The office refused the pharmaceutical name «ДЕКСИЛ» (DEKSYL) because it was similar to four earlier marks in the same class 5. The applicant appealed — and the Appeal Chamber agreed that the signs were similar. The appeal still succeeded, for an entirely different reason.

The case in brief

• Applicant: an individual connected with the manufacturer of the DEKSYL medicine;
• Ground of refusal: similarity to four registered marks — «ДЕКСЕЛЬ», «Дексал-Н», «ДІКСІЛ УЛЬТРА», «ДОКСЕЛ»;
• Outcome: appeal upheld in full, the mark registered — but for a narrowed specification;
• Date: 4 June 2026, approved by order No. 224/2026 of 7 August 2026.

Why it was refused at first

The application covered a broad list of class 5 goods — in practice the whole of pharmacy. Against such a specification the examiner found four earlier marks built on a similar root and refused registration.

What the Board confirmed — against the applicant

Unlike many appeals, here the Appeal Chamber confirmed similarity on all three limbs:

• Phonetically: the shared opening «DEKS-», or the close «DOKS-/DIKS-», is the most audible part of the word;
• Visually: the same script, predominantly capital letters, the same initial element;
• Conceptually: all of the names are invented words with no independent meaning which, by belonging to the pharmaceutical field, evoke the same associations with medicines.

So the first barrier — similarity of the signs — was not cleared. In most cases that is where the matter ends in a refusal. But there is a second barrier, and it is assessed separately.

The second limb: are the goods actually similar

Similarity of signs is only half the test. The other half is whether the goods covered by the two marks are similar — whether the consumer may take them to come from the same source.

Here the applicant made the decisive move: he narrowed the specification to a tight category — prescription analgesic and anti-inflammatory preparations for acute pain, including post-operative pain.

Comparing that narrow list with what the cited marks actually cover, the Board found:

• one earlier mark is registered broadly and even alongside cosmetics in class 3, with no confirmed medicinal-product status in the state register of medicines;
• another covers general pharmacy with no therapeutic specialisation;
• a third is combined with industrial and agrochemical goods in class 1 — it is a plant protection product, not a human medicine;
• the fourth covers general veterinary and human preparations with no narrow therapeutic group.

Why that worked

None of the four cited marks occupied the same narrow segment — prescription analgesics for acute pain. Two of them are in adjacent fields altogether. The Board therefore held that, despite the similarity of the signs, the goods were not similar and confusion was not likely.

A further argument that strengthened the position

The applicant also proved a real commercial connection with the name: he is a director and beneficial owner of the supplying company, and the medicine is actually supplied to the Ukrainian market. That evidence supported the good faith of the filing and the reality of use.

Practical points

Similarity of signs is not an automatic refusal. Even admitted similarity can be overcome where the goods do not compete on the same market. These are two separate tests, and losing the first does not decide the case.

A precise specification is stronger than a broad one. A filing covering «everything at once» collides with third-party marks most easily. A narrow, accurate list reduces the field of conflict and, if a conflict does arise, strengthens the argument.

A paper registration is weaker than a real market. If a cited mark is not in fact used, that works in the applicant's favour. The fact that a competitor registered something does not mean the segment is occupied.

If you are filing pharmaceutical marks in Ukraine

Specification drafting decides the outcome in this category more often than the sign itself. We advise on the scope to file for, run clearance searches and handle appeals before the Appeal Chamber. More on how we work with IP firms.

See also: Free Ukrainian trademark search · Madrid designations in Ukraine