The Chamber for Patent Disputes of the Russian Patent and Trademark Office (Rospatent) has issued a decision to invalidate the Russian trademark registration for "Tmakota" following an opposition filed by Makita Corporation (Japan). The decision underscores the strict application of similarity standards and the growing weight of sociological evidence in Russian trademark disputes.
The Dispute at a Glance
Key Facts
- Opponent: Makita Corporation (Japan) — global leader in power tool manufacturing
- Registrant: Chen Yieksiu (China)
- Contested mark: "Tmakota" — trademark registration No. 763844, priority date 5 June 2019, Nice Class 07 (machinery, engines, tools)
- Earlier rights cited: Series of "Makita" trademarks (International Registrations No. 1489375 and No. 825120, plus Russian national certificates)
- Legal ground: Article 1483(6) of the Russian Civil Code — likelihood of confusion with earlier registered trademarks for homogeneous goods
- Outcome: Opposition upheld. Legal protection for trademark No. 763844 declared invalid in full.
Similarity Analysis
The Chamber conducted a comprehensive three-dimensional comparative analysis of the marks:
The leading "T" in "Tmakota" may be perceived as a separate element, leaving the core "makota." This differs from "makita" by a single vowel ('o' vs 'i') while retaining identical consonant structures and stress patterns.
Both marks use Latin script. Despite font differences — "Makita" in a stylised typeface versus "Tmakota" in standard characters — the overall visual impression creates proximity between the marks.
Both marks are invented (fantasy) words without inherent semantic meaning. Semantic comparison was therefore neutral, placing greater analytical weight on phonetic and visual criteria.
Homogeneity of Goods
The Chamber confirmed homogeneity across a broad range of goods and services:
| Nice Class | Goods / Services | Homogeneous? |
|---|---|---|
| Class 07 | Machinery, power tools, generators, engines (core overlap) | Yes |
| Class 08 | Hand tools and implements | Yes |
| Class 09 | Vacuum cleaners, battery chargers, measuring instruments | Yes |
| Class 12 | Motors for land vehicles | Yes |
| Class 37 | Repair and maintenance services for tools and machinery | Yes |
| Class 06 | Metal fasteners and hardware | No |
The Chamber noted that consumers could reasonably believe the goods originate from the same manufacturer due to overlapping distribution channels, shared retail environments, and functional complementarity between the product lines. The non-homogeneity finding for Class 06 goods did not affect the overall conclusion given the extensive overlap across the remaining classes.
The Decisive Role of Sociological Evidence
A significant — and increasingly influential — aspect of this case was the submission of a sociological survey conducted by the Laboratory of Sociological Expertise of the Institute of Sociology of the Russian Academy of Sciences (August 2025).
The memory test result — where over a third of respondents shown only "Tmakota" spontaneously recalled "Makita" — was particularly compelling. It demonstrated that confusion occurs not only in direct side-by-side comparisons, but also under real-world market conditions where marks are encountered separately.
Additional Factors
Serial Nature of Makita's Marks
The Chamber recognised that "Makita" marks constitute a series of trademarks, which under Russian practice elevates the risk of confusion: consumers familiar with one mark in the series are more likely to associate new similar designations with the same brand family.
Parallel Enforcement Proceedings
The decision referenced decisions by Russian commercial courts — including the Arbitration Court of the Khabarovsk Region — finding that "Tmakota" products had been sold unlawfully as confusingly similar to Makita goods. This coordinated approach of administrative opposition combined with parallel market enforcement reinforced the strength of the overall case.
Unfair Competition Considerations
Makita also alleged unfair competition, citing similar colour schemes (black and turquoise) and font styles on the infringing products. While the Chamber noted that determining unfair competition falls outside its direct competence, these circumstances were considered as factors increasing the probability of confusion in the overall assessment.
"Taking into account the degree of similarity of the compared designations, the high degree of homogeneity of the goods, and the results of the sociological survey, the Chamber concludes that there exists a likelihood of confusion between the compared marks in the eyes of consumers."
Key Takeaways for International Rights Holders
Protect a Series of Marks
Registering a family of marks built around a core brand name (e.g., multiple "Makita" variants across classes) strengthens opposition arguments and raises the bar against similar third-party filings, as the Chamber applies heightened confusion risk to mark series.
Invest in Sociological Evidence
Surveys conducted by accredited Russian scientific institutions carry significant weight before the Chamber. A memory-test result showing 35%+ false recall of a brand is compelling evidence that confusion occurs in real market conditions — not just in controlled comparisons.
Anticipate Broad Goods Homogeneity
Rospatent and the Chamber regularly interpret homogeneity broadly, especially across power tools (Class 07), hand tools (Class 08), electronic accessories (Class 09), and related repair services (Class 37). Cross-class analysis should be factored into both filing and opposition strategies.
Combine Administrative and Court Enforcement
The parallel court proceedings referenced in this decision illustrate the value of a coordinated enforcement strategy: administrative opposition at Rospatent, combined with commercial court actions against infringing sellers, creates a mutually reinforcing evidentiary record.
Source: Conclusion of the Chamber for Patent Disputes of Rospatent regarding opposition against trademark No. 763844. For advice on trademark protection and enforcement in the Russian Federation, please contact IPPRO specialists.