Someone registered a similar trademark: how to protect your brand

Is a similar trademark always a problem?

Not every coincidence or similarity signifies a rights infringement or a threat to business. In intellectual property law, what matters most is not only the formal similarity of names and/or images, but also the risk of confusion between goods or their manufacturers in the perception of consumers.

If the names of designations are similar but applied in completely different categories of goods, the risk of confusion may be minimal. For example, identical or similar names in the clothing and industrial equipment segments usually do not overlap. But if brands operate in the same or related categories, the situation becomes much more sensitive.

The main problem is that a registered trademark gives its owner the exclusive right to use the designation within specific classes of goods and services.

This means that a new right holder can potentially:

• file claims for the use of the designation without their consent;

• submit complaints against product listings and block the brand on marketplaces;

• challenge advertising and content;

• initiate legal disputes and demand financial compensation for the illegal use of the trademark.

Even if you started using the brand earlier, the lack of registration or weak protection can create legal vulnerability. This is especially critical for companies that actively sell goods on Wildberries, Ozon, and other marketplaces.

The first thing to do is evaluate the degree of similarity.

Upon discovering a trademark that is similar to your designation, it is important not to panic but to conduct an initial assessment. Usually, visual or phonetic similarity of the designations, the overlap of product classes, and the likelihood of consumer confusion are analyzed. Sometimes the differences are obvious, making the risk of conflict minimal. However, there are cases where even slight changes in spelling or pronunciation do not resolve the issue. Therefore, at this stage, it is important to objectively assess whether there is a real threat to the business or if it is merely a formal coincidence.

Possible scenarios for the development of the situation

After analyzing the similarity of designations, several scenarios are typically identified.

Scenario 1. No conflict

If the designation and the trademark are used in different product categories and do not create a risk of confusion, the situation may not require active measures. However, even in this case, it is important to monitor the use of a similar designation in the market, especially if the business is growing.

Scenario 2. Risk of overlapping interests

If the products or user audiences partially overlap, the use of the brand may be restricted in certain segments. In such cases, a legal strategy is often required: from negotiations to a change in positioning.

Scenario 3. High risk of conflict

The most difficult situation is when a mark is registered in the same product classes and can be used by a competitor in active commercial activities. In this case, disputes, blocking of product listings on marketplaces, and demands to cease the use of the brand are possible.

How can the problem be solved?

First and foremost, the possibility of negotiations with the trademark owner is considered. Sometimes the parties reach a coexistence agreement or a demarcation of their spheres of use.

The second option is challenging the registration. If there are legal grounds - for example, if the trademark was registered in bad faith or violates the priority of earlier use - a cancellation procedure can be initiated.

Additionally, in some cases, protection is possible by proving prior use of the brand, especially if the company can confirm active commercial activity before the competitor's registration date.

Each of these strategies requires a legal assessment, as an error at this stage could lead to the actual loss of the brand.

Furthermore, a similar trademark is not only a legal risk but also a matter of reaction speed. The longer a company ignores the situation, the higher the probability that the new right holder will begin to actively defend their rights: filing complaints, blocking products, and establishing their market position. This manifests particularly quickly on marketplaces, where complaint mechanisms allow for the swift restriction of sales; therefore, delay can directly impact revenue and business stability.

How marketplace listings get blocked

For a marketplace, a registered trademark is one of the clearest grounds for restricting sales. The platform does not assess who started using the brand first. It looks at the registration certificate, the applicant, and the classes of goods covered by the registration.

The process usually works as follows:

1. The rights holder files a complaint against a listing or seller, alleging infringement of its exclusive trademark rights, and provides registration documents.

2. The platform checks the formal grounds for the complaint and may restrict the listing by removing it from search results, taking it down, or suspending the seller’s sales in the relevant category.

3. The seller receives a notification and must either demonstrate that the use of the designation is lawful or make changes.

For a seller without their own trademark registration, this means that a brand they have been using for years can be restricted within days, while restoring the listings may take a long time. During this period, sales, search rankings, and ratings may decline, and accumulated reviews may remain linked to a blocked listing.

As a result, trademark disputes on marketplaces move faster than proceedings before Rospatent or the courts. A legal position must be developed while the seller is simultaneously trying to keep sales going.

What to do if your listings have already been blocked

Step 1. Document the situation. Save the platform’s notification, screenshots of the listings, sales statistics, and the complaint itself, if you can access it. These materials will be useful both in negotiations and in court.

Step 2. Check the grounds for the complaint. Request the rights holder’s trademark registration certificate and an extract from the relevant register, then check:

- Whether the registration is still valid and the term of protection has not expired.

