We are highly appreciative and pleased that INTA has recognized our recent work in Ukraine by publishing a review of one of our cases in the INTA Bulletin of March 25, 2026, in the “Law and Practice” section titled “Ukraine: Appeal Chamber Clarifies Assessment of Dominant Elements in Trademark Similarity Analysis.”
Behind this successful case stands the hard work and tailored strategy of our IPR GROUP team.
The INTA publication considers trends in trademark examination practice adopted by the Appeals Chamber of the Ukrainian IP Office, as demonstrated by the outcome of one of the oppositions filed on behalf of our client, a well-known Spanish beer manufacturer.
Our main grounds in the opposition against registration of a similar designation “
” under International Registration No. 1166479 in Class 32 for beer in Ukraine were the earlier registration of the client’s word mark “ESTRELLA DAMM” under International Registration No. 924729 in Class 32 in Ukraine, and more than 20 years of extensive use of this trademark on packaging as 
, which is well known and recognizable to consumers both in Ukraine and abroad.
The major challenge in this case was that the client’s word trademark is used on goods and packaging as a combination of stylized word elements and a device element (a “star”). However, this stylized version combined with the coloured star had not obtained separate legal protection.
The opposing party attempted to register a combined trademark incorporating a “star” element and a similar word element, stylized in a manner resembling our client’s packaging.
To protect and enforce our client’s rights, we filed an opposition, arguing that the applied mark did not meet the requirements for legal protection and could mislead consumers as to the origin of homogeneous goods due to its confusing similarity. In particular, it could create false associations with our client’s products and, given the long standing presence and reputation of the client’s goods on the Ukrainian market, could mislead consumers regarding the source of origin.
The IP Office upheld our opposition at the examination stage, finding the mark confusingly similar to our client’s earlier registered mark and refusing protection for IR 1166479 in Ukraine. The applicant’s attempt to challenge this decision before the Appeal Chamber was unsuccessful, as detailed in the INTA publication.
This case was one of a series of oppositions prepared and filed by IPR GROUP on behalf of the Spanish manufacturer against similar registrations in Ukraine. All cases were successful, although one presented significant challenges.
As in the case involving “ESTRELLA GALICIA” the opposition was filed against the national application No. m202119563 for TM “
” (ESTRELLA CATALANIA).
However, our arguments regarding the similarity of the marks were not accepted during substantive examination, and despite the opposition, a decision to grant protection for the conflicting mark was issued.
We advised our client to challenge the decision before the Appeal Chamber of the Ukrainian IP Office. Following a thorough review, the Appeal Chamber accepted our arguments and ultimately cancelled the grant of protection for application No. m202119563 in Ukraine. The client’s rights were successfully secured.
These cases once again demonstrate that when a trademark is used not only as a word mark, but also in a stylized form with figurative elements on product packaging, it is advisable to secure protection not only for the word mark but also for the combined version as used. This helps reduce the risk of conflicting registrations.
We are proud that these complex cases were successfully handled by our IPR GROUP team and our Trademark Attorney, Tatiana Lipovaya, and have been further recognized by the international trademark community.
It should also be noted that the Ukrainian IP Office has significantly adjusted its examination standards, both on relative and absolute grounds, in order to align its practices with EU standards and regulations (EU acquis), particularly Directive (EU) 2015/2436, adopted on December 16, 2015, aimed at modernizing and harmonizing national trademark laws across EU Member States.
In view of this, it is also worth mentioning another case. Recently, the IPR GROUP team successfully handled a complex examination involving logo trademark 
IR 1851806 in classes 07 and 11 in Ukraine for a leading Danish manufacturer of axial fans and impellers.
The Examiner initially refused the mark, stating that it lacked distinctiveness as a “commonly used symbol” and had not acquired distinctiveness through use. Under Ukrainian law, such marks may be protected if sufficient evidence of intensive use and strong recognition by consumers is provided. However, in this case, the applicant had only recently entered the market, making reliance on acquired distinctiveness impractical.
To overcome the refusal, we based our registration strategy on three key arguments:
First, we anticipated that the Examiner might rely on the Vienna Classification of the applied mark (VCL 24.17.03 “Asterisks”). We provided a visual comparison between the applied mark and standard typographical asterisks and geometric stars, demonstrating that the mark is neither a standard symbol nor a simple geometric shape. We emphasized its unique stylized arrangement, which creates a distinctive visual impression.
Second, considering the Ukrainian IP Office’s alignment with EU standards under the EU-Ukraine Association Agreement, we drew the Examiner’s attention to the fact that the applied mark had already been granted legal protection by the EUIPO.
Referring to EUIPO Guidelines, distinctiveness under Article 7(1)(b) EUTMR requires that a sign be capable of identifying goods or services as originating from a particular undertaking and distinguishing them from others. Even a minimal degree of distinctiveness is sufficient to overcome refusal.
We further argued that the goods in Classes 07 and 11 are intended for industrial and specialized use. Therefore, the relevant public includes technical specialists with a higher level of attention, capable of distinguishing between common symbols and indicators of commercial origin.
As a result, the Ukrainian IP Office accepted our arguments and granted protection to the logo mark IR 1851806 in Ukraine.
It is encouraging to witness that the legal strategies and arguments developed by our team are contributing to the evolution of trademark examination and enforcement practices in Ukraine.
IPR GROUP attorneys bring extensive expertise and remain committed to supporting colleagues with guidance on the evolving intellectual property legal landscape of our jurisdictions.
