Risks of using generic terms in a brand name
On what grounds does Rospatent refuse registration
Rospatent's examination follows a clear algorithm: first, it is checked whether the designation is a commonly accepted term, a descriptive word, or an indication of the product's type, quality, or purpose. If the word simply names what it names — 'bakery' for bakery products, 'fast' for delivery — it does not perform the function of a trademark: it does not distinguish a product of one manufacturer from that of another. The formal grounds for refusal are listed in art. 1, para. 1483 of the Civil Code of the Russian Federation, and they are applied literally: the examiner compares the claimed designation with dictionary meanings and usage practices within a specific product category.
A separate trap is combined signs. If a common word enters the composition of a logo together with an original graphic element, it can be registered as a 'non-protected element' — provided that it does not occupy a dominant position in the composition. This is a working, yet limited tool: the composition is protected, not the word per se, and a competitor can quite reasonably use the same word in their own design.
What is distinctive capacity and why does it disappear
Distinctiveness is the property of a designation that enables it to indicate a specific source of a product to the consumer, rather than its characteristics. A word loses this property if it is originally descriptive (naming a product feature) or if it has become generic due to widespread use—such as happened with 'pampers,' 'algebra,' and 'modem.' When a term enters the category of generic concepts, no one can claim it for themselves anymore: the market perceives the word as a category name rather than a brand.
The irony is that excessive brand success can work against it: if a name becomes synonymous with an entire product category, a court may recognize it as having entered common usage and refuse protection—even if the mark was officially registered.
Case: OpenAI, Yandex.Taxi, and why the outcome differs
The General Court of the EU rejected the application for registration of the designation 'OPENAI' for software and technological services (the examiner refused 5 December 2024, and the appeal was dismissed 15 July 2026). The court's argument was straightforward: the word is perceived by consumers as describing a function—'open artificial intelligence'—and the company's reputation does not influence this. A strong brand in media does not substitute for the legal distinctiveness of the designation.
A telling counterexample is also worth noting: in 2022 year, 'Yandex' registered 'Yandex Taxi' simultaneously in nine classes of the Nice Agreement and succeeded in cancelling the previously registered mark 'Y. Taxi' of another company — due to non-use. The difference from the OpenAI case is fundamental: 'Yandex Taxi' is a combined designation, where the distinctive character is provided by the recognizable element 'Yandex', not the word 'taxi' per se. The word 'taxi' in this construction remains an unprotectable descriptive element, and this does not prevent registration of the entire composition.
A similar logic applies to the history of Uber: the brand is built on a name element that was initially not a dictionary term, which freed the company from risks typical for purely descriptive names such as 'Taxi.ru' or 'OpenAI'.
How to prove acquired distinctiveness
Article 1.1 of the Civil Code of the Russian Federation No. 1483 provides a legal path to register a descriptive word — through proving that it has acquired distinctive capability as a result of use. Rospatent follows the recommendations of 23.03.2001 (Order No. 39) and requires a comprehensive set of pre-collected evidence, before filing an application.
- Data on sales volumes of the product under this designation — by year, preferably with a growth trend in dynamics.
- Confirmed advertising and promotion expenses — contracts with agencies, invoices, media plans.
- Information on the geography of sales — regions of presence, distribution channels, number of points.
- Results of sociological surveys on the recognizability of the designation by consumers of a specific category of goods.
- Documentary confirmation of the duration of continuous use — typically, the benchmark is not less than three years of intensive market presence.
These materials should be collected in parallel with entering the market, not at the time of filing the application — otherwise, the evidentiary base will be incomplete, and Rospatent will refuse a second time, now with a fully reasoned argument.
How to use a registered word without losing rights to it
Registration is not a one-time action, but the beginning of obligations. If a company has obtained protection for a descriptive designation, it must thereafter use it strictly as a trademark: with the ® symbol, in the official design, with a link to a specific product, and not as an ordinary word of the language in texts, advertising, or social networks. Blending the brand with the common meaning of the word in the company's own materials works against it — this weakens the position in future disputes.
In this regard, the law provides: even a registered descriptive word may be used by competitors in its generally accepted meaning—this is not considered a violation of rights (in accordance with para. 1.1 of Art. 1483 of the Russian Civil Code and the practice of Rospatent). In other words, registration does not grant a monopoly on the word as such; it only protects the use of the word as a designation of a specific manufacturer's product.
Registering a generally accepted word or working without registration
Before choosing a strategy, it is fair to honestly assess what registration of a descriptive name provides and what it does not provide.
| Parameter | With registration (distinctive capability proven) | Without registration |
|---|---|---|
| Protection from copying | Limited — only as a designation of the product, not the word as such | Completely absent |
| Costs and timeframes | High: gathering evidence, legal support, risk of refusal | Zero direct costs |
| Use by competitors of the common meaning | Permitted (SIIP-1197/2023) | Permitted |
| Risk of losing rights due to non-use | Real — similar to the case «Y. Taxi» | Not applicable |
| Justifiability | Justified when there is a strong combined brand and at least 3 years of active promotion | Reasonable at the start of business or when there are weak proofs of recognition |
The practical conclusion is simple: if the name is built on a common word, the budget for registration should not be allocated earlier than the evidence base of recognition is accumulated. Until that time, it is wiser to develop a combined mark with a unique graphic or verbal element — it provides real protection right now, not in three years of court proceedings.
