Is it possible to dispute a trademark registered in another class of the Nice?

The Russia legislation on the protection of exclusive rights to trademarks provides for liability for illegal use of smb else’s trademark. However, the registration, as obtained by another person, of an identical or confusingly similar trademark in respect of another class of goods does not form a violation of the law. The same mark may be well used for individualization of different, dissimilar kinds of goods at the market.

Frequently, unfair competitors make efforts to use this legislative nuance for “parasitizing” on smb else’s trademark already known at the market. An ordinary consumer, when seeing a new product bearing a known trademark, even if this product relates to another class of goods, may regard it as an extension of a product line or as  a change in the major activity of a respective manufacturer knows to him; in particular, if such products relate to different ICGS Classes, but have similar/close applications. For example, the production of sun-glasses or leather accessories under a same brand by different manufacturers may easily confuse a consumer concerning the origin of goods.

If you have found that a competitor uses your registered trademark, as already known at the market, for promoting his product, you will have to prove, first, the obvious similarity of the two challengeable marks and, second, that a consumer perceives these goods as produced by one manufacturer.

Procedure to be followed when challenging registration of a similar trademark

  • First of all, the affected person should file a corresponding request with ROSPATENT, namely, with the Chamber of Patent Disputes.
  • In a case where the requestor’s claims have not been fulfilled under the administrative procedure, he/she is entitled to seek protection of the infringed rights in the Court for Intellectual Property Rights. A request should state his/her legal position in respect of the case, and be accompanied by all documents of evidence as well as a decision taken by the Chamber of Patent Disputes.

 What one should know for challenging the registration of a similar trademark

By now, the court practice in such cases remains controversial. However, dissimilarity of products bearing a similar mark does not, nevertheless, provide hundred-percent guarantee that the liability will be discharged. If the defence opinion is prepared skillfully, the plaintiff’s standing may be more convincing and well-reasoned.

In order to settle a dispute successfully, one should substantiate in the court that:

  • Your company and the trademark registered in its name are well-known at the market and have a positive reputation;
  • The registration date of your trademark precedes that of the challenged one;
  • The acts of the competitor are initially directed at getting advantages while promoting his/her product through usage of popularity and business reputation of your trademark; if the competitor’s product has relating applications, you should also draw the judge’s attention to this fact.
  • The competitor’s purposeful actions may result in confusing the consumers in respect of the origin of the product and its manufacturer.

If the above theses are substantiated by the plaintiff and supported by an evidence base, even the dissimilarity of the challengeable goods on the basis of the ICGS Classification will not relieve the unfair defendant from liability.

Getting the help of an expert

In some cases the issue of confusing similarity of two trademarks cannot be solved without special knowledge. When a borderline between individual marks is extremely thin, blurred and non-obvious, and an ordinary consumer may not distinguish between them, it is reasonable for everyone to get help in assessing them from an expert, i.e. a specialist who will assist you in establishing a degree of similarity on the basis of his/her knowledge.

An expert opinion once prepared will significantly increase a chance of success in the court judgment.


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