In accordance with Article 1477 of the Civil Code of the Russian Federation, a trademark is a designation that serves to individualize goods, and a service mark is a designation that serves to individualize the work performed or services provided.

The choice of goods and services that will be individualized by the trademark is carried out on the basis of the applicant’s activities. A person engaged in commercial activity usually concentrates on a certain direction or a sphere. This is especially true for novice entrepreneurs and small companies. Large holdings with a certain history, owning individual market shares, can have a wider range due to greater production and financial capabilities.

In this regard, the competent selection of goods and services in accordance with the International Classification of Goods and Services (ICGS) is one of the fundamental factors at the stage of filing an application. The Nice Classification is a list of 45 classes: goods are included in Classes 01-34, services are included in Classes 35-45. The list of each class is represented by the most used items, while every year the list of the Nice Classification is updated and supplemented, as new goods and services appear. Each class of the Nice Classification includes a class heading, which contains generic positions that determine the purpose of the class. The list itself is represented by generic positions.

When preparing an application, we recommend using the Nice Classification as a guide. However, some of the information that is important to the applicant may not be included in the Nice Classification. In this case, it is possible to select similar positions or declare a position not included in the ICGS. The adoption of wording not from the ICGS is at the discretion of Rospatent: such positions may be accepted or an examination request may be sent with a request to clarify the position or exclude it. When forming the list, it should be borne in mind that it is impossible to add goods/services after filing an application, but the list can be limited at the examination stage.

In accordance with Clause 6 of Article 1483 of the Russian Civil Code, “Designations that are identical or confusingly similar to:

1. Trademarks of other persons applied for registration in respect ofhomogeneous goods and having an earlier priority, if the application for state registration of the trademark has not been withdrawn, recognized as withdrawn or a decision has not been made on refusal of state registration;
2. Trademarks of other persons protected in the Russian Federation, including in accordance with an international treaty of the Russian Federation, in relation to homogeneous goods and having an earlier priority;
3. Trademarks of other persons recognized in accordance with the procedure established by this Code as well-known trademarks in the Russian Federation, in respect ofhomogeneous goods from a date earlier than the priority of the claimed designation.”

In accordance with Clause 3 of Article 1484 of the Civil Code of the Russian Federation, “No one has the right to use, without the permission of the right holder, designations similar to his trademark in relation to goods for the individualization of which the trademark is registered, or similar goods, if as a result of such use there is a possibility of confusion.”

Taking into account the above provisions of the Civil Code, there is no prohibition on the registration by different persons of identical or confusingly similar trademarks in relation to heterogeneous goods, i.e. such goods, the designation of which will not mislead the consumer about the product or its manufacturer.

Establishment of the identity of trademarks or their confusing similarity is carried out during the examination of applications for trademarks in relation to homogeneous goods.

Explanatory dictionaries of the Russian language give the following definitions of the term “homogeneous”: relating to the same category, gender; the same in all its parts, consisting of the same parts; the same, similar to the other.

With regard to the consideration of issues of registration and use of identical or confusingly similar trademarks, homogeneous goods should be understood as goods in respect of which the consumer may have the idea that they belong to the same manufacturer. At the same time, the kind (type) of goods, their consumer properties and functional purpose (scope and purpose of use), the type of material from which they are made, the complementarity or interchangeability of goods, the conditions of their sale (including a common place of sale, sale through a retail or wholesale network), the circle of consumers, the traditional or predominant way of using goods and other features are taken into account. All these features are analyzed in aggregate from the point of view of the consumer.

Homogeneity is determined by the main and auxiliary features. Main features: type of goods; purpose of goods; the type of material from which the goods are made. Auxiliary features: conditions and channels for the sale of goods, division of goods into consumer goods and industrial and technical goods, as well as into durable or short-term goods.

Goods and services can be recognized as homogeneous if the scope of their application/provision coincides. For example, “programs for computers” (Class 09 of the Nice Classification) and “Compilation of programs for computers” (Class 42 of the Nice Classification); “clothing” (Class 25 of the Nice Classification) and “tailoring of clothes” (Class 40 of the Nice Classification); “glasses (optics)” (Class 09 of the Nice Classification) and “Opticians’ services” (Class 44 of the Nice Classification); “printed publications”, “printed products” (16th grade of the Nice Classification) and “printing”, “offset printing” (40th grade of the Nice Classification), “book publishing” (41st class of the Nice Classification).

Class 35 of the ICGS includes services related to the promotion and sale of goods that can be recognized as homogeneous to “commodity” classes. It is especially important to take into account such services if they are specified by certain items of goods.

When assessing homogeneity, the degree of similarity of the compared designations is taken into account. The higher the degree of similarity, the wider the list of goods/services is recognized as homogeneous. If the claimed designation is confusingly similar to a well-known trademark, heterogeneous goods/services may be recognized as homogeneous.

To reduce the risks of contrasting identical and confusingly similar trademarks, it is possible to choose a narrow list of goods/services when filing an application in order to state only the items of interest. Such a study of the list can reduce the number of opposing marks on the part of the Rospatent’s examiner. However, in the case of the identity of the marks, even a narrow limitation and exclusion of homogeneous positions does not exclude the risks of opposition of early marks, since the approach of the examination in this case is stricter.

In the case of opposition of identical and confusingly similar trademarks, if possible, arguments are given about the heterogeneity of goods/services in terms of the main and auxiliary features specified above. Zuykov and partners has extensive experience in proving the heterogeneity of goods and services, and as a result, successfully registered trademarks.