Letters of Consent in Russia: The Misleading-Consumer Override (Article 1483.6)

In many trade mark jurisdictions, a letter of consent from the owner of a prior conflicting mark can resolve a citation and allow a later application to proceed. Russia provides for this mechanism under Article 1483, paragraph 6, subparagraph 5 of the Civil Code — but with a critical limitation that distinguishes Russian practice from most other systems. Rospatent retains discretionary authority to reject a letter of consent if it determines that coexistence of the marks would mislead consumers. This override makes letters of consent in Russia a useful but unreliable tool.

The Legal Framework

Article 1483, paragraph 6, of the Civil Code prohibits the registration of marks that are identical or confusingly similar to prior registered marks or pending applications for similar goods or services. Subparagraph 5 of the same provision creates an exception: registration may be permitted if the prior right holder grants consent, provided that such registration would not cause consumer confusion.

The statutory language is explicit: consent overcomes the citation only if the resulting coexistence would not mislead the public. This means Rospatent’s acceptance of a letter of consent is not automatic — it is conditional on the examiner’s independent assessment of the confusion risk.

Rospatent’s Requirements for Letters of Consent

Rospatent’s Recommendations on the Application of Consent Provisions (Order No. 190 of December 30, 2009) set out specific formal and substantive requirements:

• Irrevocability: The letter must state that the consent, once granted, cannot be revoked by the prior right holder.
• Unlimited duration: The consent must not be limited in time.
• No-confusion statement: It is strongly advisable (and in practice expected) for the letter to include a statement that the prior right holder believes registration of the later mark would not cause confusion in the marketplace.
• Identification of the marks and goods: The letter must clearly identify both the prior mark and the applied mark, as well as the goods and services in question.
• Proper execution: The letter must be duly signed by an authorised representative of the prior right holder and, for foreign entities, typically accompanied by a notarised translation into Russian.

When Rospatent Will Reject a Letter of Consent

Even when a letter of consent meets all formal requirements, Rospatent may refuse to accept it in several circumstances:

• Identical or near-identical marks for identical goods: Where the applied mark and the cited mark are identical (or extremely similar) and cover the same goods or services, Rospatent is highly likely to reject the consent on the ground that coexistence would inevitably mislead consumers about the commercial origin of the goods.
• Common consumer goods: Rospatent applies heightened scrutiny for categories of goods where the average consumer exercises low attention, including cosmetics, foodstuffs, alcohol, and tobacco. In these sectors, even modest similarity between marks may be sufficient for Rospatent to override the consent.
• Pharmaceuticals: The Recommendations call for particular care where both marks are names of pharmaceutical products. Given the health and safety implications, Rospatent is most reluctant to accept consent in this sector, even where the marks are merely similar rather than identical.
• Well-known marks: If the cited mark enjoys a reputation or has been recognised as well-known in Russia, Rospatent is more likely to conclude that consumer confusion is unavoidable.
• Collective marks: If either the cited mark is a collective mark or the applied designation seeks collective mark status, consent is unlikely to be accepted.

The Examiner’s Discretion

The fundamental principle is that the examiner assesses the degree of similarity between the marks and the degree of relatedness of the goods independently of the consent. The consent is one factor in the analysis, but it does not override the examiner’s obligation to prevent consumer deception. In cases of very close similarity, the consent is effectively ignored.

This approach has generated tension with court decisions. Some Russian court rulings have held that Rospatent lacks discretion to reject a letter of consent where the marks are merely similar (rather than identical). However, Rospatent’s examination practice continues to apply the consumer-misleading override, and the Recommendations remain in force.

Strategic Recommendations

• Assess the viability before requesting consent: Before investing time and resources in obtaining a letter of consent, evaluate whether Rospatent is likely to accept it. If the marks are identical or near-identical for the same goods, consent will probably be rejected.
• Differentiate the goods/services: The closer the goods, the higher the risk of rejection. If possible, narrow the goods list to reduce overlap with the cited mark.
• Avoid identical pharmaceutical marks: Consent for identical or very similar pharmaceutical marks is virtually certain to be rejected.
• Ensure strict formal compliance: Any deficiency in the letter’s wording — missing irrevocability clause, time limitation, or unclear identification — will result in rejection on formal grounds alone.
• Consider alternative strategies: Where consent is unlikely to succeed, consider negotiating a partial assignment, redesigning the mark, or pursuing non-use cancellation of the cited mark.

Key Takeaway

Letters of consent under Article 1483.6 provide a potential pathway to overcome prior-mark citations in Russia, but they are subject to Rospatent’s independent assessment of whether coexistence would mislead consumers. For identical or near-identical marks — particularly for common consumer goods, pharmaceuticals, and well-known marks — the consent mechanism is unreliable. Applicants should treat letters of consent as one tool in a broader strategy, not as a guaranteed solution.