KOMMERSANT. RUSSIA'S LARGEST MONEY TRANSFER SYSTEM ZOLOTAYA KORONA FACES BUSINESS RESTRICTIONS IN EUROPE. IP practice. Elena Gladysheva, Managing Partner of RI-Consulting

The largest money transfer system in the Russian Federation, Zolotaya Korona, faced business restrictions in Europe. In Sweden, its logo was considered an exploitation of monarchic heraldry. The decision affects only one country, but may extend to the whole of Europe. For Zolotaya Korona, it is fundamental to keep the logo recognizable to key clients - migrant workers.

The Swedish Patent and Registration Office (Patent-och marknadsdomstolens), which registers trademarks in the country, asked the national archive to check whether the image of the crown in the KoronaPay logo is similar to the royal crown protected by law. They felt that the registration of the trademark KoronaPay in its present form infringes on the symbols of European monarchies:

"The crown included in the sign is easily confused with the legally protected royal crown on the sweater, and this gives the sign an official character."

The information is posted on the official website of the Swedish archives.

Elena Gladysheva in the Kommersant’s publication https://www.kommersant.ru/doc/5181499 about the possibility of using the symbol in Europe, about challenging the decision in court, and what are the opinions, predictions, possible options for developments? Elena Gladysheva: "Zolotaya Korona is a Russian payment system providing payment services to individuals, banks and organizations. As announced in 2019 to provide services in Europe, Zolotaya Korona registered a company KoronaPay Europe Limited in Cyprus. Like any company Zolotaya Korona has its trademarks. There are currently 16 different Zolotaya Korona trademarks registered in the RF, with 1 well-known trademark being widely used. Zolotaya Korona trademark with the image of the crown is also registered in the Russian Federation.

Trademarks are registered both in Russia and Europe in accordance with the procedure prescribed by the local legislation, Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 and the Protocol Relating to it to which the Russian Federation is a party. In general, the procedure for filing an application for registration of any trademark, both in Russia and in Europe, is similar: an application with the image is submitted to the Patent Office to undergo preliminary examination, then (in case of a positive conclusion) is registered. Thus, in Russia in accordance with paragraph 5.2 of the Guidelines for verification of the claimed symbols on the identity and similarity, approved by Order of Rospatent 31.12.2009 N 197 (hereinafter - the Guidelines), similarity of the fine and volume symbols is determined on the basis of the following features:

external form; presence or absence of symmetry; semantic meaning; type and nature of images (naturalistic, stylized, caricatured, etc.); combination of colors and tones.

The listed attributes can be taken into account both separately and in various combinations.

According to p. 5.2.1 of the Guidelines in determining the similarity of figurative and volumetric signs the most important is the first impression received by comparing them. It is this impression that is closest to the perception of trademarks by consumers who have already purchased such goods. Therefore, if at the first impression the compared signs seem similar and the subsequent analysis will reveal the difference of signs due to the divergence of separate elements, it is advisable to be guided by the first impression when assessing the similarity of signs.

Since the visual perception of an individual visual object begins with its outer contour, it is this contour that is remembered in the first place. Therefore, it is reasonable to base the assessment of the similarity of signs on the similarity of their external shape without taking into account minor differences in the internal details of the signs (paragraph 5.2.2 of the Guidelines).

Consequently, when undergoing a similar procedure by Zolotaya Korona, a refusal was received due to the essential external similarity of the image of the payment system to the Royalty mark. Based on the submitted conclusion of the Patent Office it can be concluded that in this case the Zolotaya Korona trademark contains a designation which is similar to the degree of confusion with another well-known mark - the image of the crown of the Swedish royal family.  In this case, the image of the Swedish crown is a well-known image that does not require protection and has priority over the time frame of its creation and the criteria of public.

It will be difficult to argue with this refusal and the image. However, the option Zolotaya Korona has - to apply for registration of the combined trademark containing the protected part and the unprotected part of the trademark. Based on the response of the Patent Office, unequivocally Zolotaya Korona will have to make changes to the trademark submitted for registration.

Now it is difficult to say whether the Royal House of Sweden will come out with a statement to cancel the registration of trademarks registered in Russia, containing an image of the crown similar to the degree of confusion with the disputed image or not. However, the consequences, of course, can be. Such consequences will be cancellation of registration of the trademark. It is worth noting that the Zolotaya Korona trademark in English is not used as widely as possible in the RF, and probably the payment system will not feel much excitement about it, and in the European space the mark will be finalized and partially, probably, changed. I suppose that a court dispute in this case from the payment system will take more time and effort than the finalization of the trademark. However, this is already a business decision, not the legal side of the issue.

Pursuant to Articles 1, 4, 5 of the Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 which came into force for the Russian Federation (USSR) on July 1, 1976, nationals of each contracting country may protect their marks used for goods and services and registered in the country of origin in all other countries party to the agreement by filing applications for such marks with the International Bureau of Intellectual Property which constitutes the World Intellectual Property Organization. As from the date of registration made with the International Bureau, a mark shall be accorded in each Contracting Country concerned the same protection as if it had been applied for directly there. The International Bureau shall furnish to any person, at his request and subject to the payment of a fee, a copy of the entries made in the Register in respect of a particular mark.

It's also worth noting that if it were a Russian registration, the payment system could have entered into an agreement with the rights holder to use this part of the trademark," - noted the lawyer.