April 2003
Vodka fuelled battle in Courts
Two appeals have been heard recently following a 2001 case which saw the snappily named Russian company "ZAKRITOE AKTSIONERNOE OBCHTECHESTVO "TORGOVY DOM POTOMKOV POSTAVECHTCHIKA DVORA EGO IMPERATORSKAGO VELITSCHESTVA PA SMIRNOVA"" (more easily referred to as 'Russian Smirnov') aiming to revoke the 14 "Smirnoff" trade marks owned by drinks and entertainment giants Diageo.
Russian Smirnov's reasons for requesting revocation in the initial hearing were that Smirnoff:
· misrepresented to the public that the goods were made in the Russian Federation
· implied that there was some association with a Russian company
· used Imperial Russian regalia to misrepresent a Russian association.
Diageo objected to Russian Smirnov's use of two Cyrillic script marks one translating as "Smirnoff" and the other as "both trading company and supplier to the court of his Imperial Majesty, P A Smirnov of the cast iron bridge of Moscow" (another snappy memorable one!).
The judge held that since no customers had ever complained about being misled due to Smirnoff not being Russian there couldn't be deemed to be a misrepresentation. He commented on Smirnoff being the bestselling vodka in the world (over 17 million bottles per year) and having been on sale since 1952. With regard to the Cyrillic marks however, he felt that they had been designed to deceive and therefore that at the original hearing the officer had been wrong to allow them to proceed.
Russian Smirnov's appeals were therefore dismissed and Diageo's appeals were allowed.
BRIFFA Comment:
Proceedings can be taken against existing trade mark owners for revocation of their marks in the following circumstances:
(a) If the mark is not genuinely used in the UK for the purpose applied for within the period of five years following the date of completion of the registration procedure by the trade mark owner or with his consent;
(b) If genuine use has been suspended for an uninterrupted period of five years;
(c) If the mark has become the common name in the trade for a product or service for which it is registered e.g. Biro or Hoover; and
(d) If the use made of the mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
An application for revocation may be made by any person to either the registrar or to the court unless proceedings concerning the trade mark in question are pending in the court in which case the application must be made to the court. If in any other case the application is made to the registrar he can refer the application to the court at any time.
It is possible to apply for revocation of only some of the goods or services for which the trade mark is registered, revocation will then relate to those goods or services only.