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The producer of television series about the famous detective failed to prove Rospatent’s fault before the Chamber for Patent disputes.

The application demanding a protection related to classes 9, 16, 35 and 41 of the Nice classification was declined in November 2012 by Rospatent, whose examiners decided that the registration would mislead customers as to the manufacturer’s origin. To them, “the designation reproduces the name of a famous character – Sherlock Holmes – created by Arthur Conan Doyle. Therefore it will be associated with England as the country of origin of goods as well as with the heirs of Arthur Conan Doyle.”

Having disagreed with the refusal, Central Partnership has filed a plea to the Chamber for Patent disputes, arguing that there could be no misleading as neither the original writer does manufacture goods or render services in classes 9, 16, 35 and 41, nor anyone can own the character from his novels, which have already entered the public domain in Russia, thus making the consent for the registration of the trademark unnecessary.

The Chamber members have agreed with these objections as well as with arguments on inability of the designation to deceive anyone as to the origin of goods and services – due to the fact that different stories about Sherlock Holmes’ adventures were written by many other authors, except Doyle. Besides, the stories were screened more times than any other literary cycle (210 movies and serials as to year 2006, including the most famous British and Soviet TV series featuring Jeremy Brett and Vasily Livanov accordingly).

Nevertheless, it was the publicity that hampered the registration. The Chamber has decided that the multiple publications and screenings by different independent publishers and producers, along with the fame of the character made a satisfaction of the application potentially infringing the rights of the third persons to use Sherlock Holmes’ name, even though it belongs to the public domain. Therefore in the end the initial refusal was supported, based on the rules of art.1483(3) of the Civil Code.

Source: http://pravo.ru/news/view/85400/