On trademarks the dog was eaten

Hong Kong’s Yongfeng Trade is seeking to re-register as its trademark the image of a dog with a gramophone – one of the oldest logos in the recording industry, which is now owned by British music retailer HMV. Abroad, Yongfeng’s attempt to register the rights to the mark failed: the authorized agency of Singapore referred to the fact that the mark had long ago acquired the status of an “icon of the music industry.” In the Russian Federation, the long history of a brand cannot be the main argument. The key issue will be its popularity among Russian consumers.

Hong Kong Yongfeng Trade Co. Limited sent an application to Rospatent to register as a trademark the image of a dog with a gramophone, identical to the logo of the historical music label His Master`s Voice and HMV stores. The application is dated April 3, the company asks to register the mark for use in clothing.

Yongfeng was founded in 2016, according to the Hong Kong company registry. Kommersant did not find the company’s website or information about its products or services. Since August 2020, Yongfeng already owns the rights to an identical trademark in the Russian Federation, also for use in clothing. Patent attorney Nikolai Zorin, whose address is indicated in the application, did not answer Kommersant’s questions.

In 2019, the company filed a similar application with the Singapore Intellectual Property Office, also demanding that the protection of three other His Master`s Voice trademarks registered to HMV structures be cancelled. These applications were granted and the mark was registered with a Hong Kong company. But in 2023, at the request of Singaporean HMV Brands Pte Ltd. The department canceled the Yongfeng mark as being issued in bad faith.

The Singapore authority’s decision states that the particular image of the dog with the gramophone “has been an icon of the music industry for decades” and that at the time of the application, the HMV logo remained among the public in Singapore with a positive reputation “accumulated over many years of operation (of HMV stores.— “Kommersant”) in the country”. Yongfeng “has never carried on business in Singapore in connection with the mark in question” and has not explained why the mark in its application is identical to the previous marks from HMV.

The decisions of foreign patent offices are based on the provisions of national legislation and the popularity of designations in each specific country, notes Semenov & Pevzner lawyer Alexandra Galkina, and “Rospatent is usually guided by its own expertise.”

In Russia, adds Anastasia Skovpen, intellectual property lawyer and author of the Telegram channel “Calculate by IP”, as a general rule it is not allowed to register marks that can mislead consumers about the product or its manufacturer: “However, a statement that consumers associate the mark with a specific copyright holder cannot be unfounded. Rospatent will check whether any activity was carried out in the Russian Federation under this designation and whether the consumer could have known about it.”

Patent attorney at Online Patent Margarita Taranova notes that according to Russian standards, “a long history of the brand and a good reputation among loyal consumers” alone does not allow preserving the trademark. According to her, Rospatent cannot cancel a trademark already registered for Yongfeng on its own initiative—it requires an application from an interested party or a court decision.

A repeated application may be a way to avoid early termination of trademark protection, Anastasia Skovpen believes: “Three years have passed since registration, and if Yongfeng has not used the designation in Russia, then the interested party can go to court to remove legal protection.”

Yuri Litvinenko, Anna Zanina