Determining the strong and weak elements of a trademark

Originally published in the Trademark Lawyer magazine

As per subparagraph 2 of paragraph 6 of Article 1483 of the Russian Civil Code, designations that are identical or confusingly similar to the trademarks of other persons protected in the Russian Federation cannot be registered as trademarks, including in accordance with the international treaty of the Russian Federation, in relation to similar goods and having earlier priority. At the same time, according to paragraph 3 of Article 1484, no one has the right to use, without the permission of the copyright holder, designations similar to his trademark in relation to goods for the individualization of which the trademark is registered, or homogeneous goods, if as a result of such use there is a likelihood of confusion.

The likelihood of confusion between a trademark and a disputed designation is determined based on the degree of similarity of the designations and the degree of homogeneity of the goods for these persons. Paragraph 162 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 determines that the establishment of similarity is carried out by the court based on the results of comparison of the trademark and designation (including graphic, sound and semantic criteria) with taking into account the evidence presented by the parties according to their inner conviction. In this case, the court takes into account in relation to which elements there are similarities - strong or weak elements of the trademark and designation.

But how can we determine which trademark elements are strong and which are weak? This article will examine this issue from the perspective of current legal practice.

The Resolution of the Presidium of the IP Court dated June 24, 2022 in case No. SIP-661/2021 states that certain elements (including words) are recognized as strong or weak not in the abstract. Specifically, the element's strength is determined by:

1.    The specific designation and in relation to other elements of that mark;

2.    The specific goods (for example, in terms of descriptiveness or whether the use of the element is common for specific goods);

3.    The perception of the specific designation by the target consumer group.

Accounting for other elements of a trademark

Arguments about the strength of a particular element of a particular trademark can only be analyzed in light of other elements of the same trademark.

Thus, often-used elements in trademarks may have less strength compared to rarely used elements. This is also reflected in paragraph 2.471 of the WIPO Intellectual Property Handbook. When comparing trademarks with a common element, the presence of other trademarks with the same element owned by other rights holders is considered. If such trademarks exist, consumers become accustomed to the use of this element by different entities and do not pay particular attention to it as a distinguishing feature.

Similarly, Rospatent follows this logic in examining a designation filed as a trademark. According to the FIPS Order No. 12 dated January 20, 2020, “as an argument indicating that there is no threat of confusion by consumers between the declared designation and the opposing trademark, information may be provided that a coinciding or similar element of the compared trademarks is used as part of the trademarks and designations used by third parties. In this case, the fact of simultaneous use by many persons of coinciding or similar elements of trademarks and designations can be taken into account when assessing the significance of these elements in the compared trademarks and designations for the purpose of individualizing the corresponding goods and services. In particular, taking into account specific circumstances, a conclusion can be drawn that the element included in a large number of trademarks and designations is weak and its coincidence or similarity in the compared trademarks and designations does not in itself lead to their similarity to the point of confusion.”

Consumer Perception          

The Presidium of the IP Court's rulings on September 23, 2021, in case No. SIP-871/2020, No. SIP-591/2020 indicate that when a trademark consists of several words, it is necessary to determine whether they are perceived as indivisible phrases or idiomatic expressions. For example, a junior trademark consisting of several words should be evaluated to see if they are perceived as fixed phrases (e.g., "eyeball," "Indian summer," "man of the people," "an hour," "good tradition") or idiomatic expressions (e.g., "Monomakh's cap").

The designations of this group are characterized by integrity, due to which they acquire a new semantic meaning that is different from the semantic meaning of their constituent words. The meaning of such expressions is not related to the semantics of each individual word in its composition: the words of the phrase lose all independent characteristics of the word (lexical meaning, forms of change, syntactic function), except for their sound appearance. The connection between the words in such expressions is inseparable. Accordingly, such expressions, although formally they consist of several words, are perceived as a single element due to their integrity and the loss of features by individual lexical units. Several words can begin to be perceived as a single verbal element not only in the above cases, but also based on the peculiarities of the compositional structure of the elements of a trademark, due to which some words, which are independent lexical units, begin to be perceived by the consumer as a single whole in a specific trademark, taking into account the specifics of their location in it and the circumstances of use of the sign. Thus, the determination of the number of elements in a trademark is carried out based on its perception by consumers.

For example, in case No. SIP-434/2023, the Presidium of the IP Court found that the court of first instance rightfully proceeded from the fact that the disputed trademark includes a single design that does not breaks down into separate verbal elements “PLANET” and “SIBERIA”. Acting in the context of the stated logic, the court of first instance came to the logical conclusion that the word “PLANET” included in the disputed designation is not perceived as an opposing service mark registered in the name of Ibatullin A.V.

Thus, the definition of strong and weak elements of a trademark are determined not in the abstract, but in each specific case individually, taking into account other elements of the trademark, as well as taking into account the perception of the elements by consumers.