters, numbers having no specific graphic implementation or a combination of letters that have no verbal nature.

In Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Kyrgyzstan, Moldova, Turkmenistan and Ukraine, the rules are not so restrictive and such marks are eligible for protection if no other grounds of refusal of protection are cited by the Office.

The marks consisting of letters/numbers or combinations thereof having no verbal nature, as a rule, could obtain protection in Russia, if the mark is implemented in a stylized manner and therefore, has the required distinctiveness.

Letter and number combinations are largely used by automotive producers for identification of car models (e.g. Mercedes-Benz CLS, Infiniti QX56, Infiniti EX35, Aston Martin DBS V12, Lexus GS, Mazda RX-7, Honda CRX etc.) Thus, the above-mentioned ground for refusal should be kept in mind in filing the application for the marks which consist of letters/numbers or combinations thereof.

• Non-distinctiveness of a trademark, which represents signs that are commonly used as the signs of goods and services of a certain kind, constitutes commonly used symbols and terms, consisting of signs or data that are descriptive while being used for goods and service defined in the application or with respect to them.

It should be noted that according to the national trademark legislation and examination practice, if descriptive elements or elements that do not possess any distinctive ability are used in the trademark, they could be included in the trademark as non-protected elements (so called “disclaimed elements”), if they do not occupy a dominant position. The provisional refusal of a trademark on the abovementioned reason is feasible in Russia, Armenia, Kazakhstan, Uzbekistan, Tajikistan, Turkmenistan and Azerbaijan.

We could refer to the case of NIO CO., LTD. – a Chinese company, focused on the design and manufacture of smart and high-performance electric vehicles, which was faced with the refusal of IR 1323930 TM NEO 650R and IR 1322089 TM NEXTEV TCR in Uzbekistan.

The Examination considered that the elements “650R” and “TCR” have no distinctive ability, as the first one represents a simple combination of a letter and digits having no verbal nature, and the latter is descriptive in respect of the applied goods and services, as TCR is the generally used acronym, which stands for “Touring Car Racing”.

The client has provided his consent to disclaim these elements. However, an alternative option to try to avoid a disclaimer, is to prove the distinctive ability of the trademarks obtained as a result of their active use in the territory of Uzbekistan before the date of filing the application, and therefore, the fact that the said trademark has become recognizable and identifiable within the relevant circles of the consumers.

As it is known, a disclaimer doesn’t physically remove the disclaimed matter from the mark. It just means that the trademark owner will not get exclusive rights to the disclaimed wording.

In some countries, such as Armenia, it is required to submit a response to the office accepting a disclaimer, otherwise, the final decision with a refusal could be issued.

According to the current trademark legislation in Ukraine, it is possible to get a grant of protection decision for the trademark, which includes a non-protectable element without disclamation, but it would be impossible to exercise an exclusive right for such an element. Thus, the bibliographic data of the majority of the trademarks registered in Ukraine under the national procedure with the “non-protectable” element does not contain any information under the INID code (526). However, the applicant, at their discretion, could request the disclaimer of the separate element at the time of filing the application, or at a later stage, until the grant of protection decision is issued for the mark by the UPTO.

For example, we would like to mention the following trademarks registered in Ukraine in respect of such goods in class 12 as “parts for automobiles” without disclamation in the names of different entities: TM Automotive_2018_ORYX Certificate № 155042, TM Automotive_2018_MX Certificate № 172773, TM Automotive_2018_ALMI Certificate № 175834, TM Automotive_2018_ATP Certificate № 214185, TM Automotive_2018_AGK Certificate № 216021, etc.

The registration of the above-mentioned trademarks confirm that if a company manufactures and/or sells parts for automobiles and its mark includes the non-dominant generally used terms such as “parts for automobiles/auto parts/automobile spare parts”, which are descriptive in respect of claimed goods/services, such a mark could be registered without a disclamation. However, the verbal element “parts for automobiles/auto parts/automobile spare parts” could be included in other marks and no one can claim exclusive rights to that wording.

• Applied trademark is contrary to public interest.

In some Asian countries, where religious principals and traditions are dominant, a trademark could be refused as contrary to public interest, principles of humanity and morals. Thus, it happened in Tajikistan, to IR 783345 TM DIABLO.

We submitted a set of arguments that the mark was unlikely to be perceived by customers in Tajikistan as having any negative or immoral meaning, especially considering that the subject mark applied for tires.

