Key Takeaways
- The Chamber found that the opponent had legal interest as the holder of the earlier international trademark No. 1812213 "SEGLOBIA," but did not establish that the designations were confusingly similar.
- Despite finding a high degree of similarity of goods in Class 05 of the Nice Classification and a functional link between services in Class 35 and pharmaceutical products, the likelihood of confusion was not established due to the absence of similarity of the designations.
- In assessing the designations, the Chamber applied a cumulative approach under the criteria provided in Rule 42 of the Regulations: phonetic, graphic, and semantic similarity.
- Material significance was attributed to the difference in alphabets (Cyrillic/Latin), the differing phonetic perception of the verbal elements, and the differing associative links of the designations in the pharmaceutical field.
- An additional circumstance taken into account by the Chamber was the use of the designation "SEGLURIYA" as the trade name of a medicinal product registered in the State Register of Medicines and introduced into civil circulation.
Legal Analysis
Subject matter and opponent's position
The present dispute is of interest from the standpoint of the practice of applying Article 1483(6)(2) of the Russian Civil Code when assessing conflicting designations in a high-risk industry—the pharmaceutical sector—where the likelihood of confusion is traditionally assessed more strictly due to the specific characteristics of consumer perception of medicinal products.
The subject of the administrative review was an opposition against the grant of legal protection to trademark No. 1078203, registered in respect of goods in Class 05 "pharmaceutical preparations" and services in Class 35 related to the promotion of the corresponding goods. The opposition was based on the allegation that the registration contravened Article 1483(6)(2) of the Russian Civil Code by reason of the existence of an earlier international trademark "SEGLOBIA."
The opponent's legal position was built on the assertion of confusing similarity between the designations "SEGLURIYA" and "SEGLOBIA," manifested through a combination of phonetic, visual, and semantic factors, as well as on the high degree of similarity of the protected goods. Emphasis was placed on the inadmissibility of even a limited risk of confusion with respect to medicinal products.
The Chamber applied the classical methodology for assessing similarity of designations set forth in Rules 41–45 of the Regulations for the Drafting, Filing, and Examination of Documents Serving as a Basis for the State Registration of Trademarks. It was confirmed that the legal qualification must be based on the perception of the designations as a whole, rather than by mechanically comparing individual elements.
Phonetic, graphic and semantic assessment
With respect to phonetic analysis, the absence of a dominant sound coincidence was established. The Chamber proceeded from the position that the differences affected not individual elements but a significant part of the verbal structure of the designations: three out of four syllables, as well as the position of stress, were found to differ. Accordingly, the overall acoustic image of the designations was held to be different.
The graphic criterion was examined through the prism of visual consumer perception. Particular significance was attached to the use of different alphabetic systems—Cyrillic and Latin—which, in the Chamber's view, creates an independent factor distinguishing the commercial origin of the goods. This finding is of interest as it demonstrates that enforcement practice continues to recognize the independent significance of the graphic criterion even in the context of the digital environment and cross-border circulation of intellectual property objects.
Most noteworthy is the assessment of the semantic perception of the designations. Despite acknowledging that both words are artificially formed, the Chamber effectively permitted an analysis of the associations arising. For the designation "SEGLURIYA," an associative link with the international nonproprietary name of the active ingredient semaglutide was deemed relevant, whereas the mark "SEGLOBIA" was assigned to a different semantic framework. Thus, the absence of dictionary meaning did not preclude the possibility of different conceptual perception by the consumer.
Similarity of goods and outcome
At the same time, the Chamber confirmed a high degree of similarity of the disputed goods and services. It was established that the products coincided in purpose, distribution channels, and consumer circles, while services in Class 35 were qualified as ancillary to pharmaceutical goods. However, the existence of similarity of goods was not in itself held to be a sufficient ground for invalidating the registration in the absence of similarity of the designations.
The final conclusion was that the consumer lacked an association of a single commercial source of origin of the goods and services. Consequently, the legal protection of the trademark under Certificate No. 1078203 was maintained, and the opposition was dismissed.
Commentary by Patent Attorney A.V. Leonov
The position under review is of practical interest primarily for participants in the pharmaceutical market, as it demonstrates the limits of application of the concept of an "enhanced standard of distinctiveness" with respect to pharmaceutical brands.
In practice, rights holders often proceed from the presumption that a high degree of similarity of goods in Class 05 automatically heightens the likelihood of confusion. The present decision demonstrates the converse: even where goods categories coincide, the key significance continues to lie in an independent assessment of the similarity of the designations under a combination of criteria.
Particular attention is warranted for the approach to semantic analysis. The Chamber effectively permitted account to be taken of professional market perception and the associations arising for consumers of medicinal products through the connection of the designation with the international nonproprietary name of the active ingredient. For businesses, this means that when developing pharmaceutical brands, it is advisable to document the logic of the naming and to substantiate the origin of the verbal element.
Recommendations for rights holders and applicants
- Prior to filing an application, conduct an extended clearance search not only for coincidences and phonetics but also for potential medical, terminological, and associative links of the designation;
- Document the logic of pharmaceutical naming and substantiate the origin of the verbal element;
- When challenging a registration, confirm that the average consumer is indeed capable of associating the goods with a single commercial source—it is insufficient to cite the number of coinciding letters or the general structure of the word.
The prospects for similar disputes in the future will depend on how convincingly the parties can demonstrate the actual mechanism of perception of the pharmaceutical designation by the market, rather than merely a formal comparison of verbal elements.
Related Materials
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