Background
Sangar Company JSC owns Russian trademark No. 872748 for the word mark «БЕЛАЯ ПЯТНИЦА». It was registered on 1 June 2022 with priority from 10 January 2022 for goods in Classes 29 and 30 and services in Class 35.
M.Video PJSC relied on its earlier combined mark «WHITE FRIDAY», Russian trademark No. 617512, registered on 26 May 2017 with priority from 8 February 2016, including for homogeneous goods and services in the same classes.
M.Video filed an invalidity objection on 22 November 2024. Rospatent dismissed it on 31 October 2025, and the IP Court, sitting as the first-instance court, upheld that outcome on 7 April 2026. Both accepted that the expressions were semantically identical, but treated this as insufficient in view of their phonetic and visual differences.
The three-step test
The Presidium restated the methodology derived from paragraph 162 of Resolution No. 10 of the Plenum of the Russian Supreme Court dated 23 April 2019. The likelihood-of-confusion analysis requires three distinct steps:
- Determine the degree of similarity between the marks.
- Determine the degree of similarity, or homogeneity, between the relevant goods and services.
- Assess likelihood of confusion by considering both degrees together with any additional relevant circumstances listed in paragraph 162.
The ruling stresses that these factors influence the ultimate likelihood of confusion, not each other. The degree of mark similarity should not first be adjusted because the goods are close, or vice versa, and then reused in the final analysis.
Semantic analysis is not a scorecard
At the first step, Russian practice evaluates word marks by phonetic, visual and semantic or conceptual criteria. The Presidium held that these criteria cannot be applied through a numerical “two against one” exercise. Their respective weight depends on the facts of the case.
For the semantic criterion, the court identified at least three situations:
- if neither mark has a lexical meaning, semantics does not contribute to the overall comparison;
- if only one mark has a lexical meaning, the marks are semantically dissimilar, but this criterion will ordinarily have limited significance and the phonetic or visual criterion may prevail;
- if both marks have lexical meanings, the semantic criterion makes a material contribution to the overall comparison.
The Presidium also referred to paragraph 2.475 of the WIPO Intellectual Property Handbook. The Handbook explains that a fundamentally different meaning may preclude confusion despite similarities in other respects. The Russian court used this not as an automatic formula, but as support for the proposition that meaning may have independent analytical weight.
Why these marks are different from CLEAN CLINIC
The lower court and Rospatent had already found that «white» and «Friday» directly translate as «белая» and «пятница». The case therefore involved semantic identity, not merely semantic similarity. According to the Presidium, that identity strengthens the weight of the semantic criterion in the overall comparison.
This distinguished the case from CLEAN CLINIC v. «Чистая клиника» (Case No. SIP-229/2023). In that earlier matter, CLEAN CLINIC was polysemous and only one of its meanings overlapped with the Russian expression. The signs were conceptually similar, but not exact semantic equivalents.
What the Presidium decided — and what it did not
The operative part was announced on 27 July 2026 and the full resolution was issued on 31 July 2026. The Presidium set aside the first-instance judgment of 7 April 2026 and remitted the matter for a new hearing.
What this means for foreign counsel and rights holders
The ruling provides four practical lessons:
- trademark clearance should cover obvious translations of key words and phrases;
- pleadings should keep the three stages of analysis distinct and should not substitute a count of phonetic, visual and semantic criteria for an overall assessment;
- the weight of meaning will depend on lexical content, the precision of the translation and the relevant public's understanding of that meaning;
- filing translated versions remains prudent because the ruling establishes a methodology, not automatic protection for every translation.
Different alphabets and visual treatments do not by themselves answer the likelihood-of-confusion question. Where both marks convey the same clear meaning, semantic identity must be given genuine rather than merely formal weight.
Primary and legal sources
- Presidium of the Russian IP Court, resolution dated 31 July 2026, Case No. SIP-1147/2025. Search the Russian Commercial Courts Case File.
- Resolution No. 10 of the Plenum of the Russian Supreme Court dated 23 April 2019, paragraph 162.
- Order No. 482 of the Ministry of Economic Development dated 20 July 2015, paragraphs 41–44.
- WIPO Intellectual Property Handbook: Policy, Law and Use, paragraphs 2.473–2.475.
Related guidance and services
IP Litigation Guide · Litigation service · Trademarks service
Ramzan Khusainov
Managing Partner; Russian and Eurasian Trademark Attorney. Ramzan advises on trademark disputes, portfolio strategy and cross-border IP coordination.
This article is provided for general information only and does not constitute legal advice. The position in a specific matter depends on its facts, evidence, procedural status and applicable law.