Can A Country Name Be Registered As A Trademark?

The names of a country and a year are generally not protected as trademarks under Russian law, but in rare circumstances, registrations are feasible, required, and useful.

Russian Federation hosted the FIFA World Cup in 2018. It was a remarkable and prosperous event for our nation, taking place across 11 cities throughout Russia. FIFA, the global governing body of football and the one responsible for organizing the World Cup, which was first held in 1930, makes extensive preparations for the occasion, including administrative and organizational tasks. IP protection, among other things, is crucial to the tournament’s financial viability.

For the titles of such significant athletic events, which include the name of the host nation and the year the event takes place, it is customary to secure the necessary trademark protection. Russia is among the numerous nations where FIFA has exclusive rights to tournament names, such as Brazil 2014, South Africa 2010, and others. There are no exclusions regarding the names Rossya 2018 (Russia 2018 in Cyrillic) and Russia 2018, both of which have been appropriately protected by the Russian Patent and Trademark Office.

FIFA does not want to prevent legitimate businesses from independently using the national name parts by registering such trademarks. These registrations are made first to prevent any potential appropriation or replication of the official FIFA logo.

Due to FIFA enforcement litigation, the Russian brewery “Afanasy” was found to have violated competition legislation in 2018. In retaliation, Afanasy launched an invalidation action against the Russian portion of FIFA’s international trademark registration for Rossya 2018. This trademark served as one of the legal foundations for FIFA’s victory over Afanasy.

Afanasy’s arguments against the Rossya 2018 trademark registration included the following: the mark is not unique; it misleads consumers about the goods or its producer and runs counter to public interests and moral and ethical values.

Afanasy’s claims were denied entirely after the matter was examined by the judges of the Russian Patent and Trademark Office (Chamber for Patent Disputes). Under Russian law, designations contrary to the public interest include those that contain offensive words, expressions, depictions, words, and expressions, designations that improperly use official symbols, and any other designations intended to disrupt the peace of the community. There is no doubt that the disputed registration runs counter to these, and nothing in the mark might be interpreted as endangering the peace.

We often refer to phrases, expressions, and images that involve religious symbols, as well as other terms with negative implications, as designations that go against the general welfare, moral principles, and ethics. Since the registered mark does not include offensive, hateful, illegal, or harmful content, the disputed mark does not fall under one of those categories.

Afanasy stated that FIFA was misusing the exclusive right by registering the mark and attempting to monopolize usage of the words Russia and 2018. Contrarily, as the Russian component organizations have not rendered a ruling confirming such an abuse, the registration of the disputed mark should not be viewed as a violation of rights. FIFA did not want to monopolize the use of the words Russia and the year 2018 independently from one another; instead, it just sought to safeguard a designation that identifies the FIFA World Cup competition. The mark is registered as a whole. The legal monopoly over the mark as a whole does not preclude any party from descriptively utilizing any of its components while engaging in commercial activity.

The relevant trademark contains the word Russia, but its owner is from Switzerland, which is the erroneous basis for the objection. The subject trademark is meant to be used in conjunction with the FIFA World Cup hosted in Russia; hence Afanasy’s assertion was not correctly supported. Since Russian media extensively covered the event, FIFA’s official emblem, Russia 2018, which is used to identify the event, is closely linked to its owner. As a result, it is prohibited to mislead customers about the origin of the applied products and services. Additionally, the opposition failed to provide any proof of prior extensive and continuous use of a similar mark for related goods and services by other businesses in Russia, which might have provided support for the contention that at the time of the priority date, the contested trade mark was associated in the minds of consumers with a different party.

On the other hand, Internet searches unequivocally show that the disputed mark is used in connection with the 2018 FIFA World Cup, which was held in Russia.0 FIFA recognizes the disputed mark as an official emblem of the 2018 FIFA World Cup, which is intrinsically tied to Russia as the host nation. As a result, Russian customers are highly aware of this event and the indications that go along with it. They weren’t deceived about where the products and services came from.

The mark must be evaluated as a whole ensures that it is sufficiently unique. If viewed in this sense, it is connected to a specific FIFA tournament held in Russia in 2018. Russia 2018 and other associated official symbols were heavily covered and long-term promoted in Russia by both Russian and foreign media. As a result, they are now unique among Russian customers.

Last but not least, the disputed mark is one of the recognized official marks in Russia protected under the exceptional Russian Federal Law on the FIFA World Cup 2018. The statute explicitly outlines FIFA’s sole ownership of such a symbol. The goal of registering the challenged mark is to safeguard one of FIFA’s primary official emblems for the 2018 World Cup and Russia’s reputation as the World Cup’s host nation.

The panel of examiners of the chamber for patent disputes of the Russian Patent and Trademark Office concluded after considering the inv4alidation action that the trademark satisfies the legal requirements, that the legal protection of the trademark should be maintained, and that the invalidation action should be dismissed entirely.