Trademark rights and freedom of expression: a case from Russia

This article is devoted to a trademark invalidation claim at the Russian IP office (Rospatent). The trademark under review is the sign “foreign agent,” and its right holder is the notorious TV propaganda network – Russia Today (RT).

The foreign agent legal construct has roots in the US (FARA) and exists today in different parts of the world. In short, foreign agent regulations require that persons, participating in political activities, reveal their relations with foreign governments. The list of states with foreign agent laws includes such authoritarian regimes as Venezuela and Ethiopia, but it is Russia that “most notably” revived these laws to suppress the opponents of its regime. Russian regulations were initially aimed at NGOs and mass media, but today almost anyone can be proclaimed a foreign agent and experience limitations of rights and a certain stigma in the society.

In this setting, the question is how could RT, the propaganda machine fighting with foreign agents in the country, become the owner of the trademark “foreign agent”? Is not this an example of how trademark rights and freedom of expression may collide?

In 2017, having been registered as a foreign agent in the US, RT started selling merchandise with the sign “foreign agent” in Russian and English. This move could be seen as referring to and laughing at the network’s new status in the US.

In parallel, people in Russia protested domestic laws on foreign agents. Promotional goods with the sign “foreign agent” appeared on the market for those who wanted to express their dissent. In 2021, Feelosophy store in Moscow introduced a T-shirt with this sign in support of Meduza, an independent media outlet from Latvia, formed by Russian journalists and recently proclaimed a foreign agent in the country. Right after that, Feelosophy received a lawsuit from RT, claiming trademark infringement.

It turned out that RT has a trademark in Russia for the sign “ИНОСТРАННЫЙ АГЕНТ” (“foreign agent”), registered in 2020 for various goods, including T-shirts. Based on it, the right holder initiated a proceeding against Feelosophy in a Russian state court which is still pending. In trademark infringement cases, invalidity counterclaims can be filed, as stipulated, e.g., by the EU regulation. But in Russia, it can only be a separate invalidation claim by an interested party to Rospatent – this is how aforementioned Meduza decided to proceed.

Meduza asked the office to invalidate the mark based on inter alia (i) descriptiveness and general lack of distinguishing power, (ii) the sign’s misleading character, and (iii) its contradiction to public interests, humanity, and morality. In its recent decision, Rospatent found Meduza to be an interested party based on all grounds, except for the public interests one. The office, however, did not agree with Meduza’s arguments and preserved the mark. Below is a summary of key findings by Rospatent and short comments from the author.

A. Meaning of the sign and descriptiveness. Rospatent underlined that the fact of proclaiming a person a foreign agent means that it is identified as a specific subject of political activities to guarantee openness about its finances. “Foreign agent” is not a status, the office concluded. Hence, the sign does not characterize any goods that a foreign agent may manufacture.

Comment. The office’s logic seems far-fetched. The word “status” means a position with respect to others or conditions of a person according to the law. The Russian Administrative Liability Code explicitly mentions the “foreign agent status,” so does the Russian Law on Mass Media. Thus, the sign at issue signifies a person’s status. Since status implies some traits, the sign can characterize the person under it, e.g., a manufacturer of goods, and characteristics of the manufacturer are included into the descriptiveness ground. Interestingly, in its decision, Rospatent itself discusses “the characteristic of subjects as ‘fulfilling the functions of a foreign agent’.”

B. Role of goods and descriptiveness. Rospatent concluded that the sign “foreign agent” is related to political activities and not to any kind of goods in the registration. Therefore, there exists a fantasy meaning of the sign towards the goods. Additionally, the sign per se does not include any “appeals of a political character.” So, the descriptiveness ground was not satisfied, including for printed materials that were highlighted by Meduza as goods used in political campaigns.

Comments. Rospatent should have focused on “expressive goods,” which include print publications along with T-shirts, mugs, stickers, etc. They may bear a sign not as a source of origin but as a statement. The US Patent and Trademark Office highlights that “phrases used on items such as t-shirts… have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods.” Expressive goods are indeed not political by default, but they are used to express political statements, e.g., “[I am a] foreign agent.” No such analysis was attempted by Rospatent, despite the obvious role of freedom of speech in this setting.

C. Opinion poll and descriptiveness. There is an opinion poll, provided by the right holder. One of the questions is if the sign at issue serves as a trademark or merely describes goods and their manufacturer. 77% of respondents believed that the sign can be a mark. Also, most respondents replied that the sign is not a common term from the field of production. Rospatent relied on the poll to conclude on the lack of descriptiveness.

Comments. It is unlikely that the respondents were shown any pictures of how the sign can be placed on expressive goods to convey a message. If they had been shown this, the poll results could have been quite different, because people are accustomed to perceiving statements on, e.g., T-shirts as mere messages and not as indications of source. The same message can be placed on T-shirts from different producers, as “NO MORE RINOS” in the US, with no trademark rights outweighing such freedom-of-speech uses.

D. Distinguishing power. In case materials, there was no evidence about whether third parties utilized the sign for the goods at issue. So, Rospatent was not convinced in the lack of any distinguishing power of the sign. Rospatent also underlined that non-protectability of the sign could only be discussed with respect to services (missing in the registration), because foreign agents by law are related to “services” – political activities and dissemination of information. Finally, the office concluded that Meduza could freely use the compulsory foreign agent marking, for it “includes a different, more extended, wording” (24-word phrase).

Comments. The Rospatent rules urge the examiners to use internet sources. Online publications could have revealed public debates about foreign agents even for the most uninformed officer. The societal importance of the sign should have been considered not to interfere with the public discourse about foreign agents. Even the RT’s T-shirts, being on sale online before the mark’s priority date, should have alerted the examiner. As for the office’s passage about foreign agents’ services, it totally neglects the common practice of offering merchandise by politicians, NGOs, and media outlets.

E. Misleading character. No misleading character was established. Rospatent limited its analysis to the fact that the sign does not characterize any goods, hence, it cannot be misleading.

Comments. Rospatent should have referred to the high probability for a lot of entities, including marketers of goods, to become foreign agents. In turn, RT may mislead consumers about the source of goods, for it is not a foreign agent in Russia.

F. Humanity and morality. The office did not see any discrimination in the foreign agent laws: no inequality, injustice, or violation of rights, as well as no equation of the sign “foreign agent” with the word “spy.” So, Rospatent concluded that there was no encroachment upon the principles of humanity and no negative influence on the moral essence of the population.

 Comments. Russians know that “foreign agent” is a negative label in the eyes of the regime. The fact of registering the sign in the name of the state-funded network is immoral towards the society that experiences the foreign agent laws’ limitations. It was not enough for RT to laugh at the US democracy; it now ridicules what is left from the civil society in Russia and tries to shut up independent voices.

Meduza lost the invalidation case, but the decision can still be challenged in the specialized IP court, which is also the cassation instance for the infringement case. The highlight of both cases is the conflict between trademark rights and freedom of expression. In this conflict, the freedom part shall prevail when the use of signs as messages occurs on expressive goods. If the invalidation claim fails in all instances, the infringement claim still shall be declined not to punish Meduza’s partner, Feelosophy, for using the sign for its mere communicative function. Freedom of expression is key to democratic development, which is neglected in Russia (see recent judgment of the ECHR on the foreign agent laws in the country). But for the civilized communities, it is another lesson of how even minor cases of suppressed voices, including in business contexts, shall be met with alert and handled from the outset.