Chamber for Patent Disputes confirmed the refusal of the American company General Electric Company trademark «Railconnect» registration.
International registration of the mark was made by the WIPO in the name of the applicant in respect of goods of the Class 09, services of Classes 35, 37, 39 and 42 of the International Classification of Goods and Services.
However December 08, 2015 the Federal Service for Intellectual Property Rospatent refused an American company in the provision of legal protection of the mark in the territory of the Russian Federation.
Patent Office noted that the claimed designation «Railconnect» consists of symbols «rail» and «connect» where the verbal element «rail» has many meanings which are used in various fields including the railway industry which includes the goods and services specified in the list of the international mark registration.
In this case, according to the opinion of Rospatent, the verbal element "rail" means "railroad track, railroad, railway line, railway."
The verbal element “connect” has the following meaning "to connect, coordinate, attach, interlock, connect, communicate"
In addition the claimed designation «Railconnect» is used in the field of railway transport, namely: railway transport management, railway transportation, ensure a smooth exchange of rail traffic between several railways in order to improve the flow of information, increased productivity and cost reductions. Thus with respect to the claimed goods and services the claimed designation does not have the distinctive character because it consists of the symbols used in the field of applicant’s activity.
Company General Electric Company did not agree with the Rospatent position.
Company representatives informed that the designation «Railconnect» is a new-coined word, because a word is missing in all known dictionaries and dictionaries do not contain any indication that the words «rail» and «connect» can be used for the formation of compound words.
According to the applicant, since the word «railconnect» does not exist in dictionaries, it may have no particular value and therefore a term. "Since the word «railconnect» does not have any particular value, it can be used by third parties to describe their products and services," - said in a statement.
Sign «Railconnect» duly registered in the country of origin (USA), it is not contrary to morality and public order, does not contain any indication which may serve in trade to designate the kind, quality, quantity, destination, value, place of origin.