Savoy went to SKB Bank

In Russian judicial practice, the first decision has been made on a dispute surrounding a commonly used word (image), which has become a banking trademark. The court recognized the exclusive rights of SKB Bank to use the image of Savoy cabbage in the banking sector and ordered Trust Bank, which also used a similar image in advertising, to pay the copyright holder 300 thousand rubles. compensation. In two weeks, "Orient Express" and "Russian Capital" will share the word "Rozhdestvensky" in court.

As Kommersant learned, on September 6, the arbitration court upheld the claim of the Yekaterinburg SKB Bank against the National Bank Trust regarding the use of the registered trademark “Savoy cabbage” in its advertising campaigns. In 2006, SKB Bank registered a trademark with Rospatent, “which is an image of a light green Savoy cabbage,” and used it in advertising campaigns. Four years later, the bank decided to assert its rights - SKB Bank turned to Trust Bank, which also used the image of cabbage in its advertising, demanding to stop this practice and compensate for damages in the amount of 5 million rubles. (see "Kommersant" dated August 11). Having not received what was required, SKB Bank went to court, which partially satisfied his claim - compensation amounted to 300 thousand rubles.

SKB Bank indicates that they are completely satisfied with the court’s decision: “Our goal was not to make money, but to defend our exclusive rights.” According to representatives of Trust Bank, questions arise not only about the court decision, but also about the registration of such a mark itself. “The rights to a head of cabbage, which is a creation of nature (as well as the rights to its photographs), cannot belong to one legal entity, since this legal entity is not its creator,” the bank’s press service said.

The rights to a head of cabbage, which is a creation of nature (as well as the rights to photographs of the head), cannot belong to one legal entity, since this legal entity is not its creator

— press service of Trust Bank

The decision in the “cabbage” case was the first in judicial practice to resolve conflicts arising from the registration of commonly used words by banks as trademarks. Earlier, Vostochny Express Bank announced that it had received exclusive rights to use the words “Christmas”, “New Year’s” and “vacation” in relation to banking services and filed claims against Rossiysky Capital Bank for using the word “Rozhdestvensky” without permission. The case will be heard in court on September 24.

Registration of a commonly used word (and the corresponding image) as a trademark for use in the banking sector is legal if the word does not have direct associations with it, Rospatent previously indicated (that is, for example, no bank will receive exclusive rights to the word “deposit” , but for “Savoy cabbage” - it’s quite possible). This is exactly how SKB Bank substantiates their claims, pointing out that the image of cabbage was registered exclusively in relation to the financial and banking sector. “The image of Savoy cabbage in the banking sector is artificial and unmotivated, so the legality of its registration does not raise any doubts,” agrees Evgeniy Arievich, partner at the international law firm Baker & McKenzie.

If judicial practice continues to favor banks that have registered common words as trademarks, this process may become more intense, experts point out. For banks, trademarks can become an additional source of income, for example, Orient Express offered to pay other banks 300 thousand rubles for the use of the words “Christmas”, “New Year” and “vacation”. At the same time, the procedure for registering a trademark costs approximately 22 thousand rubles, and the only difficulty encountered during registration is the long period of consideration of the application for examination (about one year), says Tatyana, director of the Nizhny Novgorod office of the law firm Yakovlev and Partners Kormilitsyn.

Ekaterina Borodikhina

The banks divided the cabbage