A case from our practice

A Ukrainian company applied to register the figurative mark «CZECH SOKIL» for equipment, vehicles and transport services. The examiner found online a Czech company, Fly System, that uses an identical sign, and concluded that consumers would be misled as to the producer. We filed the brand owner's letter of consent together with its power of attorney — and the mark was registered for all 1,328 items.

The case in brief

• Sign: a figurative mark: a falcon and the words «CZECH SOKIL»; Ukrainian application No. m202417260 of 16 September 2024;
• Applicant: a Ukrainian company;
• Specification: 1,328 items in Nice classes 9, 12 and 39: instruments and apparatus, vehicles and their parts, transport, storage and delivery;
• Outcome: certificate No. 389496 of 15 July 2026 for the full specification.

The objection: a Czech company's sign

The preliminary conclusion of 29 April 2026 covered all goods in classes 9 and 12 and all services in class 39: the sign «is such that may mislead as to the goods of classes 9, 12 and the services of class 39 (their belonging to another producer/service provider)». The grounds cited were the fifth paragraph of article 5(2) of the Law of Ukraine on Protection of Rights to Marks for Goods and Services (the Law) and point 2 of chapter 2 of section II of the Rules approved by Order of the Ministry of Economy of Ukraine No. 19889 of 6 August 2024 (the Rules).

The reasoning: «czech sokil» «is a Czech brand of intelligent UAVs and electronic warfare devices», and «the company Fly System conducts its activity using the identical figurative sign «czech sokil»» — a Czech company offering drones, unmanned aerial vehicles and electronic warfare equipment. As sources, the examiner cited a specialist forum and a news item about a regional council buying anti-drone guns. Conclusion: goods and services bearing the sign «may give rise in the consumer's mind to associations with the activity of the above company which do not in fact correspond to reality».

The examiner raised no other grounds for refusal.

Our response

There was no need to dispute that the sign is linked to Fly System. The real question was whether those associations correspond to reality — and only the brand owner can answer it.

Point 3 of chapter 8 of section VI of the Rules expressly provides that a preliminary conclusion «may contain a request for additional materials in favour of registration of the trademark», including «documents confirming the right to use individual elements in the trademark». That is the document we filed: a letter of consent from Fly system company a.s., which stated in it that it owns the trademark «Czech Sokil» registered with the European Union Intellectual Property Office (EUIPO) under No. 019101010.

What the letter of consent contained:

• Parties and subject. The full name of the brand owner, the full name and address of the applicant, application No. m202417260, and permission to register the trademark «Czech Sokil» for the goods and services under that application;
• Undertaking not to appeal. The company separately undertook not to file an appeal with the Appeal Chamber to challenge the registration decision;
• Two languages. Ukrainian and English text, signed by the director and sealed by the company.

Together with the letter of consent we filed a power of attorney from Fly system company a.s. to our patent attorneys. It expressly grants the right to «certify documents, copies of documents, including copies of mandates / powers of attorney». This matters because a letter of consent is another company's document, not the applicant's. Point 7 of chapter 1 of section IV of the Rules provides: «A copy of the power of attorney may be certified by the representative if the right to certify copies of documents is stated in the power of attorney». The office explained this requirement in the «MAAG PROFILE» case, so here we filed both documents in one package from the start.

We filed the letter of consent and the power of attorney on 10 June 2026, within the two-month response term set by point 3 of chapter 8 of section VI of the Rules.

Outcome

• on 25 June 2026, 15 days after the response was filed, the office concluded that the sign meets the conditions for protection for all goods and services applied for; on the same day UANIPIO decided to register the trademark for all goods and services listed;
• on 15 July 2026 the trademark was registered under certificate No. 389496; it runs until 16 September 2034 and can be renewed;
• the specification was not narrowed: all 871 items in class 9, 324 items in class 12 and 133 services in class 39 remain in the certificate.

Our view

The office's conclusion does not explain how it assessed the letter of consent; it only records that the sign meets the conditions for protection. The decision gives no direct answer, so what follows is our assessment.

On the provision. The preliminary conclusion relied on the fifth paragraph of article 5(2) of the Law. But article 5 of the Law sets the conditions for protection, while the grounds for refusal, including misleading signs, are in article 6(2). In substance («their belonging to another producer/service provider») the objection concerned the sixth paragraph of article 6(2) of the Law: signs that «may mislead as to the person who produces the goods or provides the services» cannot be protected. Point 11 of chapter 2 of section II of the Rules adds that a sign is such if it «contains elements indicating a certain person which may cause consumers to associate it with a producer of goods or provider of services, which does not in fact correspond to reality». The inaccurate reference made no difference to the outcome: either way the question was whether the associations are true.

On consent. The Law provides a separate consent mechanism only for signs referred to in article 6(3) and 6(4) — similarity to other people's trademarks, commercial names known in Ukraine and the like (article 6(6) of the Law). That was the situation in the «EVKALIPT R» case. The mechanism does not extend to misleading signs. So the letter of consent here is not «permission» but evidence: if the brand owner itself agrees to registration in the applicant's name, the associations with it correspond to reality.

On the undertaking not to appeal. Neither the Law nor the Rules require such a clause in a letter of consent. In our view, it makes the brand owner's position final and unambiguous. Whether it affected the speed of the review cannot be seen from the documents.

Practical points

A foreign brand in Ukraine starts with an agreement with its owner. The examiner searches the sign not only in the register but also online, and finds producers and sellers. If your client distributes someone else's brand, arrange consent or a licence before filing.

File the letter of consent and the power of attorney together. The power of attorney from the consenting company should expressly name the representative's right to certify documents and copies of documents. Then originals do not have to be sent from abroad. See Power of attorney for Ukrainian trademark filings.

Allow time for documents from abroad. The two-month response term runs out fast when the signatory is in another country. Start preparing the letter of consent on the day the preliminary conclusion arrives: Responding to a provisional refusal from the Ukrainian IP office.

Check the market, not only the register. A register search will not show that a company abroad already uses an identical sign. Look at how the name is used in the trade as well.

Questions and answers

If your client faces a refusal in Ukraine

We prepare responses to preliminary conclusions and Madrid provisional refusals, including objections that a sign may mislead as to the producer, and put together letters of consent and powers of attorney in the form the Ukrainian office accepts. More on how we work with IP firms.

See also: MAAG PROFILE: filing a letter of consent the Ukrainian office will accept · EVKALIPT R: letter of consent when the earlier mark is held by related individuals