Managing Intellectual Property
July/August 2004

Tips on using Cyrillic trade marks

By Eugene Arievich

Eugene Arievich explains why trade mark owners need to be wary when translating their western trade marks into Cyrillic script, and highlights some pitfalls to avoid.

An important issue that foreign companies face when entering the Russian market is whether it is necessary or advisable to localize their trade marks by way of rendering them into Cyrillic/Russian script. While there is no single answer to this question, analyzing this issue proves useful from both a marketing and a legal standpoint. There are a number of issues foreign trade mark owners should take into account when planning to register and use their trade marks in Russia. Below we consider some of these issues, and explain how foreign trade mark owners can take better decisions and choose the right option.

Language lessons

It is a common delusion that Cyrillic and Russian are one and the same. In fact, Russian is a language spoken in Russia as well as in many former USSR countries while Cyrillic is a script used also for languages other than Russian (for example, Ukrainian and Kazakh). Moreover, there are differences between the Cyrillic alphabets of various Slavic languages, for example the same sound [i] would correspond to the letter "Θ" in Russian and "I" in Ukrainian.

At first sight, one may think that the Cyrillic script is quite close to the Latin (or western) one, but this impression may be misleading. It is true that many sounds and letters in both scripts coincide and are pronounced and written in the same way – for example A, O, K, M, T. But there are other letters that look totally different such as Τ [f], Γ [g] or Ϋ (a very deep sound similar to [y]). What makes things even worse is that some letters that look identical to those of the Latin alphabet are pronounced completely differently. For example, "Β" is pronounced as "v" and "Π" as "r". A foreigner who comes to Moscow and sees a sign saying "PECTOPAH" would find it hard to understand that it is simply a "restaurant". At the same time a Russian person would also have difficulty correctly interpreting and pronouncing Latin words, especially when they appear out of context. Some famous trade marks encounter problems when rendered into Russian. For example, BBC would be pronounced as [vvs] which stands for "Voenno-Vozdushnye Sily", meaning Air Force.

Registration and enforcement issues

There exist no legal provisions which make it mandatory for businesses to obtain protection for their trade marks in Cyrillic script. Normally, the protection granted to a mark spelled in Latin script also extends to its direct Cyrillic equivalent in the sense that the latter will not be granted protection if filed by a third party in respect of similar goods/services or considered as infringing if used by a third party in respect of similar goods/services. If, however, the Cyrillic mark is just similar but not identical, the difference in script may result in the lack of protection for the mark in Latin vis-a-vis a later Cyrillic one. For example, if OLFEN is registered only in Latin it will still provide enough guarantee against use of an identical mark in Russian – ΞΛΤΕΝ. If, however, someone uses and/or applies for the registration of a mark which would be in Russian and similar but not identical to ΞΛΤΕΝ, for example ΞΛΟΕΝ (OLPEN), it is far from clear whether the Latin registration on its own could serve as a sufficient safeguard against such use/registration.

In a civil action on infringement before the court or in an unfair competition action before anti-monopoly authorities it may be possible to protect a registered mark in Latin script against use of a similar (not identical) mark in Cyrillic since under the Trade Mark Law the similarity test would apply in such situations. However, in a criminal case the Penal Code talks about illegal use of a trade mark of another and use here may be construed narrowly as direct copying only.

One other point to take into account is that if a mark is registered only in Latin but used only or predominantly in Cyrillic it may become vulnerable to a non-use attack after the expiry of the three-year grace period within which it has not been used in the form it is registered.

An issue that is necessary to consider in relation to this matter is that of the preferred rendering of the mark into Russian. There are in principal two ways available: phonetic (transcription) and letter-by-letter (transliteration). There may be no universal advice as to which manner is preferable. Rather, the recommendation is in each particular case to adopt the variant that is better from the marketing point of view. In other words, choose that which is easier to pronounce and remember and does not cause any adverse or misleading associations. For instance, using the example of BBC given above, a phonetic rendering "ΑΘ-ΑΘ-ΡΘ" [bi-bi-si] may be preferable from the avoidance of confusion standpoint. Obviously, a lot will depend on the budget available. The best option to obtain the maximum degree of protection is to cover all variants of rendering, but that could be costly. One problem is that some Latin letters and sounds do not have a direct Cyrillic equivalent. In addition, two features of the Russian language are the softening of consonants in terminal positions and changing the pronunciation of vowels in unstressed syllables. By way of example, the trade mark BAILEYS may be rendered into Russian as

and this may not be all!

It is important to remember that the equivalents to be adopted should be cleared from the availability point of view so that they do not run into Russian marks that have already been registered.

Market use issues

There are in force certain municipal decrees, for example in Moscow and St Petersburg, which provide for mandatory use of (registered) Russian equivalents of foreign trade marks in street signage. This would typically extend to cases where trade marks also represent company names appearing on the relevant establishment (such as Credit Suisse or Planet Hollywood). The lack of a trade mark registration of the Cyrillic equivalent may create serious problems in respect of compliance with such rules. While the Federal Law on Advertising makes an exception to the rule that all advertising has to be in the local language – allowing for use of registered trade marks in the language of their registration – this exception does not cover a trade mark not registered in Russia. Remedies for non-compliance with the Law may be quite stringent.

On the marketing and advertising side the use of Russian equivalents is recommended since they are more easily grasped by consumers, who may have difficulties in pronouncing and memorizing foreign names written in Latin script. It has been observed that sometimes consumers refrain from purchasing products with foreign names in Latin script because they feel ashamed of making a mistake in pronunciation.

When intending to use a trade mark in Russia one should always keep in mind the semantic aspect. Since most European languages of Roman origin have common roots it is normally easier to observe precautions when adopting a mark for use within the western European or US market. However, with Slavonic languages this may be more difficult. For example, the word Duplo, which would typically be associated with duplication in a Western mind, has a definite dictionary meaning of "cavity" or "cavern" in Russian.

Certain trade marks which are perfectly digestible for a Western ear would appear inappropriate for a Russian consumer. For example, the mark Obserin for a drug could sound quite innocent to someone who does not understand Russian, but would be funny for a Russian speaker as it has connotations with a vulgar Russian verb pertaining to a natural function of the human body. And it may be misleading too because the drug may in fact be (for example) a sedative and not a laxative as the name strongly suggests!

© Eugene Arievich 2004. The author is a partner of Baker & McKenzie in Moscow