Key Points
- The Board of Rospatent upheld the lawfulness of the refusal to register the trademark “GO CRISPY” on the grounds of likelihood of confusion with the earlier registered designation “CRYSPI” (certificate No. 190305) based on the phonetic criterion, notwithstanding graphical differences and the presence of a figurative element.
- It was established that the verbal elements “CRISPY” and “CRYSPI” are phonetically identical for the Russian consumer (both transcribed identically as “Криспи”), and the substitution of the grapheme “Y” with “I” does not affect the auditory perception of the designation.
- The Class 43 services claimed by the applicant were deemed similar to the Class 42 services for which protection is granted to the cited mark, due to the commonality of consumer purpose, channels of trade, and target consumers.
- The applicant’s argument regarding actual non-use of the cited trademark was rejected as unsupported by final and binding court decisions; the applicant’s notoriety is not taken into account when applying paragraph 6 of Article 1483 of the Civil Code of the Russian Federation.
- The applicant’s proposal to disclaim the element “CRISPY” from independent legal protection does not remove the obstacle to registration, as the verbal component of a composite designation is recognized as the dominant and memorable element.
Legal Analysis
Assessment of likelihood of confusion in composite marks in opposition proceedings against a Rospatent decision: analytical commentary
In administrative practice concerning intellectual property disputes, the criteria for assessing similarity of designations in trademark registration are of particular importance. The subject of this analysis is the decision of the Board of Rospatent on the opposition filed by an applicant from Qatar against the refusal of state registration under application No. 2024732734.
Legal framework and phonetic comparison
Pursuant to subparagraph 2 of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation (hereinafter – the Civil Code), designations that are identical or confusingly similar to trademarks protected in the Russian Federation with an earlier priority in respect of similar goods and services are not registrable. Application of this provision requires a comprehensive assessment of phonetic, visual, and semantic characteristics of the compared designations, taking into account the principle of dominance of individual elements within composite marks.
In the present case, the Board reasonably concluded that there is phonetic identity between the elements “CRISPY” and “CRYSPI.” This position is based on linguistic analysis: both designations consist of an identical set of sounds; the substitution of the grapheme “Y” with “I” in the first syllable does not alter the sound pattern, and the final vowels are pronounced identically. For the average Russian consumer, perceiving the designation aurally, no distinction exists between these elements, as confirmed by their identical transcription into Russian (“Криспи”).
With regard to the figurative component of the applied-for designation, the Board characterized the depiction of an elderly woman against a circular background as an element lacking unique artistic features and incapable of forming a stable association distinguishing the applied-for designation from the cited mark. This conclusion is consistent with established practice, according to which, in composite marks, the verbal element generally serves as the primary indicator of the commercial origin of goods or services, as it is the element most readily remembered and verbally reproduced by consumers.
Similarity of services (Nice Classes 42 and 43)
The issue of similarity of services was resolved by the Board based on the criteria set out in paragraph 45 of the Rules for drafting, filing, and examination of documents for state registration of trademarks. Services in Classes 43 and 42 of the Nice Classification were deemed similar due to their common functional purpose (provision of catering services), overlapping channels of trade, target consumers, and complementary nature. This approach aligns with the principle of preventing consumer confusion as to the commercial origin of services.
Non-use arguments, scope of examination, and conclusions
The rejection of the argument concerning actual non-use of the cited trademark was justified by the absence of proper evidence in the form of final court decisions. Notably, within the administrative opposition procedure under paragraph 6 of Article 1483 of the Civil Code, the actual business activities of the parties are not assessed: the scope of examination is limited exclusively to the lists of goods and services specified in the application and the registration certificate. This approach ensures legal certainty and prevents substitution of administrative examination with judicial fact-finding.
Thus, the contested decision of the Board of Rospatent demonstrates consistent application of Part IV of the Civil Code and subordinate regulations in assessing registrability, confirming the priority of the phonetic criterion and the dominant role of verbal elements within composite trademarks.
Commentary by Patent Attorney A.V. Leonov
Practical implications for trademark registration and enforcement strategy
A.V. Leonov, Russian patent attorney, expert in intellectual property protection
The present decision establishes several important benchmarks for trademark owners and applicants seeking protection in the Russian Federation.
Key business risks
Priority of phonetic similarity. Even where graphical differences and original figurative elements are present, the verbal component may serve as a ground for refusal if it is phonetically identical to an earlier registered mark. This rule is particularly critical for designations containing neologisms or fanciful elements (“CRYSPI”), where any phonetic overlap increases the likelihood of confusion.
Similarity across adjacent Nice Classes. The practice of recognizing Classes 42 and 43 as similar requires applicants to conduct expanded clearance searches not only within the claimed class but also across adjacent categories related to catering, delivery, and consulting in the food industry.
Inadmissibility of reliance on non-use in administrative proceedings. Arguments regarding non-use of a cited mark are only relevant where supported by a final court decision on early termination of rights. Within opposition proceedings against a Rospatent decision, such arguments are not independently assessed.
Recommendations for clients
- At the application stage, conduct in-depth phonetic analysis of verbal elements, including transcription into Russian and assessment from the perspective of the average consumer.
- In case of refusal under paragraph 6 of Article 1483 of the Civil Code, consider filing for early termination of the cited mark due to non-use (Article 1486 of the Civil Code) as a preliminary step before lodging an opposition.
- Where disclaimers of certain elements are proposed (as in the present case), assess whether the designation retains distinctiveness without such elements; if the verbal element is dominant, such a concession may not remove the obstacle to registration.
Prospects for disputes
The decision reflects a conservative approach by Rospatent in assessing similarity, reducing the likelihood of successfully challenging refusals based on phonetic identity in administrative proceedings. To shift enforcement practice, emphasis should be placed on semantic differences and evidence of acquired distinctiveness through intensive use (paragraph 1 of Article 1483 of the Civil Code), although reliance on this ground requires properly substantiated evidence of recognition specifically within the Russian Federation.
Related Materials
Further IPPRO analysis on phonetic similarity, composite marks, and Board practice: