Likelihood of Confusion in Ukraine Under Article 6(3): Similarity and Dominant Elements

Relative grounds are often the decisive hurdle for businesses filing in Ukraine, especially when the proposed mark resembles an existing brand in a crowded sector. Article 6(3) of the Ukrainian trademark law prevents registration of marks that conflict with earlier rights, and the central inquiry is whether the later sign is identical or so similar that consumers are likely to confuse it with the earlier mark or associate it with the earlier right holder. For in-house counsel and brand owners, understanding how UANIPIO compares marks, goods, and dominant elements is essential to pre-filing clearance and to responding effectively when a citation appears during examination.

The Legal Framework: Article 6(3) of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”

• Article 6(3)(a): bars registration of marks identical or confusingly similar to earlier registered or filed marks of another person for the same or related goods and services.
• Article 6(3)(b): protects well-known marks entitled to protection in Ukraine even without registration for the same or related goods and services.
• Article 6(3)(c): extends protection for well-known marks to dissimilar goods or services where use of the later sign would create an association and harm the well-known mark.
• Article 6(3)(d): protects trade names known in Ukraine if rights arose before the filing date and the goods or services are the same or related.
• Article 6(3)(e): protects certification and similar protected signs recognized by law.
• Article 6(3)(f): addresses unauthorized filings by agents or representatives in violation of the rights of foreign principals.
• Article 15: empowers UANIPIO to examine the application against these earlier rights.
• Article 19: permits later invalidation where a conflicting registration was granted contrary to Article 6(3).

Likelihood of Confusion Test Under Article 6(3)

The statutory formula is whether the later mark is identical or so similar that it can be confused with the earlier sign, including by association. This is a classic likelihood-of-confusion test. Ukraine does not require proof of actual confusion. The examination is prospective and asks whether the average consumer of the relevant goods or services would likely believe the goods come from the same undertaking or economically linked undertakings.

The assessment is global. No single factor is always decisive. UANIPIO considers the similarity of the signs, the similarity of the goods or services, the distinctiveness of the earlier mark, and the overall impression conveyed. Strong earlier marks usually enjoy a broader scope of protection. Conversely, where the common element is weak or descriptive, smaller differences may be enough to avoid confusion.

For businesses, the practical point is that Ukraine’s registry examination is not merely mechanical. A conflict is not limited to exact matches. Partial overlap in wording, sound, or meaning can be enough if the goods are close and the shared element is dominant.

What UANIPIO Considers in Confusion Analysis

Visual similarity

Examiners compare the appearance of the marks as a whole. For word marks, this includes length, sequence of letters, structure, and shared prefixes or suffixes. For figurative marks, the analysis covers layout, shapes, composition, and overall visual impression. Minor stylistic changes do not necessarily avoid conflict if the consumer would still perceive the same sign.

Phonetic similarity

Phonetic analysis matters significantly because many marks are encountered orally. UANIPIO considers how the average Ukrainian consumer would pronounce the marks, including transliterated foreign terms. Similar cadence, syllable structure, and stress pattern can support refusal even where spelling differs.

Conceptual similarity

Where marks share the same meaning or evoke the same idea, conceptual similarity may reinforce a finding of confusion. This is especially relevant for translated foreign words, synonyms, and paired word-and-device marks that communicate the same concept.

Goods and services similarity

Article 6(3) focuses on same or related goods and services. UANIPIO uses the Nice Classification as a starting point but not the endpoint. The office examines commercial reality, including whether the goods are complementary, competing, distributed through the same channels, aimed at the same consumers, or normally produced by related undertakings. Identical classes do not always guarantee confusion, and different classes do not always defeat it.

Word marks

Word-versus-word comparisons are often the strictest because consumers rely heavily on verbal signs in memory and recommendation. Shared distinctive roots can create high risk even where one mark contains additional matter.

Word versus figurative or combined marks

If the figurative or combined mark contains a word element similar to the earlier word mark, the verbal overlap will usually dominate. The design may mitigate risk only if it materially alters the overall impression.

