Clever disputes the registration of the trademark “Mishka Shmyak” of the animation studio Great Frame

Clever, which publishes children’s books about Shmyak the kitten, is contesting the registration of the trademark “Mishka Shmyak” of the animation studio Great Frame, which produces a cartoon with the same character. According to Clever, “word designations” are confusingly similar and mislead consumers. Rospatent did not see much similarity and did not recognize the violation, so the case went to court. The victory of the publishing house, lawyers say, can seriously expand the potential field of disputes around trademarks.

“Kommersant” found in the file of arbitration cases that the Clever publishing house filed a lawsuit with the Court for Intellectual Property Rights (IPC) to challenge the decision of Rospatent regarding the trademark. The third person is the animation bureau Great Frame. As Kommersant was told in Clever, the dispute revolved around the kitten Shmyak: “Clever has been publishing books about the kitten since 2014. The name Shmyak was invented by the translator Clever ten years ago, the rights belong to us.” Meanwhile, in parallel with the books about the kitten Shmyak, the animated series “Yesenia’s Magic Shop” by the general producer of the Great Frame studio Oleg Roy, one of the main characters of which is Shmyak the bear, is being released.

Despite the fact that books have been published for many years, the trademark in the form of the verbal designation “Kitten Shmyak” was registered by Rospatent only in October 2021. A little earlier, in August 2021, Great Frame registered Shmyak Bear. Clever believes that the studio is violating their exclusive rights, since the bear’s name bears a “confusing resemblance” to the publisher’s character.

“We asked Rospatent to cancel the registration of the Mishka Shmyak trademark. But Rospatent did not go forward,” says Maria Sokolova, Senior Associate at Clever-Media-Group LLC. The Federal Institute of Industrial Property (FIPS) rejected Clever’s complaint, after which the publishing house went to court. The FIPS conclusion clarifies that each of the characters “has sufficient individualizing characteristics and features, due to which they are recognizable and exist as an independent result of intellectual activity.” Rospatent has not yet filed a lawsuit, but a review of the case will be prepared for the court hearing, Kommersant was told in the department. Grate Frame did not respond to a request.

According to the FIPS conclusion, the Grate Frame refers to the fact that “shmyak” is simply a literal translation of the English word splat and “is not the result of creative work in accordance with paragraph 7 of Art. 1259 of the Civil Code”. Clever does not agree with this, believing that the character of Oleg Roy “parasites on the popularity of Shmyak the kitten.” In addition, the Grate Frame animations, according to the publisher, block the possibility of continuing the series about the Shmyak kitten.

Disputes related to the conflict of registered trademarks are quite common in practice, but it is rare when the same fantasy name is assigned to different animals, says Alina Akinshina, CEO of Online Patent. According to Georgy Davidyan, executive director of the Media-NN law firm, if the studio starts producing products with the Shmyak bear, this may create a “threat of misleading customers” who are used to the fact that Clever produces products with Shmyak. In February 2022, Gulliver Group, a manufacturer of toys and goods for children, announced that it was preparing a Shmyak Bear soft toy.

Legal adviser of the intellectual property practice of the law firm EBR Igor Feelings notes that the Civil Code prohibits the registration of a trademark that is identical to the name of the character, but not similar to it: “However, if the court satisfies the claim of the publisher, this will entail a broad interpretation of the norm of the law and may lead to the spread of disputes between copyright holders, having similar designations.

Yulia Yurasova, Anna Zanina