Rebranding due to conflict with an existing trademark
At what stage to check the trademark: before, during, or after concept development
The correct answer is before. Trademark checking should be integrated into the brief for concept development, not follow a completed logo. Practice shows: agencies and marketing teams often delay legal expertise until the moment of filing an application with Rospatent, when the creative concept is already approved by management, presented to staff, and launched in production. Redesigning at this stage results in lost budgets and months of work.
A reasonable algorithm looks like this:
- At the task-setting stage — preliminary search in Rospatent and FIPS registries using keywords and phonetic variations.
- At the stage of selecting from 2-3 final concepts — full patent check of each variant with assessment of similarity up to the degree of confusion.
- After approval of the final variant — re-check before filing the application, since the registry is changing, and new competitor applications may have appeared in parallel.
Skipping the first step is the most common reason why conflicts are discovered at the finish line, when the brand is already 'in the field'.
Legal identity and similarity to the degree of confusion — these are different issues
Confusion is encountered almost in all sources here, although the difference is fundamental for choosing a protection strategy.
| Criterion | Legal identity | Similarity to the point of confusion |
|---|---|---|
| Who is conflicting | The same owner (their old and new mark) | Different owners |
| The essence of the problem | The new mark provides the same scope of protection as the old one — Rospatent considers them one designation | Marks of different entities may mislead the consumer |
| Consequence | Refusal to register a new mark as a standalone | Refusal to register + risk of lawsuit for violation of rights |
| Example | Verbal MYRAMISTIN and a logo based on it | Zonatelecom vs ZONA-TELEFON |
If Rospatent refuses based on identity — this is a signal that rebranding is cosmetic and legally insignificant, the mark needs to be changed more strongly. Refusal based on confusion — this is already a conflict with a third party, and this is where the choice of strategy begins.
Three strategies for resolving a conflict: cases instead of theory
Below are three real scenarios from 2024-2025 years that show how a conflict is resolved in practice, not in theory.
Strategy 1. Agreement on coexistence and mediation
The case of «Krepezh SPb» against «Krepezh-Kom» — an example of a peaceful resolution. The companies sold similar products under similar names and instead of a multi-year legal battle came to mediation. The parties agreed on specific timeframes: within how many months one of the brands develops a new name and within how many months it removes the old one from circulation, so as not to create a gap in sales. The agreement was reached during mediation. This works when both sides are interested in preserving reputation and customer base, not fighting for priority.
Strategy 2. Early termination of an unused competitor's mark
The Moscow Metro wanted to register the Russian-language name «The Moscow Metro wanted to register the Russian-language name» instead of the initially planned English-language FacePay, but discovered that the marks VZGLYAD and «but discovered that the marks VZGLYAD and» were already registered, but not actually used by another owner. Under article 1486 of the Russian Civil Code, the metro filed a claim for early termination of protection of these marks due to three years of non-use and won the case. A similar mechanism worked in the case of «against» against «terminated protection of the mark»: on 27 November 2024 year, the Court of Intellectual Property terminated protection of the mark «even though the registration was formally val was formally val» precisely due to actual non-use, even though the registration was formally valid. This strategy requires evidence — market monitoring, screenshots, and absence of products under the disputed mark for at least three years.
The 3 strategy. Complete concept change for rebranding
ZT, a company formerly known as Zonatelecom, went through a double rebranding: the chosen name was deemed conflicting with the existing trademark 'ZONA-TELEFON'. The final decision was to switch to the short abbreviation ZT. Sometimes it is faster and cheaper to change the entire naming completely rather than to dispute the rights to the conflicting version.
When rebranding itself creates the risk of losing rights to the new mark
There is a reverse side to the problem: a trademark owner may lose protection of their own, already registered mark precisely due to careless rebranding. Article 1486 of the Civil Code of the Russian Federation allows the use of a mark 'with changes' — but only cosmetic: another font, different color tints, modified scale of elements. The boundary is drawn where the average consumer still recognizes the brand based on unchanged key elements.
If rebranding changes the designation to such an extent that recognizability is lost — the company effectively stops using the registered mark in the eyes of the law, even while continuing to operate under the new visual identity. After three years, a competitor or any interested party may file a lawsuit for early termination of protection — exactly the mechanism that metro successfully applied against the foreign mark VZGLYAD. The conclusion is simple: alongside launching the new brand, the old mark should either be re-registered in the updated form, or continue to be formally used at least in part of the documentation.
Why Rospatent refuses to register 'identical' marks
A refusal based on legal identity hits specifically the rebranding 'just for the sake of it'. The logic of Rospatent and the courts: if the new mark provides the same scope of legal protection as the old one (example — the word mark MYRAMISTIN and the logo based on it), this is not a new object, but the same mark in a different graphic representation, and it does not need to be registered separately. For the company, this means that updating the visual identity without changing the key distinctive elements is legally meaningless as a separate application.
In this case, the court may side with the company if Rospatent has already refused the application on another ground—namely, the lack of distinctive character of the new designation. The court dealing with intellectual property rights applies the concept of ‘acquired distinctiveness’ in such disputes: if the company proves long-term and active use of the updated mark on the market, consumer recognition, the refusal of Rospatent may be cancelled. This is a separate argument in favor of documenting evidence of using the new brand from the very first day of rebranding—ad campaigns, sales, media mentions.
