BONAQUA failed to be strong against Coca-Cola

The name Margon is part of the ancient legacy of Britain. Hundreds of years ago, the Margon family existed with the slogan “Non sibi sed patriae” (not for self, but for country). This slogan was widely known and used in other countries, including, unexpectedly, Russia.

In Russia, Margon Ltd. dealt with construction but liquidated in 2017. The name was assumed by another Russian company dealing with beverages, demonstrating that the company’s founders were not very creative and preferred to use something that already existed.

Margon Ltd. filed a trademark application No 2022720408 for BONAQUA STRONG in Class 33. The application was rejected for several reasons:

• The word ‘strong‘ is not distinctive because it points to the property of the claimed goods.
• The word BONAQUA is confusingly similar to a series of trademarks, e.g., 889688 and others in the name of The Coca-Cola Company regarding the goods in Class 32 that are similar to Class 33. The Coca-Cola Company is well known in the market, and the fact that it left the Russian market does not avert the threat of misleading the consumer with regard to the relevant goods. The assertion by the applicant that Coca-Cola does not sell goods in Class 33 in Russia did not help.

Margon Ltd. appealed the decision at the Chamber of Patent Disputes with no result, and their decision was issued at the end of January 2023.

The Chamber of Patent Disputes pointed out that the word ‘sprite’ is a coined word that enhances its importance among other elements of the trademarks. This statement was a key point in all other examinations that followed.

It would be a mistake to think that Margon Ltd. took on board that it is unacceptable to misappropriate someone else’s intellectual property. Instead, Margon Ltd. ignored potential consequences and filed a trademark application for SPRITE STRONG (Appln. No 2022720405). The patent office refused registration because the applied designation was not distinctive and pointed to the properties of the claimed goods. Further, it was considered confusingly similar to a series of trademarks with the word element SPRITE, registered to Coca-Cola, including SPRITE LET’S BE CLEAR, SPRITE SOUND, and others.

It is also important to note that the similarity of goods in which the Russian trademark application was filed should be viewed in a broader sense because Coca-Cola is also well known in the market, and the departure of Coca-Cola from the Russian market does not diminish the threat of confusion with regard to the producer of the goods.

The unyielding applicant appealed the decision at the Chamber of Patent Disputes in May 2023. They argued that they limited the claimed list of goods to those that had not been in the Coca-Cola inventory, such as beer and sparkling wine. The applicant recalled that Coca-Cola had publicly declared its closure in Russia and left the Russian market. Thus, in the opinion of the applicant, their trademarks, if registered, would not cause confusion among consumers.

The Chamber of Patent Disputes repeated formal provisions preventing registration of the trademarks and the gist of the protracted argumentation was that the word ‘sprite‘ is well known to the majority of people. It is included in all trademarks of the series registered by Coca-Cola. Finally, the refusal of registration was confirmed by the Chamber of Patent Disputes.

Surprisingly, the applicant continued to fight and appealed the decision at the IP court. They based their tenacity on the fact that the patent office had made substantial mistakes and had not taken into account important legal circumstances. The applicant repeated the arguments that they had put forward in the Chamber of Patent Disputes. The court dismissed those arguments and again confirmed that the departure of Coca-Cola from the Russian market in conjunction with the possibility of confusion with regard to the producer of the goods had no legal significance. The judgment was issued in January 2024.

Unbelievably, the applicant was not pacified. They appealed the judgment at the Praesidium of the IP court. The Praesidium recounted the arguments of the first instance court and made no new discoveries. It confirmed that the court of first instance made unbiased analysis of the situation and upheld the previous judgment on May 15, 2024.

There is still an opportunity for the applicant to appeal the judgment at the Supreme Court. The chances to prevail there are small but considering the stubborn attitude of the applicant, involvement of the Supreme Court cannot be ruled out.

The above examples show that trademark pirates are active even in cases where the trademarks belonging to goodwill companies are still valid. Companies that have left the market are in jeopardy because of the non-use of their trademarks. Many of them, as a wise precaution, should re-file their trademarks to keep their trademark rights. Russia is a large market, avid for all kinds of products so those who preserve their rights will have a good competitive edge.

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