Russian vodka firm's claim to name gives American distilling giant Smirnoff a legal headache
The Ukrainian State Patent Office last month revoked the license of Russian-made Smirnov vodka because the name of the product sounded suspiciously similar to another brand: Smirnoff, the United State’s leading brand of vodka.
The decision came after United Distillers and Vinters of North America, Inc., owners of Smirnoff and Smirnovskaya vodka trademarks, accused the Russian makers of Smirnov of stealing their image.
The Smirnoff trademark was registered in Ukraine in 1993 while the Smirnov label was registered in Ukraine by the Trading House of the Descendants of Pyotr A. Smirnov in February 1999. The Russian vodka producer claims to represent the true descendants of the original Smirnoff vodka producer who lived at the turn of the century.
But the Smirnoff brand has been produced in the U.S. since 1934 and has developed quite a following among vodka drinkers worldwide. There lies the problem, company officials say.
“Since [the name] Smirnov is very similar to the Smirnoff trademark, consumers can be misled into buying Smirnov, thinking it to be the international well-known Smirnoff brand,” read a statement issued by United Distillers and Vinters.
The history of the name stretches back nearly a century.
Representatives from United Distillers and Vinters say that the Smirnoff trademark was purchased in the early 1900s from Vladimir Smirnoff, one of the sons of Pyotr Smirnoff, the original producer of the now-famous vodka.
Although Pyotr Smirnoff’s Russian-distilled vodka first became famous in the 1800s, it did not originally carry the Smirnoff name. After the 1917 Bolshevik revolution, the Russian-based distillery was taken over by the state.
A short time later, Vladimir Smirnoff left Russia and ended up temporarily in Lviv, which at the time was part of Poland. It was there that he continued the family business by opening up a distillery – the vodka was labeled Smirnovka.
Vladimir did not stay in Lviv long. He quickly moved to France and sold the Lviv-based distillery to an American company – the pioneers of today’s United Distillers and Vinters.
Today, Smirnoff is one of the most popular trademarks in the world. According to marketing surveys conducted by United Distillers and Vinters “73 percent of Ukrainians know of the Smirnoff brand, while just more than 1 percent recognize Smirnov vodka.”
Michael Doubinskiy, a Kyiv-based patent attorney and the director of Intels, said the decision of the State Patent Office sets a precedent that could have major implications in the area of copyright protection.
Doubinskiy said that internationally known trademarks can be worth more than the companies that own them.
“Who made this mark popular,” Doubinskiy said. “This mark became internationally popular because of the U.S. company.”
He believes that the decision by the State Patent Office was a step in the right direction.
“Before this, cases were won by the party who spoke the loudest,” he said. “[This time,] the decision was awarded according to principle.”
But the war is hardly over.
Russia has not revoked the trademark license of the Smirnov firm. Thus, Smirnov’s operations in Russia continue, although the case against the makers of Smirnov vodka is currently being heard in Moscow city court, the Russian patent office and in regional court of the Krasnodarsky region.
“I have nothing wrong with sitting at the same table with competition just as long as they do not eat from our plate,” said Yevhen Ariyevich, a partner with Baker & McKenzie, the law firm representing United Distillers and Vinters in Russia.
Reportedly, the Smirnov name has more familiarity in Russia, but a decision by any of the three ruling entities would be binding throughout Russia.
“I think that in the end, we will come out on top,” Doubinskiy said. “Smirnoff is a worldwide trademark.”
But Leonid Yanishevsky, the Ukrainian-based patent attorney for Smirnov thinks otherwise. He has vowed to appeal the State Patent Office’s decision. His reasoning is based on the early ownership of the brand.
Yanishevsky argues that the Lviv-based distillery that was sold was not as well known as the original Russian-based distillery.
“Russia controlled 90 percent of the world’s vodka market before the Bolshevik revolution, and Pyotr Smirnoff’s vodka, not Vladimir’s, was world renown,” Yanishevky said.
“Big and powerful representatives of the American company used their heavy weight to influence the State Patent Office’s decision,” he said.
According to representatives of United Distillers and Vinters in Ukraine, since 1992 Smirnoff has sold approximately 25,000 cases of vodka a year in Ukraine.
