LEGO vs. "LEGOROD": Invalidation of a Russian Trademark Based on Likelihood of Confusion and Established IP Court Practice

Introduction

The international company LEGO Juris A/S, the proprietor of the globally renowned LEGO trademark, filed a claim with a Russian court seeking invalidation of the Russian trademark "LEGOROD."

The grounds for the claim were that the disputed designation was confusingly similar to LEGO's registered trademarks and was capable of misleading consumers as to the commercial origin of the goods and services.

Following judicial review, the court upheld LEGO's claims and invalidated the trademark "LEGOROD."

1. Applicable Legal Framework

1.1. Provisions of the Civil Code of the Russian Federation

In resolving the dispute, the court relied primarily on the following provisions of the Civil Code of the Russian Federation:

Article 1483 — establishes grounds for refusal of trademark registration. In particular, registration is not permitted if a designation is confusingly similar to an earlier protected trademark and is used in relation to identical or similar goods and/or services, where such use may mislead consumers.

Article 1484 — defines the scope of exclusive trademark rights. Paragraph 3 explicitly prohibits the use of a designation similar to a protected trademark, without the right holder's consent, if such use creates a likelihood of confusion.

These provisions form the statutory basis for both refusal of registration and post-registration invalidation of trademarks. Learn more about trademark registration and protection in Russia.

1.2. Supreme Court and IP Court Guidance

The court also relied on the legal position expressed in Paragraph 162 of Resolution No. 10 of the Plenum of the Supreme Court of the Russian Federation dated 23 April 2019, according to which:

• similarity must be assessed as a whole, taking into account visual, phonetic, and semantic criteria;
• the decisive factor is the overall perception of the average consumer, not a side-by-side technical comparison;
• the degree of similarity of goods and services directly affects the likelihood of confusion.

In addition, the Intellectual Property Court (IP Court) has consistently held that:

• where an earlier trademark is incorporated into a later composite designation, such incorporation may be sufficient to establish confusing similarity;
• priority is given to dominant elements, particularly verbal components, as they play the primary role in consumer perception.

2. Assessment of the Disputed Designation

2.1. Full Incorporation of the Verbal Element "LEGO"

The court established that the verbal element "LEGO" is fully incorporated into the disputed trademark "LEGOROD."

Key findings included:

• "LEGO" constitutes an independent, clearly recognizable element within the disputed mark;
• the addition of the suffix "-ROD" does not alter the core semantic or phonetic perception of the designation;
• consumers are likely to identify the disputed mark through the element "LEGO," given its strong distinctiveness and global recognition.

Russian IP court practice consistently holds that full reproduction of a protected trademark within a composite mark is a strong indicator of confusing similarity.

2.2. Dominant Role of the Verbal Component

The court emphasized that:

• the verbal element is dominant in the disputed trademark;
• consumers primarily rely on verbal elements when identifying trademarks, especially in oral communication and informal commercial contexts;
• graphical or secondary elements, if any, do not neutralize the dominant impact of the verbal component.

This approach aligns with long-standing IP Court jurisprudence, according to which dominant verbal elements have decisive significance in trademark comparison.

2.3. High Degree of Similarity of Goods and Services

The court further established a high degree of similarity (homogeneity) between the goods and services covered by the trademark "LEGOROD" and those protected under LEGO's trademarks.

In accordance with Russian law and judicial practice:

• the closer the goods and services, the lower the threshold of similarity required between the designations;
• similarity of goods significantly amplifies the risk of consumer confusion, even where marks are not identical.

3. Sociological Evidence as Proof of Likelihood of Confusion

A critical piece of evidence in the case was a consumer survey conducted by VCIOM (Russian Public Opinion Research Center).

Survey results showed that:

• 72% of respondents associated the trademark "LEGOROD" with the LEGO brand;
• a substantial portion of consumers believed that goods or services under the "LEGOROD" designation were produced, licensed, or otherwise connected with LEGO.

The court accepted the survey as admissible and probative evidence, confirming actual consumer perception rather than abstract theoretical similarity.

Russian courts increasingly rely on empirical consumer perception data, particularly in disputes involving well-known trademarks.

4. Impact of LEGO's Brand Recognition

The court also took into account the exceptional reputation and recognizability of the LEGO trademark.

In accordance with established practice:

The stronger and more distinctive the earlier trademark, the broader the scope of its legal protection.

As a result, even partial reproduction of a famous trademark may be sufficient to establish infringement or invalidate a later registration.

5. Court's Final Decision

Based on the cumulative assessment of:

• Articles 1483 and 1484 of the Civil Code of the Russian Federation;
• guidance of the Supreme Court of the Russian Federation;
• consistent practice of the Intellectual Property Court;
• sociological evidence demonstrating real consumer confusion;

the court concluded that:

• the trademark "LEGOROD" is confusingly similar to LEGO's trademarks;
• its registration creates a likelihood of misleading consumers;
• the legal protection granted to the disputed trademark violates LEGO's exclusive rights.

The trademark "LEGOROD" was invalidated by court decision.

6. Practical Implications for Businesses

6.1. Famous Trademarks Require Special Caution

Use of elements associated with well-known brands carries heightened legal risk, even where such elements are combined with additional wording.

6.2. Formal Modifications Do Not Eliminate Risk

Adding prefixes, suffixes, or descriptive elements does not neutralize infringement where the dominant component remains identical or highly similar.

6.3. Consumer Perception Is Key

Courts increasingly rely on consumer surveys as decisive evidence in trademark disputes. Our IP litigation services include comprehensive evidence gathering and consumer research.

6.4. Pre-Registration Legal Clearance Is Essential

Comprehensive trademark searches and legal analysis prior to filing are significantly less costly than subsequent litigation and invalidation proceedings.

IPPRO Conclusion

The "LEGOROD" case clearly demonstrates that brand imitation strategies do not withstand judicial scrutiny, particularly when they involve internationally recognized trademarks.

Effective trademark strategy must be based not on borderline creativity, but on legal distinctiveness, consumer perception, and established court practice.