The Russian IP Court supports Coca-Cola claim to cancel TM registration of its mala fide competitor
The Coca-Cola Company holds and protects rights for its trademarks “FANTA” and “COCA COLA” all over the world since 60-70s. The popular drinks are sold under these trademarks in many jurisdictions and are not only well recognizable but also immiscible for its taste.
Not surprisingly, among the company’s many competitors some are trying to abuse its fame.
AquaLife (Drinks from Chernogolovka; hereinafter – Chernogolovka) is an affluent Russian company producing non-alcoholic beverages since early 2010-s. In 2019 AquaLife (Chernogolovka) registered in Russia a trademark “FANTOLA”. In 2022 “FANTOLA” has been granted protection in Russia another time with a broader list of Nice classes and in both Latin and Cyrillic. It looked like AquaLife (Chernogolovka) was successfully expanding its “FANTOLA” business. But doesn’t the word “FANTOLA” remind us of something?
Concerned by “FANTOLA”’s rapid expansion, The Coca-Cola Co. grew suspicious about the very originality of this brand. As “FANTOLA” clearly sounded like “FANTA” and “COLA” combined, The Coca-Cola Co. decided to oppose the registration referring to its prior rights for “FANTA”. After the application for registration of “FANTOLA” designation with expanded list of goods was filed by AquaLife (Chernogolovka) in 2021, The Coca-Cola Co. filed with the Russian Patent Office (Rospatent) an opposition against the initial registration. In 2022 Rospatent declined the objection stating that “FANTOLA” has more letters and syllables what makes it distinguishable from “FANTA”. Apart from that, Rospatent stated that the results of sociological research in relation to the likeness of “FANTA” and “FANTOLA” are quite controversial.
Unsatisfied by Rospatent’s decision, The Coca-Cola Company appealed the decision at the Russian IP-court. The lawsuit was filed on 15 April 2022 – it is remarkable that a month later Russian government would publish the updated Unfriendly Countries List that would include the USA. Despite the fact that the plaintiff’s origin country was the USA, the case was accepted and considered as per usual (ID: CIP-353/2022). The plaintiff explained to the court that “FANTA” and “FANTOLA” look and sound too similar, so there is a risk of confusion among customers. The Coca-Cola Co. also asked court to take into account that both the Coca Cola Company and its trademark have been widely known in Russia for many years.
The IP Court shared the plaintiff’s opinion and satisfied The Coca-Cola Co.’s claim: on 17 October 2022 Rospatent’s rejection was recognized as illegal. Rospatent was obliged to reconsider the opposition filed by The Coca-Cola Company. Patentica’s lawyers Alexander Timofeev and Yury Bondarev strongly believe this IP court decision is crucial to drive out the “FANTOLA” trademark from the Russian market. The success of the Coca-Cola case is just one bright illustration of many cases involving foreign companies that maintain and protect its intellectual property in Russia.
The above described case developments in the Russian IP-Court clearly demonstrate that the IP legal system in Russia supports the brand owners with no regards of their country of origin contrary to some of the press materials dedicated to the issue of foreign brands in today’s Russia’s legal environment. For example, some journalists claimed that “courts show little sympathy for firms that depart” and that companies face “flip-flopping court rulings”. They also claimed, “Coca-Cola has so far largely failed to have a Russian judge take its side in cases against … competitors with nearly identical names, such as “Fantola”. Well, keeping in mind the results of the case CIP-353/2022, we may definitely say, the legal system in Russia stands firm and fair for international brand owners and their trademarks.
As professional IP attorneys we at Patentica will monitor and keep you posted on the very recent court practice in Russia and the Eurasian region to provide you with a trustable and reliable information.