The Russian CHAMBER FOR PATENT DISPUTES (CPD) has upheld GAZPPROM’s application for its “TAKEAWAY” (VOZMI S SOBOI) trademark reversing a decision by ROSPATENT rejecting the mark.
GAZPROM is one of Russia’s most famous companies engaged in the extraction, transport, and sale of natural gas.
ROSPATENT had earlier rejected the application due to a prior “SIMPLY TAKEWAY” trademark (PROSTO VOZMI S SOBOI) in classes 29 and 30 owned by a third party.
GAZPROM filed an appeal with the CPD arguing that the “TAKEAWAY” wording should be seen as a weak element for classes 29 and 30 – being a form of business practice and widely used. Due to its extensive use by various parties, the mark lacked distinctiveness and arguably therefore should not be part of the comparative analysis when looking at similarity between the “SIMPLY TAKEAWAY” and “TAKEAWAY” marks.
In response to the appeal, the CPD stated that the TAKEAWAY wording was indeed used by numerous companies in their business model and packaging as a form of business model. In reviewing the two marks, they found that there existed a completely different overall visual impression between them - due to GAZPROM mark’s original color composition and graphic elements. As such, the marks should be allowed to coexist in classes 29 and 30.
CPD’s decision bring ups interesting questions on the distinctiveness of wording/phrase in a certain industry and the registrability of the same. The distinctiveness of a mark within an industry specific business will have to be considered by rights owners in Russia.