At what stage to check the trademark: before, during, or after concept development
The correct answer is before. Trademark checking should be integrated into the brief for concept development, not follow a completed logo. Practice shows: agencies and marketing teams often delay legal expertise until the moment of filing an application with Rospatent, when the creative concept is already approved by management, presented to staff, and launched in production. Redesigning at this stage results in lost budgets and months of work.
A reasonable algorithm looks like this:
- At the task-setting stage — preliminary search in Rospatent and FIPS registries using keywords and phonetic variations.
- At the stage of selecting from 2-3 final concepts — full patent check of each variant with assessment of similarity up to the degree of confusion.
- After approval of the final variant — re-check before filing the application, since the registry is changing, and new competitor applications may have appeared in parallel.
Skipping the first step is the most common reason why conflicts are discovered at the finish line, when the brand is already 'in the field'.
Legal identity and similarity to the degree of confusion — these are different issues
Confusion is encountered almost in all sources here, although the difference is fundamental for choosing a protection strategy.
| Criterion | Legal identity | Similarity to the point of confusion |
|---|---|---|
| Who is conflicting | The same owner (their old and new mark) | Different owners |
| The essence of the problem | The new mark provides the same scope of protection as the old one — Rospatent considers them one designation | Marks of different entities may mislead the consumer |
| Consequence | Refusal to register a new mark as a standalone | Refusal to register + risk of lawsuit for violation of rights |
| Example | Verbal MYRAMISTIN and a logo based on it | Zonatelecom vs ZONA-TELEFON |
If Rospatent refuses based on identity — this is a signal that rebranding is cosmetic and legally insignificant, the mark needs to be changed more strongly. Refusal based on confusion — this is already a conflict with a third party, and this is where the choice of strategy begins.
Three strategies for resolving a conflict: cases instead of theory
Below are three real scenarios from 2024-2025 years that show how a conflict is resolved in practice, not in theory.
Strategy 1. Agreement on coexistence and mediation
The case of «Krepezh SPb» against «Krepezh-Kom» — an example of a peaceful resolution. The companies sold similar products under similar names and instead of a multi-year legal battle came to mediation. The parties agreed on specific timeframes: within how many months one of the brands develops a new name and within how many months it removes the old one from circulation, so as not to create a gap in sales. The agreement was reached during mediation. This works when both sides are interested in preserving reputation and customer base, not fighting for priority.
Strategy 2. Early termination of an unused competitor's mark
The Moscow Metro wanted to register the Russian-language name «The Moscow Metro wanted to register the Russian-language name» instead of the initially planned English-language FacePay, but discovered that the marks VZGLYAD and «but discovered that the marks VZGLYAD and» were already registered, but not actually used by another owner. Under article 1486 of the Russian Civil Code, the metro filed a claim for early termination of protection of these marks due to three years of non-use and won the case. A similar mechanism worked in the case of «against» against «terminated protection of the mark»: on 27 November 2024 year, the Court of Intellectual Property terminated protection of the mark «even though the registration was formally val was formally val» precisely due to actual non-use, even though the registration was formally valid. This strategy requires evidence — market monitoring, screenshots, and absence of products under the disputed mark for at least three years.
The 3 strategy. Complete concept change for rebranding
ZT, a company formerly known as Zonatelecom, went through a double rebranding: the chosen name was deemed conflicting with the existing trademark 'ZONA-TELEFON'. The final decision was to switch to the short abbreviation ZT. Sometimes it is faster and cheaper to change the entire naming completely rather than to dispute the rights to the conflicting version.
When rebranding itself creates the risk of losing rights to the new mark
There is a reverse side to the problem: a trademark owner may lose protection of their own, already registered mark precisely due to careless rebranding. Article 1486 of the Civil Code of the Russian Federation allows the use of a mark 'with changes' — but only cosmetic: another font, different color tints, modified scale of elements. The boundary is drawn where the average consumer still recognizes the brand based on unchanged key elements.
If rebranding changes the designation to such an extent that recognizability is lost — the company effectively stops using the registered mark in the eyes of the law, even while continuing to operate under the new visual identity. After three years, a competitor or any interested party may file a lawsuit for early termination of protection — exactly the mechanism that metro successfully applied against the foreign mark VZGLYAD. The conclusion is simple: alongside launching the new brand, the old mark should either be re-registered in the updated form, or continue to be formally used at least in part of the documentation.
Why Rospatent refuses to register 'identical' marks
A refusal based on legal identity hits specifically the rebranding 'just for the sake of it'. The logic of Rospatent and the courts: if the new mark provides the same scope of legal protection as the old one (example — the word mark MYRAMISTIN and the logo based on it), this is not a new object, but the same mark in a different graphic representation, and it does not need to be registered separately. For the company, this means that updating the visual identity without changing the key distinctive elements is legally meaningless as a separate application.
In this case, the court may side with the company if Rospatent has already refused the application on another ground—namely, the lack of distinctive character of the new designation. The court dealing with intellectual property rights applies the concept of ‘acquired distinctiveness’ in such disputes: if the company proves long-term and active use of the updated mark on the market, consumer recognition, the refusal of Rospatent may be cancelled. This is a separate argument in favor of documenting evidence of using the new brand from the very first day of rebranding—ad campaigns, sales, media mentions.
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