The Supreme Commercial Court of the Russian Federation (the “SCC”) has resolved a dispute on the relationship between the categories of “goods” and “services” in the context of the International Classification of Goods and Services (the “ICGS”).
Circumstances of the case
An individual entrepreneur (the “Defendant”) registered the trademark “CALIPSO” in Russian (Cyrillic alphabet “КАЛИПСО”) in the 35th class of the ICGS (i.e. advertising and sales promotion). The Defendant owns a chain of footwear stores under the same name.
A manufacturing company (the “Claimant”) already owned the “CALIPSO” trademark, registered in the 25th class of the ICGS (i.e. footwear).
The Defendant sells the footwear of various manufacturers in its stores, including the goods of the Claimant. According to the latter, the Defendant’s actions infringed its exclusive rights to the “CALIPSO” trademark; therefore, the Claimant filed a lawsuit for compensation.
Lower courts’ approach
The commercial courts of three instances dismissed the claim, noting that:
- a trademark is foremost limited to the goods and services specified in the certificate;
- registration of the “CALIPSO” trademark in Russian (Cyrillic alphabet) indicates that there is no likeness with the “CALIPSO” trademark that had been registered previously, and this verifies the dissimilarity of the respective goods and services;
- the categories “goods” (footwear) and “services” (sales promotion) are not identical, as sales promotion is a service and does not relate to the production of goods;
- the aim of using the name “CALIPSO” in Russian (Cyrillic alphabet) by the Defendant as an outdoor sign at its shops is to individualise its stores, therefore it does not infringe the Claimant’s exclusive right to the “CALIPSO” trademark.
Position of the SCC
The panel of judges of the SCC upheld the position of the lower courts, emphasising that a trademark is limited to the goods and/or services indicated in the registration certificate.
The registered scope of legal protection reflects the choice of the trademark owner and includes the goods (or services) that are of interest to him.
Following this decision, right holders are recommended to take a comprehensive approach when choosing ICGS classes of goods and services for trademark registration, particularly taking into consideration prospects for business development.