Checking a brand name for similarity to competitors
Why searching for a name on the internet does not protect against a lawsuit
The first thing an entrepreneur does is search for the name on Google and see if it is taken. This creates a false sense of security. Rospatent does not assess textual similarity, but similarity to the degree of confusion — and this is three different types of checks that must be conducted separately:
- Phonetic similarity — similarity in pronunciation. 'Lakta lis' and 'Lokta lis' sound almost identical, even though they are spelled differently.
- Graphic similarity — visual similarity in spelling, font, letter composition. Here, transliteration is important, but also the overall visual impression.
- Semantic similarity — similarity in meaning. 'Snow Queen' and 'Ice Queen' are different words, but the same semantic construct.
Rospatent considers these criteria independently of one another. To reject registration, it is sufficient for there to be a match in at least one of them — provided that the goods or services are recognized as homogeneous. This means that a search 'word for word' only eliminates the most crude matches and overlooks most real risks.
Which Nice classes to check — and why it is not possible to limit oneself to 'one's own'
A second typical error is checking only the Nice class in which a company plans to register a mark. The Nice classification is structured according to product categories, not according to consumer perception logic, so homogeneous goods are often scattered across different classes. A classic example: beer belongs to class 32, while other alcoholic beverages belong to class 33. In practice, Rospatent and courts recognize them as homogeneous because consumers perceive them as products of the same group.
The same applies to clothing and tailoring services — these are different classes of the Nice Classification (25-st and 40-nd), but homogeneity can be established if the target audience and sales channels overlap. Therefore, the check should be built not from the class number, but from the real market: who is the buyer, where the product meets, and what it is compared with at the moment of purchase. Patent attorneys usually check adjacent classes 'in a fan' — this increases the workload, but reduces the risk of refusal many times.
What to do if the search found a similar mark
The found conflict is not an automatic stop. Further, you need to assess the actual level of risk, and it varies depending on the situation:
| Situation | Risk level | What to do |
|---|---|---|
| A similar mark — an application in the RUTMAP database, not yet registered | High — the application has priority based on the filing date | Accelerate filing of your own application or change the name |
| A similar mark is registered in another, non-homogeneous class | Low | Can be registered, the risk of conflict is minimal |
| A similar mark is held by a small regional owner | Medium | Assess the mark's usage activity, try to obtain a letter of consent |
| A similar mark is held by a large well-known brand | Very high | Abandon the name — the legal resources of such an owner are almost always greater than yours |
The main mistake in doing a self-check is looking only at registered trademarks. There are over a million of them in the Rospatent registry, but simultaneously there is a database of RUTMAP applications — marks that have not yet been registered but have already been submitted. An application has priority based on the date of submission: if its owner registers the mark after your check but before your application, the priority will still be with them. Ignoring this database is the most common reason for unpleasant surprises among those who 'checked everything themselves'.
A consent letter: when it works and what traps it may contain
If a similar (not identical — this is an important clarification) mark is found, you can try to obtain a consent letter from its owner. This is an official document that removes the obstacle to registering your mark at Rospatent. However, it only works when the notations are similar, not when they fully match — identical marks cannot be overridden with a consent letter.
The document must contain a specific set of elements, otherwise Rospatent will not accept it:
- Full details of both parties — your company and the trademark owner.
- A precise list of goods and services that the consent covers — the general wording of 'I do not object to the use' without specificity will not work.
- An image of the mark for which consent is given, attached to the letter.
- The signature of the authorized person and the seal of the trademark owner (if it is a Russian legal entity).
The trap is that a letter of consent is not a guarantee forever. The trademark owner may grant consent for a limited range of goods, and expanding your business beyond these limits will again create a conflict. Moreover, some trademark owners simply refuse to sign such letters for principle — it is almost impossible to sue them if the mark is already registered.
When a free check is sufficient, and when a patent agent is needed
A free preliminary check through the search platforms of Rospatent and open registries is suitable for quickly ruling out obvious matches — if the name is almost identical to an existing mark in your field, you will see it yourself and save time on further steps. However, such a check does not replace professional expertise before filing an application.
A patent representative is needed in three cases: when the business enters several Nice Classes simultaneously, when a preliminary search has found similar marks and it is necessary to assess the actual legal risk, not just the mere fact of similarity, and when planning to enter the international market — there, checks through WIPO databases and national registries of other countries are added. The cost of the representative's services is usually comparable to one administrative fine for trademark infringement (up to 200 thousand rubles), so from an economic standpoint, this is a reasonable insurance policy, not an unnecessary expense.
In summary: the decision-making algorithm
Checking a brand name is not a one-time search, but a sequence of decisions. First, all three types of similarity are checked separately, then adjacent classes of the Nice Classification are considered with due regard to the actual homogeneity of goods, and then the status of the found conflict is evaluated (a trademark application or registration, a large or small owner). If a conflict is found and it is not critical — a letter of consent with a properly formatted list of goods comes into play. If there are many doubts or the business extends beyond a single class — it is not worth saving on a patent agent: the cost of an error is orders of magnitude higher than their fee.
