The dispute lost over the registration of the “Milk Wave’s” trademark

Rospatent refused registration of the trademark “Milk Wave’s” (Russian trademark application No. 2022775326) submitted by the “Gift” company (hereinafter – the Company) on the grounds of its similarity to the existing “MilkyWay” trademark.

The application was filed for an image of a soft drink can with an original blue “Milk Wave’s” logo decorated with stars and a device element in yellow tones. The earlier trademark is an original logo of “MilkyWay” in combination of navy blue, white and red, with an image of a rocket and a little shooting star.

Disagreeing with Rospatent’s decision, the Company filed an objection, arguing that the two marks had significant differences, especially when it comes to their meaning and graphic representation. Moreover, the applicant already has a trademark with the verbal element “WAVE’S” No. 619493 with priority even earlier than the cited mark. However, Rospatent dismissed these arguments and upheld its refusal.

The Company then escalated the case to the Russian Intellectual Property Court. The court ruled in favor of Rospatent, stating that the compared trademarks exhibited similarities in sound and visual appearance, creating an overall associative impression despite certain individual differences.

In its appeal, the Company maintained that the two marks produced distinct visual and auditory effects, differing in color scheme, compositional structure, conceptual elements, word count, syllable structure, and intonation. Nevertheless, the Presidium of the Russian Intellectual Property Court (Case No. SIP-871/2024) after reviewing the case materials found no valid grounds to grant the appeal and upheld the earlier decision.

This case shows how verbal elements play the most important role in trademark comparison. If the marks are phonetically close, they are very likely to be considered confusingly similar to each other despite having some distinct graphic features.