Since childhood we know Vasilisa the Beautiful, Ivan Tsarevich, Alyosha Popovich, Kolobok, Vasilisa the Wise as characters of children’s fairy tales and folklore.

Names of fairy-tale characters are familiar to us since childhood; they are recognizable and evoke positive emotions. Such properties of these names were bound to attract entrepreneurial interest, which lies in the fact that through associations with these characters, you can create a certain image of your company. One of the options for obtaining an opportunity to associate goods/services with a name of an epic hero is to register a trademark (service mark).

Here is an example of such a fairy-tale trademark registration. A company registered a trademark “VASILISA PREMUDRAYA” (lit. – Vasilisa the Wise) in its’ name. However, a competitor of this trademark’s owner decided that such registration contravenes the letter of the law. The stated contradiction was presented as follows:

Author’s consent was not obtained before registering the word combination “VASILISA PREMUDRAYA”.

Registration of the word combination “VASILISA PREMUDRAYA” misleads consumers;

The word combination “VASILISA PREMUDRAYA” is a designation containing elements conflicting with public interest, principles of humanity and morality.

The very registration of such a designation is considered as unfair competition, since the purpose of such registration is to obtain unreasonable competitive advantages via using an established reputation of the disputable designation; also, exclusive right for such a designation makes it possible to provide other persons with infringement claims.

The word combination “VASILISA PREMUDRAYA” lacks distinctiveness and is a generally accepted term.

The Court for Intellectual Property resolved the dispute under case No. СИП-544/2017 the following way:

“VASILISA PREMUDRAYA” is a character of Russian folk tales (folklore). Folklore characters do not have specific authors; therefore, they are not considered as objects of copyright.

It is possible to mislead consumers when they are aware that another entity (not the “VASILISA PREMUDRAYA” trademark owner) produced goods and/or rendered services. There are no documents regarding this notion in the case materials.

Designations / word combinations considered as conflicting with public interest, principles of humanity and morality are designations, word combinations, words and images of obscene content, appealing to inhumane nature, insulting human dignity, religious feelings, and incorrectly spelled words. Such designations are called “scandalous” marks. Evaluation of scandalous marks depends on generally accepted standards of morality, national traditions, and culture. The disputed designation “VASILISA PREMUDRAYA” represents a character of Russian folklore, does not conflict with the basis of public order and does not cause public outrage, therefore, such registration is not considered a scandalous mark. No materials stating otherwise have been presented to the court.

Unfair competition (abuse of rights) should be fairly obvious, and conclusions about it should not be a based on assumptions. Fidelity and rationality of actions of participants of civil legal relationships are presupposed. No signs of unfair competition have been established in the action of registration of the trademark “VASILISA PREMUDRAYA”, as well as in actions of subsequent use; no materials stating otherwise have been presented to the court. Filing an infringement claim regarding violation of the exclusive right to a trademark is not considered an act of unfair competition, since such actions are related to protection of the exclusive right to a trademark acquired without violating antimonopoly legislation.

The argument that the word combination “VASILISA PREMUDRAYA” lacks distinctiveness and is a generally accepted term cannot be taken into account, since this argument was not presented whilst appealing against the decision to register with the Patent Office.

Thus, the Court for Intellectual Property dismissed all competitor’ arguments regarding the “VASILISA PREMUDRAYA” trademark’s failure to comply with the law. It is possible that the Court’s conclusion was influenced by the fact that the competitor failed to provide additional evidence to prove his case, i.e. proof on misleading consumers; materials regarding potential conflicting of the word combination with public interests, principles of humanity and morality; proof of right holder’s right abuse preformed to register and use the trademark.

Nevertheless, it should be noted that registration of fairy tale characters as trademarks is not something new in Russia.

Such fairy tales characters as Vasilisa the Beautiful (trademark certificates №№ 151748, 476519, 561100), Ivan Tsarevich (certificate No. 384457), Alyosha Popovich (certificates Nos. 447035, 484339, 537171), Kolobok (certificates Nos. 184538, 508657, 153210, 171626) are registered as trademarks, among others.

The conclusion from all of the above is as follows: if you have a desire to register a trademark, which is a fairy-tale character, then do not be afraid that you will violate someone’s rights.

“DobroZnak” is ready to help to obtain legal protection for character names as trademarks (to conduct a search, compile a report or file an application).

This article was partly drawn from materials gathered from the following websites: ipcmagazine.ru, garant.ru

Image taken from: yandex.ru