Why searching for a name on the internet does not protect against a lawsuit
The first thing an entrepreneur does is search for the name on Google and see if it is taken. This creates a false sense of security. Rospatent does not assess textual similarity, but similarity to the degree of confusion — and this is three different types of checks that must be conducted separately:
- Phonetic similarity — similarity in pronunciation. 'Lakta lis' and 'Lokta lis' sound almost identical, even though they are spelled differently.
- Graphic similarity — visual similarity in spelling, font, letter composition. Here, transliteration is important, but also the overall visual impression.
- Semantic similarity — similarity in meaning. 'Snow Queen' and 'Ice Queen' are different words, but the same semantic construct.
Rospatent considers these criteria independently of one another. To reject registration, it is sufficient for there to be a match in at least one of them — provided that the goods or services are recognized as homogeneous. This means that a search 'word for word' only eliminates the most crude matches and overlooks most real risks.
Which Nice classes to check — and why it is not possible to limit oneself to 'one's own'
A second typical error is checking only the Nice class in which a company plans to register a mark. The Nice classification is structured according to product categories, not according to consumer perception logic, so homogeneous goods are often scattered across different classes. A classic example: beer belongs to class 32, while other alcoholic beverages belong to class 33. In practice, Rospatent and courts recognize them as homogeneous because consumers perceive them as products of the same group.
The same applies to clothing and tailoring services — these are different classes of the Nice Classification (25-st and 40-nd), but homogeneity can be established if the target audience and sales channels overlap. Therefore, the check should be built not from the class number, but from the real market: who is the buyer, where the product meets, and what it is compared with at the moment of purchase. Patent attorneys usually check adjacent classes 'in a fan' — this increases the workload, but reduces the risk of refusal many times.
What to do if the search found a similar mark
The found conflict is not an automatic stop. Further, you need to assess the actual level of risk, and it varies depending on the situation:
| Situation | Risk level | What to do |
|---|---|---|
| A similar mark — an application in the RUTMAP database, not yet registered | High — the application has priority based on the filing date | Accelerate filing of your own application or change the name |
| A similar mark is registered in another, non-homogeneous class | Low | Can be registered, the risk of conflict is minimal |
| A similar mark is held by a small regional owner | Medium | Assess the mark's usage activity, try to obtain a letter of consent |
| A similar mark is held by a large well-known brand | Very high | Abandon the name — the legal resources of such an owner are almost always greater than yours |
The main mistake in doing a self-check is looking only at registered trademarks. There are over a million of them in the Rospatent registry, but simultaneously there is a database of RUTMAP applications — marks that have not yet been registered but have already been submitted. An application has priority based on the date of submission: if its owner registers the mark after your check but before your application, the priority will still be with them. Ignoring this database is the most common reason for unpleasant surprises among those who 'checked everything themselves'.
A consent letter: when it works and what traps it may contain
If a similar (not identical — this is an important clarification) mark is found, you can try to obtain a consent letter from its owner. This is an official document that removes the obstacle to registering your mark at Rospatent. However, it only works when the notations are similar, not when they fully match — identical marks cannot be overridden with a consent letter.
The document must contain a specific set of elements, otherwise Rospatent will not accept it:
- Full details of both parties — your company and the trademark owner.
- A precise list of goods and services that the consent covers — the general wording of 'I do not object to the use' without specificity will not work.
- An image of the mark for which consent is given, attached to the letter.
- The signature of the authorized person and the seal of the trademark owner (if it is a Russian legal entity).
The trap is that a letter of consent is not a guarantee forever. The trademark owner may grant consent for a limited range of goods, and expanding your business beyond these limits will again create a conflict. Moreover, some trademark owners simply refuse to sign such letters for principle — it is almost impossible to sue them if the mark is already registered.
When a free check is sufficient, and when a patent agent is needed
A free preliminary check through the search platforms of Rospatent and open registries is suitable for quickly ruling out obvious matches — if the name is almost identical to an existing mark in your field, you will see it yourself and save time on further steps. However, such a check does not replace professional expertise before filing an application.
A patent representative is needed in three cases: when the business enters several Nice Classes simultaneously, when a preliminary search has found similar marks and it is necessary to assess the actual legal risk, not just the mere fact of similarity, and when planning to enter the international market — there, checks through WIPO databases and national registries of other countries are added. The cost of the representative's services is usually comparable to one administrative fine for trademark infringement (up to 200 thousand rubles), so from an economic standpoint, this is a reasonable insurance policy, not an unnecessary expense.
In summary: the decision-making algorithm
Checking a brand name is not a one-time search, but a sequence of decisions. First, all three types of similarity are checked separately, then adjacent classes of the Nice Classification are considered with due regard to the actual homogeneity of goods, and then the status of the found conflict is evaluated (a trademark application or registration, a large or small owner). If a conflict is found and it is not critical — a letter of consent with a properly formatted list of goods comes into play. If there are many doubts or the business extends beyond a single class — it is not worth saving on a patent agent: the cost of an error is orders of magnitude higher than their fee.
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