Combined marks and dominant elements

In combined marks, UANIPIO identifies the dominant element of each sign. In practice, the word element often dominates because consumers use it to request the goods. If both marks share a dominant verbal component, the presence of different decorative logos may not avoid confusion. If one mark is dominated by a powerful device and the word component is weak, the comparison may shift toward the visual element. But applicants should not overestimate this possibility.

Well-known marks

Well-known marks under Article 6(3)(b) and 6(3)(c) receive broader protection. Even where the goods differ, a highly similar later mark may still be blocked if it creates association and harms the earlier mark’s interests.

Language and script

UANIPIO considers transliteration and translation. Cyrillic and Latin script versions of similar words may still be phonetically or conceptually close. Foreign-language marks should therefore be cleared not only in their original spelling but also in likely Ukrainian transliteration and meaning.

Key Case Law

Solomyanskyy District Court, case 760/5912/16-c [2020] — the court cited Article 6(3) principles in discussing when marks are so similar that they may be confused or associated with earlier rights, illustrating the Ukrainian understanding that association can suffice even without direct point-of-sale confusion.

No additional leading published Ukrainian court decisions were confirmed in the source guide for the full visual, phonetic, and conceptual analysis under Article 6(3). Accordingly, no leading cases have been published beyond the statutory and administrative approach reflected in the guide.

The Procedure for Responding to a Relative-Ground Refusal

Step 1: Identify the cited earlier right

Determine whether the citation is an earlier application, a registration, a well-known mark, a trade name, or another protected sign under Article 6(3).

Step 2: Compare the marks in structured form

Prepare a side-by-side visual, phonetic, and conceptual comparison. Do not rely on one favorable dimension if the other two strongly support the citation.

Step 3: Analyze goods and services overlap

Review whether the specification can be narrowed to remove the overlap or reduce relatedness. In many cases, specification drafting is the most practical cure.

Step 4: Challenge dominance assumptions if justified

If the examiner assumes the shared word dominates, consider whether that element is weak, descriptive, or visually subordinate. A well-supported dominant-element argument can sometimes reduce the weight of a common term.

Step 5: Evaluate coexistence or consent strategies carefully

The source guide does not establish a formal consent-based cure as a standard prosecution route, so applicants should assess such strategies cautiously and with local counsel.

Step 6: Appeal under Article 18

If the office overstates similarity or goods relatedness, appeal to the Appeals Chamber with a structured confusion analysis and market evidence if relevant.

Step 7: Consider broader portfolio strategy

If the cited mark is strong, filing an alternative brand may be more efficient than litigating a high-risk conflict.

Strategic Recommendations

• Recommendation: Conduct searches across exact matches, phonetic equivalents, transliterations, and conceptual equivalents before filing in Ukraine.
• Recommendation: Pay special attention to the dominant verbal element in combined marks, because UANIPIO often gives it the greatest weight.
• Recommendation: Draft goods and services narrowly where the sector is crowded, since overbroad lists make Article 6(3) citations more likely.
• Recommendation: Assess the inherent strength of the earlier mark. Weak common elements may support a narrower coexistence argument.
• Recommendation: For international brands, clear both Latin and Cyrillic versions of the mark to account for Ukrainian pronunciation and consumer perception.

Common Mistakes

• Mistake: Assuming different logos solve a problem where the same dominant word appears in both marks.
• Mistake: Ignoring phonetic similarity because the spelling differs. Oral use can drive confusion findings.
• Mistake: Treating Nice class differences as decisive. UANIPIO also considers relatedness in real trade conditions.
• Mistake: Underestimating well-known marks on dissimilar goods.
• Mistake: Filing without reviewing likely transliterations and translations of the mark in Ukrainian.

Key takeaway: Article 6(3) applies a global likelihood-of-confusion analysis in which visual, phonetic, conceptual, and goods-relatedness factors interact. In Ukraine, the dominant element — usually the word component — often controls the outcome, so clearance should focus first on what consumers will say, remember, and associate.