We drew the attention of the Examination to the world fame of the applicant’s company and the range of motorcycle tires under the applied trademark, which became a world bestseller with more than 5 million tires sold in 10 years since the launch of the Diablo series in 2002.

The Examination accepted our arguments and granted rights protection to IR 783345 TM DIABLO in Tajikistan.

• Applied trademark presents only the form caused by the natural state of goods, or by the necessity to obtain a specific technical result, or the form imparting essential value to the goods.

The trademark legislation in Ukraine prevents the registration of trademarks, which represent the shape that results from the nature of the goods. It is not concerned with preventing the registration of marks representing distinctively shaped goods, which can function as trademarks, but rather, shapes that result from the nature of the goods. Further, we would like to describe one of our cases, vividly illustrating such a ground for refusal:

The famous British automotive company JAGUAR LAND ROVER LIMITED filed the application for registration of the trademark Automotive_2018_JLR for goods in classes 12 and 28 in Ukraine.

The subject application was refused by the UPTO at the stage of the substantive examination on the grounds that: “the trademark is descriptive in respect of applied goods in classes 12 and 28, i.e. “motor cars”, as it represents the realistic display of the form of the real or toy motor car, and, therefore, refers to the type of goods, for which the mark is applied”; and “the trademark is misleading for other goods applied in classes 12 and 28”.

While analysing the first ground for refusal, as well as the possibility of registering trademarks that represent the external view of the motor car, it should be noted that the modern automotive industry provides thousands of variants of motor car external views and a lot of new variants are created yearly. Moreover, new variants are created mainly with one purpose – to differ the vehicle of one manufacturer from the goods of another.

The subject mark represents the outer appearance of a motor vehicle produced by JLR since 2011.

The distinctive feature of the applied designation is the original and eye-catching V-shaped silhouette of the car body, formed by the inclined “floating” roof, rising glass line, and narrow rear window, which, on the whole, creates a dynamic impression. The design of the entire vehicle exterior is unique and original and does not admix with other products on the market.

It should be noted that the fame of the mark among the consumers is an important aspect in overcoming the refusals based on the ground of non-distinctiveness of the applied marks. As to the present case, the uniqueness and originality of the exterior design of the vehicle applied for has not only been declared by the manufacturer but has also been recognized by professionals and consumers.

In particular, this design has won numerous awards, including the “Design of the Year” in 2011 according to the portal Car Design News, «Car of the Year” 2011 version of a specialized TV program Top Gear, «World Design Car of the Year” 2012 World Car Awards, and others. The foregoing facts confirm the distinguishing capabilities of the applied mark.

The cars produced by the JAGUAR Land Rover Limited have been available on the Ukrainian market for a long time and the company has high volumes of sales in Ukraine, which confirm that cars manufactured by JAGUAR Land Rover are very popular among Ukrainian consumers, and so the risk of confusion or misleading the average consumer is low. The information about the actual use of the applied trademark in the territory of Ukraine confirms that the applied mark has obtained the distinctive ability.

In our objection, we also referred to the fact that prior to the JLR application, a lot of trademarks were registered in Ukraine, which also represented the outer appearance of a motor vehicle. For example, trademark Automotive_2018_CAR1 under the Certificate of Ukraine No. 58939. This trademark, owned by GENERAL MOTORS LLC, is registered for all kinds of vehicles included in class 12, as well as for goods and services in classes 28 and 37. The above list of registrations, which were not rejected on absolute grounds like «realistic depiction of the form conditioned by functionality» can be extended with the following registrations: Certificate No 62036 TM Automotive_2018_CAR2 for 12, 35, 37 classes; Certificate No 169520 TM Automotive_2018_CAR3 for 7, 12 classes; Certificate No 134593 Automotive_2018_CAR4 for 12, 28, 35 classes; Certificate No.163152 Automotive_2018_CAR5 for 12 class.

In our opinion, if such marks were not considered by the examination as a «realistic depiction of the form conditioned by functionality», the distinctiveness of the application by the JLR trademark is even higher than distinctiveness of trademarks we refer on, and this allows consumers identify a manufacturer in a proper manner and, thus, performs the function of a trademark to be distinctive.

