The registration has been confirmed by Russian patent agency “Rospatent”.
In March 2014 Rospatent rejected Ford’s application for well-known status for its iconic blue oval with Ford written inside in white handwriting.
The grounds for refusal focused on a lack of evidence that Ford submitted to Rospatent to show that the mark had enough recognition among Russian consumers.
Ford argued that the trademark had been used in Russia since 2007 for cars, car parts and accessories. It provided material from its affiliate company “Ford Sollers Holding, and in addition further information from various websites and advertising sources as evidence that the word “Ford” was in fact used extensively in Russia to identify cars, car parts and accessories.
Rospatent argued that the materials that Ford used as evidence was merely names and addresses of various dealerships and that this information did not show anything about their operation. Further Rospatent argued that all historical and informational materials were provided to Rospatent by Ford’s affiliate- Ford Sollers Holdings and their authenticity had not been confirmed via other documentation. Therefore the materials submitted could not be accepted as objective. Rospatent further commented that the materials provided by Ford did not include a single document such as an agreement, contract or declaration that could be considered as evidence of the production of the production or import to Russia of any products marked as “Ford”.
In October 2014 Ford appealed against Rospatent’s decision. Regular followers of the Reading Room may recall that we reported Ford’s appeal here:
The appeal was ultimately refused by the Russian Intellectual Property Court (IPC) and upheld Rospatent’s original decision.
An appeals division within IPC known as the Presidium of the IPC ruled that IPC was wrong to affirm Rospatent’s rejection and as a result remanded the case back to court.
In June this year, the IPC reversed the decision and stated that Ford’s well-known status should be approved.
The securing of well-known status will now enable Ford- the owner of the trademark to litigate against anyone that has been using a similar mark.
In Russia, there are currently 156 marks that are registered with well-known status; these marks include Adidas and Nike.