- Which Nice Classification (NCL) classes and goods the trademark covers.

- Whether your products fall within the scope of those goods and services.

- Whether there is a genuine likelihood of confusion or whether the complaint was filed merely as a precaution.

Step 3. Gather documents supporting your position. Depending on the circumstances, these may include:

- Your own trademark registrations or pending applications with an earlier priority date.

- A license or distribution agreement with the actual rights holder.

- Documents establishing the origin of the goods, such as supply agreements, delivery notes, and certificates.

- Evidence of earlier, good-faith use of the brand, including initial sales records, advertising, correspondence, and media coverage.

- If the goods are genuine products, evidence that they were lawfully put into circulation, taking into account Article 1487 of the Civil Code of the Russian Federation on trademark rights exhaustion.

Step 4. Choose a strategy. The available options typically include:

- Contacting the marketplace’s support team with a reasoned response to the complaint.

- Conducting pre-litigation negotiations with the rights holder, including discussions of a license or coexistence agreement.

- Challenging the trademark registration if there are legal grounds to do so, such as similarity to your earlier designation, bad faith on the part of the registrant, or non-use of the trademark.

- Filing a lawsuit if the dispute involves substantial losses or unjustified claims.

Step 5. Protect your brand for the future at the same time. If you have not registered your trademark, file an application as soon as possible. This will not resolve the existing dispute, but it can reduce the risk of future blocks and strengthen your position in negotiations.

What not to do: Create new listings under the same designation, change the name to circumvent the block, or engage in a public dispute with the rights holder. Such actions may be treated as repeated infringement and weaken your position.

Common mistakes when dealing with a similar trademark

1. Ignoring the problem. Many sellers assume that nothing will change because their brand has been on the market for a long time. However, the rights holder can take action at any time, often when the brand begins to grow and attract attention.

2. Assuming that prior use provides protection without registration. Long-term use of a designation does not, by itself, grant exclusive trademark rights. Challenging someone else’s registration requires specific legal grounds and supporting evidence, not merely a long track record in the market.

3. Making a “minor change” to the name. Replacing one letter, adding a number, or changing the font will generally not eliminate the risk of confusion if the overall impression and phonetic similarity remain. Such a modification may even weaken your position by appearing to acknowledge the problem.

4. Assessing similarity by appearance alone. Similarity is assessed based on visual, phonetic, and conceptual factors, as well as the similarity of the goods. Even experienced business owners can get this wrong in either direction: they may underestimate the risk or abandon a brand that could have been used safely.

5. Registering the trademark in the wrong classes. If the registration does not cover all the actual categories of goods you sell or fails to account for planned product expansion, opportunities remain for third parties to file competing applications and initiate disputes.

6. Delaying the application. Priority is determined primarily by the filing date of the application. While you put off registration, someone else may file first, leaving you to challenge their registration rather than simply protect your own brand.

7. Failing to preserve evidence of use. Without dated screenshots, sales archives, contracts, and advertising materials, it can be difficult to prove good-faith use years later.

8. Negotiating without a strategy. A letter to the rights holder acknowledging similarity or asserting “your own rights” without a legal assessment may be used against you. It is advisable to consult a lawyer before making initial contact with the other party.

9. Responding to the marketplace in a perfunctory manner. A one-paragraph response without supporting documents or references to the relevant legal grounds often fails to achieve results. Marketplaces are more likely to respond to a structured legal position backed by evidence.

10. Failing to monitor the market after registration. Even a registered trademark requires active protection. Monitor new applications for similar designations, the appearance of copies on marketplaces, and potentially infringing advertising. The sooner a problem is identified, the less costly it is to resolve.

How to reduce risks in the future

Most such situations can be prevented if the designation is registered as a trademark in key product classes in a timely manner, i.e., before the moment of active actual use of the brand.

At the same time, until the moment of registration, brands usually employ the following strategy:

• track new applications for the registration of similar designations;

• monitor the market for similar designations;

• record instances of brand use in commercial activities.

This is where systemic tools that allow for tracking risks at an early stage are particularly important. In this case, ZIPDetect helps rightsholders not only find violations on marketplaces but also build broader control over brand usage.

The appearance of a similar trademark is a situation that cannot be ignored. It does not always signify a direct threat, but it always requires assessment and a response. The key question for a business is not whether the mark is similar, but whether it can affect brand usage, sales, and the company's positioning. The earlier the assessment is conducted and a protection strategy is chosen, the more opportunities the business has to maintain control over its brand and avoid conflicts in the future.