By analyzing another absolute ground for refusal, i.e. “the mark is false for goods of the12 and 28 classes, other than motor cars”, we advised the client to limit the list of applied goods of Class 12 by a notion “automobiles”, i.e. by the goods for which the trademark has the distinctive ability and properly executes its distinctive function by generating associations with a producer of the goods, as well as to exclude a term “games” from the specified list of goods of class 28. The proposed limitation of goods was accepted by the Examination.
The above-mentioned arguments were accepted by the Examination, and the refusal decision for TM Automotive_2018_JLR was successfully overcome.

Our practice shows that if the trademark represents the image of distinctively shaped goods liable to generate associations in the mind of the consumer with the real manufacturer of the goods, such a trademark is subject to registration.

The subject case is currently in use by professors of the Ukrainian Institute of Intellectual Property in instructing young IP specialists, as an example of trademark examination practice and the successful overcoming of the refusal decision and professional approach of the trademark attorneys involved.

– On relative grounds:

According to the Trademark Law in CIS countries, a designation cannot be registered as a trademark if it is identical or confusingly similar to a previously registered trademark in a particular country on behalf of another person or in respect of homogeneous goods /services.

The most recent provisional refusals are issued on the grounds of confusing similarity of applied trademarks of large car producers.

According to the Examination practice in Ukraine, the likelihood of confusion is first of all estimated by the Office in Ukraine (UPTO) as to the similarity of the verbal elements of the conflicting marks, on which the attention of the consumers is primarily focused and accordingly, the overall impression of the mark is created.

However, other factors such as non-homogeneity of the list of applied good/services, difference in the parties’ activities, overall impression, created by the trademark on customers, use of the trademark for labelling products/services in retail and in online trade, etc. could also be taken into consideration by the Examination.

Therefore, to successfully overcome the refusals on relative grounds in Ukraine, it would be important to convince the Examination of the differences in the trademarks implementations. In a case of identical verbal elements, important arguments could be different activities of the companies in question or limited access of customers to the goods and services of a particular provider, which prevent confusion on the market as to the producer of goods and its accurate identification by customers.

In some cases, with the aim to prevent receiving an Office Action or to overcome it at the stage of substantive examination, we recommend to limit the list of applied goods/services specification to be used by the applicant.
Particular cases below can give us more detailed information:

– IR 1315964 TM INGENIUM in Ukraine;

The IR 1315964 TM INGENIUM, applied by Jaguar Land Rover Limited (JLR), was refused in Ukraine for all goods applied for in class 09, as it was considered by the Examination to be confusingly similar to the TM Ingenium, IR 855855, and TM IR Automotive_2018_Ingenium 855865, earlier registered in Ukraine for goods in classes 09 and 11.

As the verbal element of the trademarks in questions were identical, the only chances to overcome the refusal was to convince the Examination that the goods under the applied and opposed trademarks were used by different customers to cover different needs, and thus would not lead to conflict on the market.

Having analyzing the grounds for refusal, it was revealed that the designation INGENIUM was used by JLR only for marking engines, while the opposed marks were used for smart lighting systems production. Thus, products such as engines for JLR vehicles were intended to be used only by specialists of professional knowledge and skills in vehicles, who are able to properly identify the manufacturer of the goods, and not only by a trademark. Therefore, the probability of misleading the consumers on the market as to the manufacturer of the goods was low.

As some goods in the specification of the applied trademark INGENIUM were claimed broadly, not in relation to their particular use in engines, it was proposed to limit the list of applied goods as well. Taking into account the above mentioned differences in the areas of activity of the companies and the use of the marks regarding different types of goods, and, accordingly, differences in the targeted groups of consumers and distribution channels.

By providing the mentioned arguments and undertaken goods limitation, the refusal was successfully overcome.

– TM INGENIUM IR 1313854 in Ukraine;

Another JLR’s trademark INGENIUM, IR 1313854, was also refused in Ukraine for all applied goods in class 12, as it was considered by the Examination to be confusingly similar to the following marks: ТM GENIUM IR 619769, ТM INGENIA IR 1070854 and ТM Automotive_2018_Ingenia IR 1184347, earlier registered in Ukraine for goods in class 12 in the names of third parties.

As in the case with IR 1315964 TM INGENIUM, the subject refusal was overcome through filing an objection based on the argument in favour of dissimilarity of the marks in question by visual, phonetic and semantic criteria.

