In 2025, registering a trademark (TM) in Russia remains a critical tool for brand protection, but the process is fraught with nuances, especially when applications involve designations similar to well-known brands. Rospatent, the federal authority for intellectual property, meticulously examines such applications to prevent consumer confusion and unfair competition. According to statistics, over 120,000 trademark applications are filed annually, with approximately 15% rejected, including due to similarity with existing or well-known brands. This article explores the examination process, criteria for assessing similarity, specifics for well-known brands, case studies, and recommendations for applicants. The information is based on the Civil Code of the Russian Federation (CC RF), Rospatent’s methodological guidelines, and judicial practice.

Trademark Application Review Process at Rospatent

Trademark registration begins with filing an application with the Federal Institute of Industrial Property (FIPS), a division of Rospatent. The application includes a description of the designation, a list of goods/services under the Nice Classification (MKTU), and payment of a state fee (from 30,000 RUB). The process takes up to a year and consists of several stages:

1. Formal Examination (1–2 months): Verifies the completeness of documents and correct classification under MKTU. If compliant, the application is published in the registry.
2. Substantive Examination: Assesses the trademark’s registrability, including similarity with other marks. FIPS experts compare the applied designation with registered TMs, prior applications, well-known brands, geographical indications, and company names. If similarity to the point of confusion is found, a preliminary refusal is issued, with a six-month window to respond.
3. Decision and Publication: If approved, the TM is registered for 10 years (renewable). Refusals can be appealed to Rospatent’s Chamber for Patent Disputes or the Intellectual Property Court.

For applications resembling well-known brands, the focus is on the risk of misleading consumers, even if the goods are non-homogeneous.

Criteria for Assessing Similarity to the Point of Confusion

Similarity to the point of confusion occurs when TMs are not identical but their elements create an overall impression of identity, potentially misleading consumers. The assessment follows Rospatent’s Methodological Guidelines (Order No. 197, 31.12.2009) and considers three criteria:

• Visual (Graphic) Similarity: Compares appearance, fonts, colors, and composition. Similar shapes or stylistics may lead to refusal, even with differences.
• Phonetic (Sound) Similarity: Analyzes pronunciation, syllables, and stress. For example, “DIXIE” and “ДИКСИ” (DIKSI) are considered similar.
• Semantic (Conceptual) Similarity: Evaluates meaning and associations. For instance, “Music of Sleep” and “Melody of Sleep” may be deemed similar due to shared concepts.

The comparison accounts for the TM type (word, figurative, combined) and the homogeneity of goods (similar properties, target audience, distribution channels). Strong (original) elements carry more weight than weak (generic) ones like “eco.” Refusal is possible under Article 1483 of the CC RF if similarity exists with registered or well-known TMs.

Specifics of Reviewing Applications Similar to Well-Known Brands

Well-known brands (recognized under Article 1508 of the CC RF) enjoy broader protection: similarity may lead to refusal even for non-homogeneous goods if it associates with the brand and harms its reputation. Rospatent considers a brand’s status (e.g., Coca-Cola or Apple), verified by surveys or court rulings.

From 2022 to 2025, amid the exit of foreign companies, applications for similar TMs (e.g., “Uncle Vanya” instead of McDonald’s) surged. Rospatent labels this “parasitic marketing” and often refuses such applications as unfair competition. These applications undergo strict scrutiny: even if a brand is unprotected in certain MKTU classes, registration may be challenged in court for misleading consumers.

Case Studies

• Mars vs. Mrcat (2018): Mars contested the registration of “Mrcat” for pet food, citing similarity to “Kitecat.” Courts rejected the claim, noting Kitecat’s lack of distribution in Russia and differences in imagery.
• WISMAR: The application for “WISMAR” for furniture was rejected due to similarity with the German city’s name, but courts overturned the refusal, as the city is little-known in Russia.
• ART MEBEL: Registration of “ART MEBEL” (Art Furniture) was denied due to phonetic and visual similarity with an existing TM in the same MKTU class, upheld by the Intellectual Property Court.

These cases highlight the subjectivity of the examination: decisions depend on the expert’s perception and evidence provided.

Recommendations for Applicants

To avoid refusal:

• Conduct a Preliminary Search: Use Rospatent’s databases or services like Gardium or Brand-Search (free or from 300 RUB). Specify MKTU classes and use search operators.
• Obtain a Letter of Consent: If similarity exists, request permission from the TM owner (not applicable for identical TMs).
• Modify the TM: Add unique elements to enhance distinctiveness.
• Engage a Patent Attorney: They assist with searches and argumentation (registry on Rospatent’s website).

In conclusion, Rospatent rigorously reviews applications resembling well-known brands to protect the market from confusion. Thorough preparation minimizes risks, but disputed cases may require appeals. Check Rospatent’s official website for up-to-date information.