Russian & global trade marks – to transliterate or not?
One of the key issues is consistency across the globe which needs to be balanced against getting the message right for the context in each country or region. One of the issues here, is of course whether to transliterate the mark directly into non-roman script. One of the problems becomes identifying which mark you are in fact going to use in the country, while protecting yourself from parallel imports. Does use of the roman character version infringe one in, say Cyrillic? Similarly, if you’re using one but not the other – will it be susceptible to removal for non-use?
Vladimir Biriulin from Gorodissky & Partners recently wrote a brief update in Managing IP on the situation in Russia. In essence, for the first time, the Chamber of Patent Disputes has recognised that use of a trade mark in Russia in Cyrillic form was sufficient evidence of use of the trade mark filed in roman characters. Vladimir is careful to point out that this does not change the practice of the Russian Intellectual Property office, and that brand owners would do well to continue filing in both Cyrillic and Roman (Latin) characters.
The problem becomes more complicated when the transliteration is culturally not a good fit with the intended brand image in the country in question. So what are brand owners to do? File 4 trade marks? (The culturally adjusted version in Roman and local script, plus the original in both scripts.)
I think so, provided you have the budget, this must be the best approach. Further strategies can also be adopted to counteract the now broader non-use problem – for example by using combinations or all of the brands in certain well-thought out situations.