In our objection, we also referred to differences in the areas of business activity of the owners of the marks, and, accordingly, differences in the circles of consumers and distribution channels. The applied mark INGENIUM is used by JLR for engines, the opposed mark GENIUM is used for electric instruments, while INGENIA GmbH is the leading specialist in construction of wire pickling plants, tube treatment systems and galvanising lines. It was also noted that as the applied mark INGENIUM was used for marking the engines in combination with one of the main trademarks of the JLR, namely TM JAGUAR, which additionally helps consumers to identify the manufactured of the goods in the proper way.

As a result, the trademark IR 1315964 TM INGENIUM was also granted protection in Ukraine.

There are some peculiarities in obtaining trademark protection for designations with similar figurative elements, which do not possess any verbal elements.

IR 1331401 TM Automotive_2018_FIG1 in Ukraine;

The IR 1331401 TM Automotive_2018_FIG1, held by Horacio Pagani – Italian producer of sport cars famous by their unique design, was refused in Ukraine for all goods applied for in class 12, as it was considered by the Examination to be confusingly similar to the TM Automotive_2018_FIG2, Certificate of Registration No 199929, owned by Shengheng Investment Corporation (Beliz), earlier registered in Ukraine for goods in classes 07 and 12.

As we can see from the images, there is a high range of similarity of the marks in question, due to very similar graphical elements, which are of low distinctive ability, and an absence of any verbal elements in the marks. Their goods specifications in class 12 were also homogeneous, accordingly, a likelihood of confusion among the relevant circles of consumers as to the manufacturer of goods existed.

Bearing in mind the above, it was obvious that the owner of the opposed mark would not be inclined to issue the Letter of Consent for registration of the subject mark in Ukraine. We also would like to note that the opposed mark was in the grace period for non-use cancellation.

In this situation, it was only feasible to try to overcome the refusal by filing an objection based on arguments in favour of the fame of the Pagani Automobili S.p.A., as an Italian manufacturer of exclusive sports cars made of carbon fibre, among a peculiar range of customers in Ukraine and all over the world.

We also mentioned the dissimilarity of the marks due to the different locations and number of graphical elements in the devices, and provided evidences of Pagani’s trademark use in Ukraine, confirming that the mark had become recognizable by a particular range of customers.

The arguments were accepted by the Examination and the trademark obtained a grant of protection in Ukraine.

– IR 1132113 TM Automotive_2018_CARGO in Ukraine;

In this case the IR 1132113 TM Automotive_2018_CARGO, held by Robert Bosch GmbH, was partially refused in Ukraine for all goods applied for in class 12 and services in classes 37 and 40, because it was considered by the Examination to be confusingly similar to the following trademarks:

  • TM CARGO, Certificate No 40254, owned by FORD MOTOR COMPANY, LTD (US), earlier registered in Ukraine for the goods in class 12 and services in class 37;
  • TM CARGO, Certificate No 86163, owned by an individual person Mr. Sapaty (UA), earlier registered in Ukraine for similar services in class 40;
  • TM CARGO, IR 644971, owned by Barum Continental, spol. s r.o. (CZ), earlier registered in Ukraine for similar goods in class 12.

The strategy for obtaining trademark protection was focused on a recommendation to approach the owners of the opposed marks for Letters of Consent.

However, an alternative method, though less reliable, was used, – to overcome the refusal by filling an objection in favour of dissimilarity of the applied and opposed trademarks, particularly by a visual criterion, taking into account the fact that the verbal element “CARGO” had a low distinctive ability for the goods, especially applied for in class 12. In addition, different focus of the parties’ activities was mentioned, as the applied trademark was used for the production of electrical spare parts and units for vehicles and their promotion was via a special on-line portal. In contrast to this, the owner of the trademark No 40254 names the truck model; the holder of the certificate No 86163 used the mark for freight and passenger transportation; and the IR 644971 was used for marking tires for passenger cars.

Detailed information on the activities of Robert Bosch GmbH, holder of the IR 1132113 in Ukraine, was provided to support arguments in the objection to prove that the customers in Ukraine were well-informed on the activities of the manufacture and availability of the goods/services under the trademark Automotive_2018_CARGO in Ukraine. Therefore, they were able to distinguish and recognize products/services under the applied trademark amongst others available on the market and associate them with a particular producer.

The strategy was successful and the trademark was registered for all applied goods and services in Ukraine.

In Belarus, the approach of Examination is more precise, and in a case of close similarity of verbal elements in the marks of producers of cars and car parts, the provisional refusals can be overcome only by providing a letter of consent.

