A case from our practice

A Ukrainian irrigation company applied to register the word mark «ЕВКАЛІПТ Р» (EVKALIPT R, Ukrainian for «eucalyptus»). The examiner cited an earlier «ЭВКАЛИПТ Р» mark — the same name in Russian spelling, registered not to the company but to two individuals related to the applicant. For the office these are different owners. We cleared the objection with a letter of consent, and the mark was registered for all 203 items.

The case in brief

• Sign: the word mark «ЕВКАЛІПТ Р»; Ukrainian application No. m202423037 of 17 December 2024;
• Applicant: a Ukrainian company in automatic watering and drip irrigation systems;
• Specification: 203 items in Nice classes 9, 11, 35, 37 and 42: controllers and measuring instruments, software, irrigation equipment, sale, installation and servicing of irrigation systems, engineering;
• Outcome: certificate No. 391907 of 26 August 2026 for the full specification.

The objection: an earlier mark held by related persons

The preliminary conclusion of 18 May 2026 covered all class 9 goods, the class 37 service «installation and repair of irrigation devices» and eight class 42 services, including «water analysis», «engineering», «weather forecasting» and «cloud computing»: the sign «is similar to such an extent that it may be confused with, in particular associated with, the composite trademark «ЭВКАЛИПТ Р»». That is 77 of the 203 items. The grounds cited were article 6(3) of the Law of Ukraine on Protection of Rights to Marks for Goods and Services (the Law) and point 13 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 cited mark was registered back in 2018 (certificate No. 246697): the words «ЭВКАЛИПТ Р» with a figurative element. The class 37 and 42 services singled out by the examiner match its specification word for word, and in class 9 it covers measuring instruments, meteorological instruments and computer programs. Its owners are related to the applicant, but they are two individuals, while the applicant is a company. For the examiner they are different persons, so the objection was predictable.

Classes 11 and 35 and the remaining class 37 and 42 services were not objected to.

Our response

There was no point in arguing about similarity: the signs differ only in the language of the wording and the figurative element, and the goods and services are identical or related. The Law offers a separate route for this situation — article 6(6) of the Law: «The signs referred to in paragraphs two to five and seven of point 3 and paragraph two of point 4 of this article may be registered as trademarks if the owner of the certificate for the earlier registered trademark or the owner of another earlier acquired right consents to it and there is no possibility of misleading consumers».

We prepared a letter of consent from the owners of certificate No. 246697 to registration of the mark under application No. m202423037. Its content follows point 24 of chapter 2 of section II of the Rules: the consent «is drawn up in free form as a letter, statement or agreement, stating the name (full name) of the owner of the certificate for the earlier registered trademark or the owner of another earlier acquired right, the name (full name) of the person to whom consent is given, the trademark application number or an image of the trademark, and the goods and/or services for which such consent is given».

Two details we paid attention to:

• Consent from every owner. The certificate belongs to two persons, so both signed the letter of consent;
• A power of attorney from each owner. The letter of consent is a document of the owners of the cited mark, not of the applicant. So together with it we filed a power of attorney from each of them. The addresses in the letter of consent and the powers of attorney are those recorded in the register for the certificate.

We filed the letter of consent and both powers of attorney on 10 July 2026, within the two-month response period set by point 3 of chapter 8 of section VI of the Rules.

Outcome

• on 4 August 2026 the examiner concluded that the sign meets the conditions for protection for all goods and services applied for; the office decided to register the mark the same day;
• on 26 August 2026 the trademark was registered under certificate No. 391907; it runs until 17 December 2034 and can be renewed;
• the specification was not narrowed: class 9, the repair of irrigation devices and the eight class 42 services all stayed in the certificate.

Our view

The examiner's conclusion does not explain how the letter of consent was assessed; 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 two conditions of article 6(6). The owner's consent is only the first condition; the second is that there is no possibility of misleading consumers. In our view it was met here: the owners of the earlier mark are related to the applicant, so a buyer who links «ЕВКАЛІПТ Р» with the older «ЭВКАЛИПТ Р» will not be wrong about who stands behind the goods. This sets the case apart from the «MAAG PROFILE» case, where the objection was about misleading signs and the article 6(6) mechanism did not apply: there the letter of consent was evidence, here it was a direct legal basis.

On the alternative. Another route was to assign certificate No. 246697 to the applicant company: point 1 of chapter 8 of section VI of the Rules lists among the circumstances in favour of registration «information on the transfer to the applicant of the exclusive property rights to the cited trademark entered in the Register (International Register)». But that means a separate agreement, recordal in the register and a fee. The letter of consent resolved the matter within the response period.

Practical points

A «family» mark held by other persons is someone else's mark for the examiner. If a brand was once registered to a founder, a relative or another group company and is now filed by a new entity, expect a similarity objection. Check before filing: free Ukrainian trademark search.

The letter of consent can be prepared in advance. Its content is set by the Rules, and every owner of the earlier certificate must sign it. The sooner the owners agree, the easier it is to meet the two-month response period.

Think about the rights in the long run. Consent clears the objection, but two similar marks remain with different owners. If the brand belongs to one business, it may be worth bringing the rights together: recording assignments and licences in Ukraine.

Similarity to another person's mark is not always cleared by argument. When signs and goods almost coincide, the shortest route is an agreement with the owner. See Responding to a provisional refusal from the Ukrainian IP office.

Questions and answers

If your client faces a refusal in Ukraine

We prepare responses to preliminary conclusions and Madrid provisional refusals, including citations of earlier marks, 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 · Power of attorney for Ukrainian trademark filings