Russia: Using the internet in trade mark examination

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: Using the internet in trade mark examination

The appeal board of the patent office examined an appeal against refusal of registration of the trade mark Svenska Handelsbanken on IR number 1107500 filed by the Swedish company Svenska Handelsbanken АВ (publ) in respect of services in classes 35, 36, 45.

The official action of refusal initially issued by the patent office explained that the claimed designation Svenska Handelsbanken when translated from Swedish means "Swedish Commercial Bank". Not knowing the Swedish language himself, the examiner found a reference on the internet in Google Translate. Based on his findings the examiner concluded that the word elements are lexical units pointing to the place of operation of the applicant and the field of his activities. Hence those words are descriptive in relation to the claimed services in classes 35, 36, 45 классов.

The appeal board of the patent office did not uphold the opinion of the examiner and decided to register the trade mark. While considering the appeal the board again conducted a search on the internet. It was found that the word combination Svenska Handelsbanken has no clear translation. The search engine Yandex did not provide translation for the word elements Svenska Handelsbanken while Google Translate provided translation of the word element Svenska (Swedish) while translation of the word element Handelsbanken could not be found.

It is to be noted that neither the examiner nor the members of the appeal board were familiar with the Swedish language; however they believed they could make a judgment on the Swedish (presumably) words relying on the information found on the internet only. The appeal board noted that the Swedish language is not known to the majority of Russian people and the average Russian consumer may believe that the word elements in question are artificially coined.

The appeal board also noted that according to the appeal and the translation of the professional electronic dictionary (the dictionary itself does not claim to be professional) Valenta it may be inferred that the word element Handelsbanken of the claimed designation consists of Swedish words "handel" and "banken", their combination is not customary in the Swedish language and is not a set term. According to the appeal board the word "handel" may be translated as "commerce" or "business", "market", "deals", "shops" or "traffic". The word "banken" is derivative of "bank" and may be translated as "sandbank", "cloudiness", "bank", "depository" or "embankment".

The appeal board stated that the word element Handelsbanken is not used to designate a commercial bank. The appeal board also consulted a translator who explained that any non-governmental credit organisation providing financial services for legal and physical persons are called an "affàrsbank". The word designation Svenska Handelsbanken is not a definition of a credit organisation in the Swedish language and cannot be descriptive in relation to the claimed services.

Without judging whether the decision of the examiner or of the appeal board is correct, it is necessary to note that both examination authorities made their conclusions on the basis of information they obtained from the internet. The internet is a useful source of information; however whatever may be found there needs careful verification. People who search information on the internet should have some competence in the subject they explore otherwise their findings leave a dubious impression.

Biriulin-Vladimir

Vladimir Biriulin


Gorodissky & PartnersRussia 129010, MoscowB. Spasskaya Str25, stroenie 3Tel: +7 495 937 6116 / 6109Fax: +7 495 937 6104 / 6123pat@gorodissky.ru www.gorodissky.com 

more from across site and SHARED ros bottom lb

More from across our site

Deals between five more law firms and President Trump and an antitrust lawsuit against Amgen were also among the top talking points this week
US counsel explain how they win new cleantech IP business and how they’re navigating the industry’s challenges
Leaders at the IP firms, which have joined forces with backing from a PE investor, share their vision of building the number one pan-European IP practice
Firms will steer clients towards other ways of getting quicker examinations, but fear the ramifications of the USPTO’s decision
Melissa Haapala added that returning to client advocacy and the chance to work on patent litigation were reasons for returning to private practice
Michelle Clark, who has a generalist litigation background, plans to focus on IP disputes at Alston & Bird
Philips and Vivo have entered into a licensing agreement, putting an end to a five-year-old telecom SEP dispute in India
Stefan Müller discusses managing deadlines, the importance of reflection, and why IP is more than just a 'nice to have'
The three founders of the IP firm’s new US offering say they plan to offer a unique proposition in a market fixated by the billable hour
The opinion provides useful guidance when it comes to how courts might consider contributory infringement, DMCA claims, and other issues in AI copyright cases
Gift this article