Do you know what is iBank? You may think that the Bank of Apple, by analogy with the iPhone, iPad, iTunes, iCloud and other products of the company starting with “i”? Actually, no. Marking iBank belongs to BIFIT company and is the name of the program, enabling banks to provide Internet banking to its customers. It is unlikely you knew about it, right?
However, not so long ago this mark was recognized as well-known trademark in Russia. This means that the company BIFIT may prohibit the use of similar notation not only for similar goods and services (e.g., programs for banks, just the software, etc.), but also for any other goods and services, if such use is associated with the owner of the well-known trademark and can infringe on its interests. Another advantage of a well-known trademark is that it is valid indefinitely unlike a conventional sign, which must be renewed every 10 years. To cancel the same well-known mark is extremely difficult. In the entire history of the existence in Russia of well-known marks were only three cases of cancellation of such signs.
To register well-known trademark is quite difficult, as you need to demonstrate a very high level of brand awareness among consumers. At the moment in Russia reported a total of 184 well-known trademark, among them Coca-Cola, LUKOIL, Lipton, “Alfa-Bank”, “Intel”, “Kalashnikov”, “Vkontakte” etc. And now iBank.
Check iBank is largely surprising since the fame of this designation can hardly be compared with all of the above or, for example, the Tretyakov gallery, which is entered in the register of Rospatent right behind him. However, from the point of view of observance of requirements of the law, everything is logical. As a rule, one of the main evidence of the fame of the mark is a survey where respondents are asked if they know of such a designation, what it is used for, how long you know him and So that the current practice of Rospatent allowed to conduct such a survey among direct consumers in the relevant market, and not among the entire population of Russia. In the case of iBank interviewed Bank employees. Naturally, most Bank employees said that they know the program iBank. It’s like Internet marketers to ask if they know of Sape. Thus, the wide audience of this designation is unlikely to say something.
It is interesting that Apple have not a single well-known mark in Russia is still there. Although it would seem, well who doesn’t know iPhone? Now all future registration for the Apple i-products are actually under threat, as they can be similar to well-known iBank. Moreover, it seems that the future of the Apple for direct payment from phone to phone, which is being developed by the company, will have to look for Russia another name.
And in General, registration of a well-known iBank deals a significant blow to the monopoly of Apple i-products. Previously, Apple actively fought against those who tried to parasitize on the letter i. However, back in 2010 in one of these processes Apple lost the manufacturer of bags DOPi (here you need a mirror to understand the chip) in an Australian court.
If desired, in Russia Apple could compete for a monopoly on the letter i, but due to a passive position on this issue, now i brand significantly blurred. So, in Russia, the other company was “Mobilco ay”, “AI Cloud”, “AI reader”, just “ay”, “iPressPad”, “iParking”, “i-Store.ru” and a lot of other i-marks. And now over the most Apple Navis well known iBank.
A situation when the Russian company closed the Russian market for foreigners its trademarks, are not uncommon. Many popular brands are registered trademark as “patent trolls” — those who professionally earns trademarks. So, Starbucks entered the Russian market only in 2007, but of course, this brand was well-known before. In 2004, a third party registration was filed here this sign:
After that, the company decided to cancel the older trademarks of the original Starbucks, which by the time not used. Starbucks had to spend a lot of time and effort in order to recapture its brand in Russia.
Some foreign companies follow the path of least resistance and buy trademarks already registered in Russia. So, the brands from third parties bought, for example, Ikea, Marks&Spencer and home depot.
Similar situations face and large Russian companies. For example, now MTS trying to defend in Court for intellectual property rights of its trademarks, which are contested on the basis of the following sign:
This sign in 2004 was registered in the GUP Samara region “Regional mashinno-technological station”, which explains the original design with sunflower and wheat ear. However, goods for which the mark is registered include, inter alia, telephone sets, portable telephone sets and installation and repair of phones. Later, the owner of the trademark has changed, and in 2017 was filed a number of claims about cancellation of trademarks MTS, which are discussed to this day.
Secondly, sometimes happens so that already operating on the Russian market, the company uses the brand, in tune with a very famous foreign brand, which is preparing to enter the Russian market. For example, with the international banking group ING, which in 2007 was preparing to enter the Russian insurance market and faced with INGOSSTRAKH. However, in this case, the company was limited to threats and negotiations, as the outcome of the trial was unpredictable for both insurers and still coexist peacefully on the market.
A similar situation occurred with Alibaba. By the time of entering the Russian market brand Alibaba has already been registered in Russia for various goods and services by several companies and entrepreneurs.
Alibaba had long and hard to recapture your brand Rospatent and the Court for intellectual property rights.
So what do all the examples and well-known mark iBank? It seems that current legislation and practice, unfortunately, is not perfect: quite often they are on the side of those who have followed the formal procedure, first applied for a trademark, properly conducted opinion poll, not on the side of those who really invests time and effort in the development of popular brands, but do not hurry with the registration of their rights. Sometimes the law may be on the side of quicker and more active competitor than on the side of business, forcing the world to think and feel in new ways. These examples teach us that it is important not only time to put a period at the end of the sentence, but also timely to dot the “i”.
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