St. Petersburg Retailer Goes to Court over a Brand from a Gaidai Comedy
A St. Petersburg retail giant is contesting the rights to a brand taken from a Soviet film classic.
The Intellectual Property Court (IPC) has accepted a claim from the St. Petersburg retailer "O’KEY", which is seeking early termination of the rights of Rostov–on–Don entrepreneur Tatiana Yakubova to a trademark on the grounds of non–use. The disputed brand consists of a two-line inscription: "Руссо Туристо" on top — Russo Turisto below, with two circles and a human figure on the left–hand side.
The number of such disputes has been growing recently, notes Victoria Franchenko, partner at the law firm "NB". In her view, this is due both to the general rise in companies' legal awareness and their desire to protect their intangible assets, and to the fact that unique designations are becoming scarcer over time, so businesses have to fight for their individuality, including in court.
What most likely pushed the retail giant into a battle with the Rostov entrepreneur was O’KEY's desire to register a new brand (its portfolio currently holds 91 marks and 8 pending applications). According to the Kontur.Focus service, in January of this year O’KEY filed an application to register the trademark Russo Turisto in Class 18 of the International Classification of Goods and Services (baby–slings, wallets, leather goods). However, Rospatent refused the St. Petersburg company, and the disputed brand was presumably the reason.
O’KEY declined to comment on its plans for using the Russo Turisto brand.
The expression "Russo turisto, obliko morale" entered our vocabulary from Leonid Gaidai's legendary comedy "The Diamond Arm". "It carries a great many negative connotations associated with the unconventional behaviour of our compatriots abroad, — says Elena Yufereva, CEO of Brandson Branding Agency. — A name like this can be applied to a narrow segment of the audience capable of soberly appreciating a postmodern approach to advertising goods and services that is built on irony and on correcting a stereotypical image. For instance, it could be used for a foreign audience unfamiliar with the cultural context surrounding the name (Russo Turisto T-shirts for those travelling abroad)".
In the expert's assessment, using memorable names, characters and expressions from Soviet film classics is not a trend in professional naming. And there are several objective reasons for this at once. Firstly, derivativeness. After all, playing on an established set of associations created by famous screenwriters and actors is an ethically questionable device. On the one hand, it means exploiting the fruits of someone else's labour, and on the other — manipulating the consumer's mind.
Secondly, the limitations imposed by the image itself. Since its field of associations settled long ago into a fixed mosaic, branding specialists will have to accept the need either to adapt the brand platform to this Procrustean bed (which is methodologically wrong) or to correct the stereotypes (which requires resources and time).
Thirdly, potential rights issues: the film studios that inherited the best footage of Soviet films keep a close eye on the use of popular images and quotes.
Finally, obsolescence: the generation for whom the motifs of Soviet film classics retain their sharpness and depth is becoming less and less active and solvent. "For all of these reasons combined, both in naming and in visual communications we try not to use direct quotes from Soviet film classics, or indeed any other established images", — Elena Yufereva concludes.
According to the arbitration case register, O’KEY is currently negotiating with the trademark holder from Rostov–on–Don. This was confirmed to DP by the retailer itself, which expects the talks to end successfully and all differences to be settled. The preliminary hearing on the St. Petersburg company's claim is scheduled for 1 November.
If the parties nonetheless fail to resolve the dispute amicably, O’KEY will not need to prove much before the IPC — only its interest in using the disputed brand. However, as Victoria Franchenko points out, this may not be so simple. "Evidence may include the fact that the claimant has already manufactured products it intends to release under the trademark in question, or has purchased the goods needed for production, or has even prepared an advertising campaign", — she notes.
The defendant, in turn, in order to retain the rights to the disputed trademark, must prove either that it has been used or that its use was impossible for objective reasons — for example, a ban on importing the product protected by the trademark.
In Victoria Franchenko's view, case law on such matters is still being developed. "The courts have to revisit the standards of proof in order to rule out a purely formal approach and to decide in favour of those who genuinely need intellectual property protection in the trade of particular goods and services", — she adds. In addition, the market is being cleansed of unscrupulous rights holders who try to profit not from business but from the mere fact of owning trademarks.
