TURBODENT Trademark and the Limits of Good-Faith Use: Rospatent's Approach under Article 1483(3) of the Russian Civil Code

Introduction

Rospatent's practice on refusing trademark registration on the grounds of consumer deception under Article 1483(3) of the Russian Civil Code continues to evolve toward a broader, market-oriented assessment. A notable illustration is the TURBODENT case, reviewed by the Board of the Chamber for Patent Disputes (CPP) in 2025.

This dispute demonstrates that even in the absence of an active trademark registration by a foreign manufacturer, and even where production of a specific product has been discontinued, the risk of refusal remains if a stable association between the designation and a particular manufacturer has already formed within the relevant professional community.

Background of the Case

The word mark TURBODENT was filed for registration under application No. 2023830417 in respect of goods in Class 10 of the Nice Classification (dental equipment and instruments).

By decision dated 20 January 2025, Rospatent granted partial registration of the mark. However, registration was refused for a substantial part of the claimed goods in Class 10, based on subparagraph 1 of paragraph 3 of Article 1483 of the Civil Code, as the designation was considered capable of misleading consumers as to the manufacturer of the goods.

Rospatent concluded that the applied-for designation was identical to the designation previously used by the Italian company Mectron S.p.A. for dental air-polishing equipment marketed in the Russian Federation.

Applicant's Arguments

In its objection, the applicant argued, inter alia, that:

• the websites referenced by Rospatent belonged to retail sellers rather than to Mectron S.p.A. itself;
• there was no proven reputation or recognition of the TURBODENT designation in Russia;
• products marketed under the TURBODENT name were no longer manufactured or supplied;
• the applicant had used the designation since 2007 and sold goods through major marketplaces;
• the applicant's products (dental handpieces) differed from Mectron's equipment (air-polishing devices).

The applicant also submitted extensive evidence of commercial use, including contracts, invoices, advertising expenses, marketplace data, domain name registrations, and manufacturing agreements.

Legal Assessment by the Chamber for Patent Disputes

The Board's reasoning was based on the following key considerations.

1. Likelihood of Consumer Deception

Under Article 1483(3) of the Civil Code and paragraph 37 of the Trademark Examination Rules, it is sufficient that a designation is capable of creating a false impression regarding the goods or their manufacturer. Actual deception need not be proven; a likelihood of confusion is enough.

2. Use of Internet Sources and Web Archives

The Board emphasized that the Internet is a primary source of information for consumers. Archived materials from web.archive.org were deemed admissible and relevant for establishing the historical use of the designation prior to the filing date.

Archived versions of Russian distributors' websites confirmed that in 2020-2022, dental air-polishing devices branded TURBODENT and manufactured by Mectron S.p.A. were publicly and repeatedly offered for sale in Russia.

3. Homogeneity of Goods

Despite differences in specific product types, the Board recognized the goods as homogeneous, as they:

• belong to the same field of use (dentistry);
• target the same professional consumers (dental clinics and practitioners);
• are distributed through identical commercial channels.

This approach aligns with established Rospatent and IP Court practice.

4. Discontinuation of Production Does Not Eliminate Confusion Risk

The Board expressly stated that the discontinuation of a particular TURBODENT product does not eliminate the association formed earlier between the designation and its manufacturer. For technically complex equipment with a long life cycle, historical market presence remains legally relevant.

Final Decision

The Chamber for Patent Disputes concluded that the applied-for designation was capable of misleading consumers as to the manufacturer of the goods and therefore dismissed the objection, leaving Rospatent's refusal of 20 January 2025 in force.

Key Takeaways by IPPRO

• No registration does not mean no risk. Even an unregistered foreign designation may prevent trademark registration in Russia.
• Digital footprint matters. Archived online content from distributors and marketplaces is actively relied upon by Rospatent.
• Discontinued products may still block registration. In professional and B2B markets, brand associations persist over time.
• Extensive use by the applicant is not decisive. High sales volumes and advertising budgets do not neutralize the risk of consumer deception.

Conclusion

The TURBODENT case confirms Rospatent's strict and consistent approach to misleading designations. For trademark applicants, this underscores the importance of conducting a thorough pre-filing clearance, including an analysis of historical online presence and prior market use in Russia.