On what grounds does Rospatent refuse registration
Rospatent's examination follows a clear algorithm: first, it is checked whether the designation is a commonly accepted term, a descriptive word, or an indication of the product's type, quality, or purpose. If the word simply names what it names — 'bakery' for bakery products, 'fast' for delivery — it does not perform the function of a trademark: it does not distinguish a product of one manufacturer from that of another. The formal grounds for refusal are listed in art. 1, para. 1483 of the Civil Code of the Russian Federation, and they are applied literally: the examiner compares the claimed designation with dictionary meanings and usage practices within a specific product category.
A separate trap is combined signs. If a common word enters the composition of a logo together with an original graphic element, it can be registered as a 'non-protected element' — provided that it does not occupy a dominant position in the composition. This is a working, yet limited tool: the composition is protected, not the word per se, and a competitor can quite reasonably use the same word in their own design.
What is distinctive capacity and why does it disappear
Distinctiveness is the property of a designation that enables it to indicate a specific source of a product to the consumer, rather than its characteristics. A word loses this property if it is originally descriptive (naming a product feature) or if it has become generic due to widespread use—such as happened with 'pampers,' 'algebra,' and 'modem.' When a term enters the category of generic concepts, no one can claim it for themselves anymore: the market perceives the word as a category name rather than a brand.
The irony is that excessive brand success can work against it: if a name becomes synonymous with an entire product category, a court may recognize it as having entered common usage and refuse protection—even if the mark was officially registered.
Case: OpenAI, Yandex.Taxi, and why the outcome differs
The General Court of the EU rejected the application for registration of the designation 'OPENAI' for software and technological services (the examiner refused 5 December 2024, and the appeal was dismissed 15 July 2026). The court's argument was straightforward: the word is perceived by consumers as describing a function—'open artificial intelligence'—and the company's reputation does not influence this. A strong brand in media does not substitute for the legal distinctiveness of the designation.
A telling counterexample is also worth noting: in 2022 year, 'Yandex' registered 'Yandex Taxi' simultaneously in nine classes of the Nice Agreement and succeeded in cancelling the previously registered mark 'Y. Taxi' of another company — due to non-use. The difference from the OpenAI case is fundamental: 'Yandex Taxi' is a combined designation, where the distinctive character is provided by the recognizable element 'Yandex', not the word 'taxi' per se. The word 'taxi' in this construction remains an unprotectable descriptive element, and this does not prevent registration of the entire composition.
A similar logic applies to the history of Uber: the brand is built on a name element that was initially not a dictionary term, which freed the company from risks typical for purely descriptive names such as 'Taxi.ru' or 'OpenAI'.
How to prove acquired distinctiveness
Article 1.1 of the Civil Code of the Russian Federation No. 1483 provides a legal path to register a descriptive word — through proving that it has acquired distinctive capability as a result of use. Rospatent follows the recommendations of 23.03.2001 (Order No. 39) and requires a comprehensive set of pre-collected evidence, before filing an application.
- Data on sales volumes of the product under this designation — by year, preferably with a growth trend in dynamics.
- Confirmed advertising and promotion expenses — contracts with agencies, invoices, media plans.
- Information on the geography of sales — regions of presence, distribution channels, number of points.
- Results of sociological surveys on the recognizability of the designation by consumers of a specific category of goods.
- Documentary confirmation of the duration of continuous use — typically, the benchmark is not less than three years of intensive market presence.
These materials should be collected in parallel with entering the market, not at the time of filing the application — otherwise, the evidentiary base will be incomplete, and Rospatent will refuse a second time, now with a fully reasoned argument.
How to use a registered word without losing rights to it
Registration is not a one-time action, but the beginning of obligations. If a company has obtained protection for a descriptive designation, it must thereafter use it strictly as a trademark: with the ® symbol, in the official design, with a link to a specific product, and not as an ordinary word of the language in texts, advertising, or social networks. Blending the brand with the common meaning of the word in the company's own materials works against it — this weakens the position in future disputes.
In this regard, the law provides: even a registered descriptive word may be used by competitors in its generally accepted meaning—this is not considered a violation of rights (in accordance with para. 1.1 of Art. 1483 of the Russian Civil Code and the practice of Rospatent). In other words, registration does not grant a monopoly on the word as such; it only protects the use of the word as a designation of a specific manufacturer's product.
Registering a generally accepted word or working without registration
Before choosing a strategy, it is fair to honestly assess what registration of a descriptive name provides and what it does not provide.
| Parameter | With registration (distinctive capability proven) | Without registration |
|---|---|---|
| Protection from copying | Limited — only as a designation of the product, not the word as such | Completely absent |
| Costs and timeframes | High: gathering evidence, legal support, risk of refusal | Zero direct costs |
| Use by competitors of the common meaning | Permitted (SIIP-1197/2023) | Permitted |
| Risk of losing rights due to non-use | Real — similar to the case «Y. Taxi» | Not applicable |
| Justifiability | Justified when there is a strong combined brand and at least 3 years of active promotion | Reasonable at the start of business or when there are weak proofs of recognition |
The practical conclusion is simple: if the name is built on a common word, the budget for registration should not be allocated earlier than the evidence base of recognition is accumulated. Until that time, it is wiser to develop a combined mark with a unique graphic or verbal element — it provides real protection right now, not in three years of court proceedings.
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