Key Takeaways
- Rospatent initially refused registration of the designation under Application No. 2023824014 on the basis of Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation due to likelihood of confusion with a previously registered trademark under Certificate No. 814276.
- The applicant did not contest Rospatent's findings regarding the similarity of the designations and the similarity (homogeneity) of the goods and services, but instead referred to the subsequent assignment of the exclusive right to the cited trademark in its own favor.
- The Chamber of Rospatent found that after the transfer of the exclusive right to the applicant, the obstacle provided for in Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation ceased to exist, since the conflicting designations became concentrated with a single rights holder.
- When examining the dispute, the Chamber reproduced the criteria for assessing the similarity of designations and the similarity (homogeneity) of goods provided for in Paragraphs 41–45 of the Rules approved by Order of the Ministry of Economic Development of the Russian Federation No. 482 dated July 20, 2015.
- The applicant's opposition was satisfied, Rospatent's decision of October 28, 2025 was annulled, and the trademark under Application No. 2023824014 was subject to state registration.
Legal Analysis
Initial refusal and legal framework
The present opinion of the Chamber of the Federal Service for Intellectual Property is of interest from the perspective of applying Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation in a situation of subsequent consolidation of exclusive rights to conflicting means of individualization in a single person.
The dispute arose in connection with Rospatent's refusal of state registration of a composite designation under Application No. 2023824014, filed by MEDCAPITAL MEDICAL TECHNOLOGY CO., LTD. with respect to goods of Classes 05 and 10 and services of Class 35 of the Nice Classification. The ground for refusal was the existence of a previously registered trademark under Certificate No. 814276, which was found to be confusingly similar with respect to similar (homogeneous) goods and services.
When issuing the initial decision, Rospatent was guided by the provisions of Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, under which registration is not permitted for designations that are identical or confusingly similar to trademarks of other persons having an earlier priority date and protected with respect to similar (homogeneous) goods. This legal construct is aimed at preventing consumer confusion as to the manufacturer of goods or the person providing services, as well as ensuring the stability of civil circulation of exclusive rights.
Similarity criteria and the applicant's strategy
The Chamber further reproduced the provisions of Paragraphs 41–45 of the Rules for the Preparation, Filing, and Examination of Documents Serving as a Basis for Taking Legally Significant Actions for the State Registration of Trademarks, approved by Order of the Ministry of Economic Development of the Russian Federation No. 482. In particular, it was stated that the similarity of designations is subject to assessment based on a combination of phonetic, visual, and semantic criteria, and a finding of similarity (homogeneity) of goods is made based on the likelihood of consumers forming an impression that the goods originate from a single source.
Notably, the applicant did not effectively challenge the examiner's findings regarding the similarity of the designations and the similarity (homogeneity) of the goods. On the contrary, the arguments of the opposition were based exclusively on a change in the legal status of the cited trademark after the refusal decision was issued.
As established by the Chamber, according to the publication of the State Register of Trademarks and Service Marks of the Russian Federation dated January 26, 2026, the rights holder of the cited trademark under Certificate No. 814276 became the applicant company itself. Thus, at the time of consideration of the opposition, the exclusive rights to both designations were concentrated in a single person.
Consolidation of rights and annulment of refusal
Under these circumstances, the Chamber concluded that there were no obstacles provided for in Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation to the registration of the applied-for designation. This conclusion is based on the legal nature of the prohibition in question, which is aimed solely at preventing a conflict of exclusive rights between different subjects of civil circulation. In a situation where the rights holder coincides, the risk of confusion from the perspective of infringement of a third party's rights is objectively absent.
From a practical standpoint, this opinion confirms the consistent administrative approach of Rospatent, according to which the subsequent assignment of the cited trademark in favor of the applicant can eliminate previously identified obstacles to registration. Of significant importance in this regard is the proper documentary confirmation of the transfer of the exclusive right and the recording of the corresponding information in the State Register of Trademarks.
Furthermore, this case demonstrates the procedural specificity of the administrative mechanism for reviewing Rospatent decisions. Despite the initial refusal being lawful at the date it was issued, the subsequent change in legally significant circumstances was found to be a sufficient basis for annulling the decision through the opposition procedure. This confirms that when assessing the protectability of a designation, the Chamber takes into account not only the legal status as of the filing date of the application but also the current state of the register as of the date of the dispute resolution.
In effect, the Chamber implemented the legal model of overcoming a relative ground for refusal by concentrating exclusive rights in a single entity, which is consistent with the general principles of Part Four of the Civil Code of the Russian Federation regarding the freedom to dispose of exclusive rights and the admissibility of civil circulation of intellectual property objects.
Commentary by Patent Attorney A.V. Leonov
This legal position has significant practical implications for rights holders implementing a strategy of expanding product lines or consolidating a brand portfolio.
In practice, situations are quite common where an applicant encounters a refusal under Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation due to the existence of a previously registered similar designation. Under such circumstances, acquiring the cited trademark often becomes the most effective way to overcome the refusal, especially if the conflicting designations are used within the same commercial project or relate to adjacent market segments.
We draw attention to the fact that the key factor is not the mere execution of an assignment agreement, but the proper state registration of the transfer of the exclusive right with Rospatent. Until the information is entered into the State Register of Trademarks, the corresponding right is not considered to have transferred to the acquirer, which may result in the persistence of obstacles to the registration of the dependent application.
Strategic options for businesses
- Acquiring the cited trademark;
- Concluding a coexistence agreement;
- Modifying the applied-for designation;
- Dividing the list of goods and services.
For businesses, this case demonstrates the need for a comprehensive trademark audit as early as the brand launch stage. If a potential conflict is identified at an early stage, it is advisable to assess in advance the possibility of each of these options.
For rights holders of cited trademarks, such disputes also create commercial opportunities. The existence of a registration that blocks a competitor's market entry significantly strengthens the negotiating position of the senior mark holder. At the same time, attempts to unjustifiably block registration in the absence of actual use of the trademark may potentially entail the risk of subsequent challenge of legal protection due to non-use or qualification of actions as an abuse of right.
Separately, we advise taking the time factor into account. In this case, the applicant managed to eliminate the obstacle after Rospatent had already issued a refusal. However, in practice, a lengthy process of concluding an assignment transaction may lead to a loss of commercial relevance of the designation or to the emergence of parallel conflicts in other jurisdictions.
The prospects for similar disputes appear generally favorable for applicants provided there is documented confirmation of the transfer of exclusive rights. Rospatent's administrative practice in such situations is fairly consistent: after rights are consolidated in a single entity, the relative ground for refusal is generally considered eliminated.
At the same time, it should be borne in mind that this mechanism does not apply automatically to absolute grounds for refusal provided for in Article 1483 of the Civil Code of the Russian Federation. Even acquiring a similar trademark will not overcome obstacles related, for example, to the lack of distinctiveness of the designation or its contradiction to the public interest.
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