The Intellectual Property Court of Russia took a side with Baltic Tobacco Factory LLC in a dispute with the Japanese company Japan Tobacco International (JTI) and refused to cancel the registration of the trademark WinSStar of the Russian company.
In April 2019, a similar decision was made by the Chamber of Patent Disputes of Rospatent.
JTI stated that the WinSStar trademark is confusingly similar to their Winston trademark, that they are registered for the same class, the products are homogeneous, are intended for the same consumer circle, and are sold through the same distribution channels.
Also, the Japanese company drew attention to the fact that the signs are similar visually, both are made in Latin, in standard fonts, while the five letters are the same (w-i-n-s-t) and are set in the same order.
According to the court, in the WinSStar word element, the fourth and fifth letters “S” are made in capital letters, and this causes visual and semantic separation of the word element into parts, and also leads to an intonation pause when it is pronounced.
In addition, the Russian consumer can perceive the word as a combination of the English words “win” and “star”.
Therefore, the judges recognized that signs are capable of causing various associations, that is, they are dissimilar in terms of the semantic criterion for the similarity of verbal designations.