– IR 1347096 TM MAN in Belarus;

Thus, the IR 1347096 TM MAN, held by MAN SE, was partially refused in Belarus for some applied goods in classes 01 and 04, because the mark was considered by the Examination to be confusingly similar to the TM Automotive_2018_MANN_FILTER, IR 909597 and TM MANN, IR 924815, both owned by MANN+HUMMEL GMBH (DE), earlier registered in Belarus in respect of goods in classes 04, 07 and 11.

Bering in mind a high range of similarity of the marks in question, especially by identical wording “MAN” and homogeneity of the list of goods, as both trademarks are used for the productions of filters, and accordingly, an existing likelihood of confusion among the relevant circles of consumers as to the goods manufacturer, filing an Objection with arguments in favour of the dissimilarity of the marks in question was not an efficient solution in this case.

Therefore, we support that the suggestion to approach the owner of the opposed marks for the Letter of Consent (LOC) was the most reliable way to overcome the refusal.

It is also important to note that for closely similar trademarks, such as IR 1347096 and IR 924815, there is a risk that the LOC would not be accepted by the examination, as the Law protects not only the manufactures, but the consumers as well.

Having no possibilities to limit the list of applied goods, it was advisable to file the Objection grounded on the LOC and the evidences of use of the trademark MAN in Belarus.

The LOC and evidences of use were sufficient to overcome the refusal, since MAN SE entered the market of the Republic of Belarus quite a long time ago, is widely represented there and could be recognized by the relevant circles of customers.

– IR 1347096 TM MAN in Tajikistan;

The IR 1347096 TM MAN was also partially refused in Tajikistan in class 04 on the same grounds – because the mark was considered by the Examination to be confusingly similar to TM Automotive_2018_MANN_FILTER, IR 909597.

As in the above case, we suggested to provide a Letter of Consent from the owner of the cited mark, as due to the close similarity of the dominant verbal elements MAN and MANN, arguments alone may be not sufficient to overcome the refusal.

As both companies MAN SE and MANN+HUMMEL GmbH have long history of coexistence in the market, the Consent was granted, which eventually resulted in a successful outcome.

IR 1278121 TM TRIATHLON in Russia;

In the case of IR 1278121, the trademark TRIATHLON of Pirelli Tyre S.p.A. was refused in Russia for all applied goods in class 12, as the Examination considered that the mark had no distinctive ability and was merely descriptive in respect of the purpose and properties of the applied goods.

We suggested our client to support arguments on the fanciful character of the mark with a solid set of evidences of trademark use in the market of Russia, which proved that trademark had become recognizable and identifiable within the relevant circles of Russian consumers.

We also pointed the attention of the Examination to the fame of the applicant’s company and the trademark itself, obtained as a result of its active promotion and actual use.

Our arguments and documents were accepted by the Examination and a grant of rights protection decision was issued by the Russian PTO.

IR 783345 TM DIABLO in Kazakhstan and Ukraine;

IR 783345 TM DIABLO of Pirelli Tyre S.p.A. was refused in Kazakhstan and Ukraine, citing the identical TM DIABLO, earlier registered by Automobili Lamborghini Holding S.p.A. (IT).

Both companies and their main brands are quite recognizable not only by consumers, but also by the general public, due to their long history and different business activities.

Pirelli Tyre S.p.A. is focused on the design and manufacture of a wide range of vehicle tyres, while Automobili Lamborghini Holding S.p.A. is a manufacturer of luxury supercars.

It is a widespread practice that tires and vehicles are produced by different manufacturers, and the car manufacturers usually partner with selected tyre manufacturers, as their cars are assembled with tyres of a particular brand.

We should note that these trademarks peacefully co-exist in Italy, the country of origin of both companies, as the applied trademark had been registered there since August 22, 2002, while Automobili Lamborghini Holding S.p.A. owned national registrations for TM DIABLO No 0000846414 since 2001 and TM DIABLO VERBALE No 0001321950 since 2008.

The Examination in both Ukraine and Kazakhstan accepted the Letter of Consent, which was provided by Automobili Lamborghini Holding S.p.A., and issued a grant protection to trademark of Pirelli Tyre S.p.A.

We should note that registration of identical simple word marks in the same class, even with the Letter of Consent is not possible in all CIS countries, moreover it should be considered separately for each particular case. For instance, in Russia it is not recommended to try to achieve protection until such an obstacle removed, i.e. cancellation or assignment of the cited trademark due to the more strict approach of the examination.

