Had the verbal designation BAIKAL recognised as a trademark well-known in Russia with respect to carbonated soft drinks

The team of the IP and trademarks practice of Pepeliaev Group, acting in the interests of BAIKAL LLC, managed to ensure that the verbal designation BAIKAL was recognised as a well-known trademark in Russia with respect to carbonated soft drinks.

In itself, the designation BAIKAL has been continuously used for the labelling of soft drinks since the 1970s and is well-known to several generations of Russian consumers. Baikal LLC has been using this designation since the 1990s. Starting from 2011, Baikal LLC has been using on the labels of carbonated soft drinks trademarks united by the verbal element BAIKAL, which consumers perceive as versions of the verbal designation BAIKAL.

To enhance the legal protection of the designation BAIKAL and ensure that potential counterfeits are combated in the most effective way, Baikal LLC applied to our patent attorneys with a request to obtain legal protection of the verbal designation BAIKAL as a trademark that is well-known in Russia. The team of the practice under the management of partner Valentina Orlova closely cooperated with employees of the client in analysing documents of the company to identify sufficient evidence that it widely and actively uses the designation BAIKAL. We further carried out a sociological poll to find out to what extent Russian consumers were familiar with the verbal designation BAIKAL.

Further to the comprehensive analysis, we prepared and filed with Rospatent an application for the word designation BAIKAL to be recognised as a well-known Russian trademark. The list of appendices to the application, alone, occupied several pages and included hundreds of items.

The commission of Rospatent decided to grant the application and to recognise the word designation BAIKAL as a trademark that is well-known in Russia with respect to carbonated soft drinks. Rospatent, however, did not approve the decision of the commission and pointed out that the commission had not analysed and assessed with sufficient completeness the evidence provided by BAIKAL LLC. In this regard, a repeat examination of the application was scheduled.

During the repeat review of the appeal our lawyers again drew the attention of Rospatent’s commission to virtually every piece of evidence contained in the annex to the application and supporting the legal position. For the second time, they justified why legal protection of the word designation BAIKAL had to be granted to Baikal LLC. Further to the repeat examination of the application and a more thorough study of all evidence the commission decided to uphold the statement of claim and to recognise the word designation BAIKAL as a trademark that is well-known in Russia with respect to carbonated soft drinks.

Therefore, the patent attorneys of Pepeliaev Group’s IP practice successfully solved the task set before them and performed the instructions of the client.