Russia: Manchester in London, Chicago in St Petersburg

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Russia: Manchester in London, Chicago in St Petersburg

J.S.S.Tobacco Ltd., a London company, filed a trademark application with the Russian Patents and Trademarks Office

manchester-96.jpg

The application was refused because the examiner opined that the word element "Manchester", a city in North West England points to the place of production of the goods or the location of the applicant.

At the time of filing the trademark application, the address of the applicant was indicated as "London". The word element of the trademark "Manchester" is also a city. Hence, it was stated in the decision of the patent office that this was misleading for consumers with regard to the location of the manufacturer of goods or their place of production.

The applicant understood the situation and appealed the decision. He informed the patent office in his appeal that his address had changed to Centenary Way, Trafford Park, Manchester, M50 1RF. The Chamber of Patent Disputes stated that the applicant exercised his right and made amendments to his trademark application. The change of address removed the reasons for rejecting the trademark application so that the Chamber could recognise that the registration did not contradict the law. The Chamber pointed out that the word element "Manchester" is part of the claimed designation. It is the name of the city in England and characterises the place for production of goods. Hence the registration should be allowed.

In connection with this, one may recall another registration, Chicago LLC.

chicago.jpg

The registration was refused and appealed by the applicant at the same Chamber of Patent Disputes. At that time, it was decided that the word "Chicago" would not mislead consumers (visitors of the beauty parlour) even though the applicant did not change his place of residence (Sankt-Petersburg, Russia).

In the "Manchester" case, the applicant found an easy way to obviate the risk of refusal.

biriulin.jpg

Vladimir Biriulin

Gorodissky & Partners

Russia 129010, Moscow

B. Spasskaya Str

25, stroenie 3

Tel: +7 495 937 6116 / 6109

Fax: +7 495 937 6104 / 6123

pat@gorodissky.ru 

www.gorodissky.com

more from across site and SHARED ros bottom lb

More from across our site

Florina Firaru discusses making new connections, the art of flower arranging, and the biggest misconception about IP
The firm, which appointed three IP partners from A&O Shearman, wants to develop a tier one practice in Europe
The England and Wales appeals court handed down its judgment just seven working days after hearing the trademark dispute involving pharma company Merck
A host of law firms from across Europe and beyond helped bring the streaming technology dispute to a close
Hugues Derème, director general of the Benelux IP Office, unveils his vision for the region, how to improve IP awareness, and use of AI
A copyright win for AI firm Anthropic and a new executive order against law firm Jenner & Block were also among the top talking points this week
A principal at Schwegman Lundberg & Woessner explains how AI tools, including DeepIP, can position the firm to help clients
The firm explains why AI-empowered data analytics could make it a more efficient advocate for its clients
Penelope Aspinall, of IP wellbeing charity Jonathan’s Voice, explains why managers should take a three-tiered approach to looking after workers’ mental health
Heath Hoglund talks about the value proposition of patent pools and why it went ahead with its first-ever series of pool meetings in China
Gift this article