Key Takeaways
- The Chamber of Rospatent refused to satisfy the opposition against the grant of legal protection to International Registration No. 1790339 for the mark “PLENA”, finding no likelihood of confusion with the rights holder's series of trademarks “PLONQ”.
- Despite finding a high degree of similarity (homogeneity) of goods of Class 34 of the Nice Classification, as well as corresponding goods of Classes 09 and 11 of the Nice Classification, the Chamber concluded that there was no likelihood of confusion due to differences under the phonetic criterion.
- Rospatent recognized that the designation “PLONQ” is perceived by consumers precisely as [plonk], and not as [plona], which was confirmed by the actual use of the designation in civil circulation and information from the Internet.
- The Chamber indicated that the fanciful nature of the verbal elements “PLENA” and “PLONQ” neutralizes the semantic criterion of similarity, as a result of which the phonetic perception of the designations acquires decisive importance.
- The fact that a party owns a series of trademarks with a common dominant element does not in itself indicate a likelihood of confusion if the basic verbal element of the series is not similar to the contested designation.
Legal Analysis
Procedural framework and grounds for opposition
The opposition against the grant of legal protection on the territory of the Russian Federation to the trademark under International Registration No. 1790339 “PLENA” was examined by Rospatent in accordance with the procedure provided for by Part Four of the Civil Code of the Russian Federation and the Rules for the consideration and resolution by the federal executive authority for intellectual property of disputes in an administrative manner.
The grounds for filing the opposition were the arguments of the company ALPHABET LABS DMSS regarding the violation of the provisions of Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation. According to the opponent, the designation “PLENA”, registered with respect to goods of Class 34 of the Nice Classification, is confusingly similar to its owned trademarks of the “PLONQ” series, which have an earlier priority date and are used in relation to electronic cigarettes, liquids for electronic nicotine delivery devices, as well as related goods and accessories.
During the administrative proceedings, the Rospatent Chamber confirmed the opponent's standing, given that the latter holds exclusive rights to the earlier registered trademarks relied upon by the opponent. In doing so, the Chamber specifically referred to the legal position set forth in the Decree of the Presidium of the Supreme Arbitration Court of the Russian Federation dated April 3, 2012 No. 16133/11, according to which any party that confirms a genuine interest in terminating the legal protection of the disputed designation may be recognized as an interested person.
Homogeneity of goods
Analyzing the applicability of Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, Rospatent proceeded from the need to establish a combination of two circumstances: the similarity of the designations to the point of confusion and the similarity (homogeneity) of the goods for which they are used.
The Chamber found that the lists of goods for the compared designations largely coincide. The contested mark “PLENA” is registered for electronic cigarettes, liquids for electronic cigarettes, cartridges, flavorings, and related accessories of Class 34 of the Nice Classification. In turn, the opposed trademarks of the “PLONQ” series are registered for electronic cigarettes, devices for heating tobacco, nicotine-containing liquids, vaporizers, and other goods of related purpose of Classes 09, 11, and 34 of the Nice Classification.
Rospatent concluded that there was a high degree of similarity (homogeneity) of the goods, indicating that the goods in question coincide in functional purpose, consumer circle, conditions of sale, and distribution channels, and may also be perceived by the consumer as originating from a single manufacturer.
However, the existence of similarity (homogeneity) of goods was not found to be a sufficient basis for concluding a likelihood of confusion, since key importance in this dispute was given to the analysis of the similarity of the designations themselves.
Phonetic criterion and actual market perception
When assessing similarity, the Chamber was guided by the provisions of Paragraphs 41 and 42 of the Rules, as well as the clarifications contained in Paragraph 162 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10. It was stated that the likelihood of confusion is determined based on the totality of the degree of similarity of the designations and the degree of similarity (homogeneity) of the goods, and confusion is possible even in the presence of individual differences if an associative connection is formed in the consumer's mind between the designations.
Of significant importance in this case was given specifically to the phonetic criterion of similarity. Rospatent noted that the designation “PLENA” is perceived as [ple-na], whereas the opposed mark is perceived by consumers as “PLONQ” with the phonetic rendering [plonk]. The opponent's argument regarding the possibility of perceiving the designation as [plona] was rejected.
In doing so, the Chamber referred to the actual use of the trademark “PLONQ” in civil circulation, including the placement of the designation on specialized internet resources, where the designation was rendered as “PLONQ” and accompanied by a stable phonetic rendering [plonk]. These circumstances were found sufficient to form an unambiguous perception of the disputed element by consumers.
Rospatent also noted that the fanciful nature of the verbal elements “PLENA” and “PLONQ” precludes the existence of any independent semantic meaning, as a result of which the semantic criterion does not have a significant impact on the final similarity assessment. The visual (graphical) criterion was also recognized as secondary due to the standard execution of the designation “PLENA”.
As a result of the comparative analysis, the Chamber concluded that the designations differ in the composition of vowels and consonants, the number of syllables, and the stress, as a result of which they create a different overall phonetic impression and are not associated with each other in the minds of consumers.
Trademark series and outcome
Separately, the argument regarding the opponent's ownership of a series of trademarks with a common dominant element was considered. Rospatent confirmed the existence of a series of “PLONQ” designations but indicated that the mere fact of having a series does not evidence a likelihood of confusion if the dominant element of the series is not similar to the contested designation.
Based on the results of the examination of the opposition, the Chamber concluded that there were no grounds for applying Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation and upheld the legal protection of International Registration No. 1790339.
Commentary by Patent Attorney A.V. Leonov
The decision under commentary is of significant practical interest for rights holders operating in the market for electronic nicotine delivery systems and related goods, as it demonstrates Rospatent's current approach to assessing the phonetic perception of fanciful designations.
First of all, we draw attention to the fact that even with a finding of a high degree of similarity (homogeneity) of goods, Rospatent did not automatically infer the existence of a likelihood of confusion. In practice, this confirms a consistent trend in administrative and judicial practice: the decisive factor is often the perception of the designation by the end consumer, rather than the formal coincidence of individual letter elements.
In this case, evidence of the actual use of the opposed designation “PLONQ” proved crucial. Rospatent effectively proceeded not only from an abstract visual analysis but also from how the brand is actually perceived by the market. This is an extremely important signal for rights holders: when defending a trademark, it is necessary to build an evidentiary record confirming the established phonetic and commercial perception of the designation by consumers.
Recommendations for rights holders
- Ensure uniform brand positioning in advertising, marketing materials, packaging, and online — any ambiguity in pronunciation may be used against the rights holder in similarity disputes.
- Remember that owning a series of trademarks does not itself guarantee successful enforcement if the common dominant element is not similar to the contested designation.
- Conduct comprehensive preliminary assessment including actual phonetics of competing designations in commercial circulation, not only visual and letter-combination criteria.
- Analyze marketplaces, specialized online stores, advertising campaigns, and user perception when planning opposition or enforcement strategy.
For businesses, this decision also demonstrates certain risks when choosing designations with artificially constructed verbal elements. In practice, rights holders often attempt to interpret possible pronunciation variations of their trademarks broadly, but administrative practice is increasingly guided by the actual perception of the brand by the market, rather than hypothetical reading scenarios.
The prospects for such disputes going forward will depend directly on the quality of the evidentiary record. Formal comparison of designations is becoming insufficient. Administrative bodies and courts are increasingly assessing actual consumer behavior, the degree of brand recognition, and the actual methods of using the disputed designations in civil circulation.
Related Materials
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