Key Takeaways
- Rospatent refused to satisfy the opposition against the grant of legal protection to the trademark under Certificate No. 979738 and maintained the registration in force due to the failure to prove the grounds provided for in Paragraph 3(1) of Article 1483 of the Civil Code of the Russian Federation.
- The Chamber confirmed that the existence of earlier use of a similar designation does not in itself indicate the ability of the disputed designation to mislead consumers as to the manufacturer of the goods.
- For a designation to be found misleading, a combination of evidence is required: the actual introduction of goods into civil circulation and the formation of a stable associative link between the designation and a specific manufacturer among the relevant circle of consumers.
- The standing (interest) of the opponent was recognized only with respect to goods of Class 05 and related services of Class 35 of the Nice Classification; with respect to goods of Classes 03, 29, 30 and 32, such standing was not confirmed.
- Internet materials and information about the international fame of the brand were found insufficient due to the absence of evidence of the date of circulation of goods, sales volumes in the Russian Federation, advertising activity, and perception by Russian consumers.
Legal Analysis
Subject matter and legal framework
This case is of interest from the perspective of applying Paragraph 3(1) of Article 1483 of the Civil Code of the Russian Federation as an independent ground for challenging the legal protection of a trademark on the criterion of misleading consumers as to the manufacturer of the goods.
The subject matter of the administrative dispute was an opposition filed by a foreign rights holder against the registration of a composite designation under Certificate No. 979738, comprising the verbal element "NATURES SUPREME" and a graphic element in the form of a stylized monogram. The opposition was based on the opponent's possession of an international registration of a similar designation and the assertion of a previously established business reputation of the corresponding brand in the specialized product market.
The Chamber of Rospatent proceeded from the fact that the legal assessment of the protectability of a designation is carried out taking into account the priority date of the disputed trademark and the current provisions of Part Four of the Civil Code of the Russian Federation, as well as subordinate regulatory acts governing the registration of means of individualization.
Paragraph 3(1) of Article 1483 and the standard of proof
Of key importance in this dispute was the issue of the limits of application of Paragraph 3(1) of Article 1483 of the Civil Code of the Russian Federation. Under this norm, designations that contain elements capable of creating a false impression among consumers about the product or its manufacturer are not subject to registration.
The Chamber confirmed the established approach according to which misleading consumers is not presumed automatically due to the existence of an earlier designation or even the fact of its commercial use outside the Russian Federation. To establish this ground, it is necessary to prove the existence of a stable associative link between the designation and a specific business entity specifically in the perception of the relevant circle of consumers.
The approach to assessing the evidentiary record is also significant. The submitted references to marketplaces, corporate websites and social media pages were found insufficient. Rospatent indicated that internet sources alone do not confirm the actual volume of product turnover, the territorial prevalence of use of the designation, the intensity of promotion, or the existence of recognition among Russian consumers. There was no information on the duration of sales, marketing investments, sales statistics, consumer behavior research, or other objective indicators of the designation's fame.
In effect, the Chamber reproduced a high standard of proof for disputes concerning misleading consumers: protection is granted not to the mere fact of brand priority, but to the proven economic presence and the established perception of the corresponding designation by the market.
Standing under Article 1513 and outcome
Particular significance was attached to the criterion of the opponent's standing (interest) provided for in Paragraph 2 of Article 1513 of the Civil Code of the Russian Federation. The Chamber effectively distinguished the scope of permissible administrative opposition by Nice Classification classes. Standing was recognized only with respect to those goods and services for which the opponent confirmed genuine intentions to use a similar designation and the existence of commercial activity. With respect to other classes, such a connection was not proven, which precluded the possibility of considering the merits of the claims in the corresponding part.
This approach demonstrates the distinction between the grounds of likelihood of confusion provided for by other provisions of Article 1483 of the Civil Code of the Russian Federation and the independent ground of the false or misleading character of the designation. The latter requires establishing not only the similarity of designations, but also a proven effect of consumer association.
Commentary by Patent Attorney A.V. Leonov
The position of Rospatent under consideration is of practical interest primarily for foreign rights holders and companies launching a brand on the Russian market without a formalized strategy for proving use.
In practice, one often encounters the mistaken assumption that the existence of an international registration, active internet promotion, and sales through marketplaces automatically creates a sufficient scope of legal protection in Russia. This case demonstrates the opposite: the administrative authority assesses not the global fame of the brand, but the existence of a provable link between the designation and the Russian consumer.
For rights holders, the main risk lies in the loss of the ability to block the registration of similar designations if the use of the brand in the Russian Federation is not accompanied by the accumulation of evidence of commercial presence. We recommend proactively building an evidentiary archive: supply contracts, sales documents, information on marketing campaigns, advertising account data, marketplace statistics, media plans, recognition studies, and distribution documents.
For potential defendants, this decision confirms that an opponent's references solely to websites, social networks, and general statements about international fame are insufficient to terminate legal protection.
Separately, we draw attention to the issue of standing under Article 1513 of the Civil Code of the Russian Federation. In practice, it is advisable to correlate the scope of the opposition with the opponent's actual business profile in advance and to confirm the intention to use the designation separately for each Nice Classification class. Attempting to challenge a registration outside the opponent's own sphere of activity significantly reduces procedural prospects.
It is likely that similar disputes will continue to be resolved by strengthening the standard of proof of a designation's fame and consumer association, especially if the dispute is based not on a formal conflict of rights, but on the construct of misleading consumers.
Related Materials
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