IR 1174163 TM ICE ZERO in Tajikistan;

In the case of IR 1174163 for trademark ICE ZERO of Pirelli Tyre S.P.A.., it was refused in Tajikistan, citing IR 791222 TM X-ICE, owned by Compagnie Generale Des Etablissements Michelin.

We assume that the Examination considered that X-ICE could be perceived by consumers as ten-ICE and therefore the tyres under the marks with identical verbal element ICE and different numerals could be associated by consumers as a different series of the goods of the same manufacturer.

Therefore, we suggested to obtain a Letter of Consent, which eventually was granted by Michelin.

Consequently, our Objection was successful and TM ICE ZERO was granted rights protection in Tajikistan.

2. C&D Letters

In a separate direction, we should also mentioned C&D letters. C&D letters are a good instrument to prevent or stop infringements of trademark rights in domain names and contents of web sites in the CIS.

In our practice, we have handled a number of C&D cases for JLR, where their rights were infringed in domains by the use of names of the registered trademarks as well as by placing images of the registered trademarks in third party websites.

The most popular infringements are related to the use of the JLR trademarks to promote auto services and supply car parts by third parties, which according to Trademark Law, is not allowed without holder’s permission and could lead to a possibility of confusion in the market.

Domain disputes are usually subject to court proceedings. However, the approach of sending C&D letters before initiating a court procedure has proven effective. In 80-90% of cases, these letters have been efficient, and prevent the holders from being involved in a long-term and expensive court procedure.

In some countries, such as in Russia, sending a C&D letter became a part of the obligatory pre-trial settlement in cases intending to initiate a non-use cancellation action against some trademark. Such a procedure requires official registration of the C&D letter within the Office before sending and submission of the power of attorney, legalised with a notarised translation into Russian.

Nevertheless, there are expenditures for drafting and sending a C&D letter and for possible negotiation with a trademark holder much less the time and sources required for litigating procedures before the court.

3. Conclusions

Summarizing our experience in protecting automotive producers’ brands in the CIS market, we came to the following conclusions:

  • Before applying for a new trademark, it is advisable to conduct a preliminary search on the possible prior rights for similar registered marks with the aim of avoiding provisional refusals in the future;
  • iftrademarks are similar by verbal elements and their list of goods/services is homogeneous, an experienced and qualified trademark attorney could evaluate all of the obstacles associated with a particular case and the chances of obtaining trademark protection by providing a Letter of Consent, or/and concluding a co-existence agreement, or by filing the relevant objection grounded on dissimilarity of the trademarks in question with emphasis on other supporting circumstances;
  • when feasible, limitation of goods and services in specification to that already used by the applicant should be discussed with the parties in the course of negotiation for the letter of consent or when applicable, in the course of objection filing to provide the argument on non-homogeneity of the list of goods/services in the applied mark and held under the opposed registration to the Office;
  • apart from the reasons for dissimilarity set up in the objection and the evidences of use, additional arguments related to the dissimilar focus of the parties’ activities and distribution channels, which prevent conflict on the market between the mentioned trademarks and voids the likelihood of confusion, as well as the evidences of trademark’s use, should be provided to the Examination;
  • as we see from our successful cases, especially with JLR, approaches and practices of the Offices have been changed and developed. Based on the developing practice and our gained experience, we could attract the attention of the Examination in reference to additional arguments and facts in the course of filing the objection;
  • a C&D letter could serve as an effective tool to stop infringements of trademark rights in domain names and on the Internet, and avoid cost-sensitive litigations;
  • Companies in the automotive area may need to review their portfolios periodically. The constant evolution in the sector does not provide a clear vision on what kinds of innovations will be applicable on the market in the future and how they will influence vehicle design and development;
  • one further key consideration is trademark squatters, who also attempt to register automotive brands in bad faith in respect of classes that could one day become crucial for automotive companies, with the single intention of gaining financial remuneration in return for the transfer of trademark ownership. To prevent such situations on behalf of widely known brands, it could be recommended to apply for registration of their brands as well-knowns;
  • each case and each country has its own peculiarities. Various circumstances and different factors should be taken into consideration in the estimation of chances for obtaining trademark protection in the specific country in the CIS region.

Due to the fact that we have represented a number of automotive companies, the accumulated experience in this area gives us the capability to assist our clients in the successful registration of IP objects in the CIS as well as assist them in dealing with various cases on the protection and enforcement of their rights on the market.