Maxim Ali explained to Kommersant how two competitors managed to register almost identical trademarks for the festival “Smoke on the water”

Autonomous Non-Profit Organization for Preparing and Conducting the Festival “Smoke on the water” (hereinafter ANO) sent a pre-trial complaint to the organizers of the event with the same name (State Budgetary Institution of the Leningrad Oblast Symphony Orchestra, Tavricheskaya Charitable Foundation for Support and Development of Capella, State Symphony Orchestra of the Leningrad Oblast “Tavrichesky”) objecting to the use of the “Smoke on the water” trademark on all advertising and information carriers. In case of refusal the ANO intends to apply to the court and the authorities of the Ministry of Internal Affairs to defend their rights. The “Symphonic Orchestra of the Leningrad region” considers the claims of ANO unfounded, pointing out that the orchestra is the rightful owner of the trademark “Smoke on the water”, which was registered on the basis of an application with “earlier priority”. It is worth noting that in 2020 the Roscongress Foundation also sent a letter to the festival organisers asking them not to use the trademark on information and advertising media.

Maxim Ali, Partner, Head of Intellectual Property and Information Technologies practice at Maxima Legal, reminded Kommersant that in 2019 the Tavricheskaya Capella support and development charity fund applied for trademark registration, which at some point was transferred to the Lenoblast Symphony Orchestra. “During the registration process, an ANO (friendly to Roscongress) applied to Rospatent and objected to the registration of the mark. For this reason, the orchestra was refused in registration in November 2020 and appealed this decision in the Chamber of Patent Disputes, which sided with it. In June 2021, the Chamber ruled that registration of the trademark behind the orchestra would not result in misleading consumers (due to the presence of other co-organisers of the event who were not related to the trademark). This decision is partly correct: it appears that with the objection the ANO has not provided sufficient evidence of the associative link between the ANO and the “Smoke on the water” brand”, said the expert.

At the same time, according to Maxim, the Chamber’s decision also has some controversial points regarding the copyright of the “Smoke on the water” logo, which is not the same as the trademark rights. “The Chamber referred to the fact that the ANO did not show a contract between Roscongress (the customer of the logo) and the designer, but only presented an agreement to obtain rights from Roscongress. This approach directly contradicts the position from paragraph 110 of Resolution No 10 of the Plenum of the Supreme Court of the Russian Federation dated 23.04.2019, which says that, as a general rule, this kind of evidence of obtaining rights ‘up the chain’ is not required,” the specialist explained. Thus, in July 2021, the orchestra registered the trademark for itself.

However, while the orchestra appealed the refusal decision of Rospatent in the Chamber for Patent Disputes, the ANO applied for its trademark under the accelerated registration, which is almost identical and also covers concerts, in December 2020 and received a positive decision on the registration of the trademark. “Thus, due to the fact that the orchestra’s trademark has been in legal “limbo” for some time, the ANO has managed to get a similar trademark that under other circumstances should not have been registered with Rospatent,” explained Maxim Ali. According to the expert, now each of the parties must successfully challenge the opponent’s trademark and only then has a chance to win a court case for infringement of its own trademark. “Therefore, we are likely to have more trials in the Chamber for Patent Disputes and the Court of Intellectual Rights, involving the ANO and the orchestra,” said Maxim Ali. At the same time, the rights to the logo (as an object of copyright) are now held by the ANO: such rights exist in parallel with the rights to the trademark. “It turns out that the ANO can make claims in connection with the use of the logo to the orchestra, even if it loses the rights to its trademark, which is likely, given that the application of the orchestra earlier and has priority,” – summed up the expert.

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