HEADBAG

The Ukrainian brand HEADBAG started with hats and bags in Rivne and since 2022 has made clothing for the military. Head Technology GmbH, owner of the HEAD marks, challenged its registration. The Appeal Chamber found the signs similar, yet the mark survived: the parties agreed for which goods it should be registered.

Decision of the Appeal Chamber of UANIPIO of 27 August 2026, approved by Order No. 351/2026 of 30 October 2026. The UANIPIO decision of 17 October 2025 to register «HEADBAG» under application No. m202313078 was set aside; the mark is to be registered for a reduced list of goods in classes 9 and 25.

The parties and the marks

• Applicant — an individual running a family business in Rivne; the word sign «HEADBAG» was filed on 24 July 2023 for goods in classes 9 and 25;
• Brand history, as stated by the applicant: hats, panama hats and bags since 2019, hence the name — «head» plus «bag»; from 2022 production switched to clothing for the military; own shops, a website and social media;
• Appellant — Head Technology GmbH (Austria), a maker of sports goods for skiing, tennis, swimming and other sports; HEAD derives from the founder Howard Head;
• Cited marks — word marks HEAD under international registrations No. 584785 (protected in Ukraine since 19 March 1998; among other goods, tennis and ski clothing, sports clothes and shoes), No. 1156590 (woolly hats, hats, peaked caps, headbands) and No. 737651 (among other goods, glasses and helmets in class 9).

How the case reached the Appeal Chamber

On 9 October 2023 Head filed a reasoned opposition against the application with UANIPIO (article 10(8) of the Law of Ukraine on Protection of Rights to Marks for Goods and Services, the Law). On 30 June 2025 the examiner issued a preliminary conclusion on a possible refusal for part of the goods. The applicant responded on 11 August 2025 and narrowed the class 9 and 25 lists.

The examiner treated the opposition, given the narrowed list, as not taken into account in full, and on 17 October 2025 UANIPIO decided to register the mark for all remaining goods.

Head appealed to the Appeal Chamber. That right belongs to the party that opposed during examination: under the second paragraph of article 15(1) of the Law it may appeal within two months of receiving a copy of the decision.

The arguments

Head argued that HEAD is known in Ukraine — the company had started building a plant in Vinnytsia and sponsored the Swimming Federation of Ukraine. The common element HEAD is identical and dominant, and BAG adds no new meaning; a Google search for «HEADBAG», according to the appellant, shows Head's own bags page first. At the same time Head stated that it respects Ukrainian manufacturers of military clothing and was prepared not to object to HEADBAG for such clothing. It asked for refusal for tennis, pickleball and paddle clothing, footwear and headgear, sports casual clothing and footwear, ski clothing and ski boots.

The applicant argued that the signs differ in length, syllables and sound; HEADBAG is perceived as one word; the average consumer need not know the history of HEAD; many class 25 marks contain «head», so the element is weak. He relied on more than 45,000 website orders and 112,000 Instagram followers, and narrowed the list again: military clothing and footwear and, among other items, «clothing, footwear and headgear, except those intended for skiing, tennis, pickleball or paddle» (our translation).

What the Board established

The Board applied the second paragraph of article 6(3) of the Law: a sign may not be registered if it is identical or similar to the point of confusion, including association, with a mark earlier registered or applied for in Ukraine in the name of another person for identical or related goods and services. Under point 15 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), a sign is similar if it is associated with the mark as a whole despite individual differences in its elements.

• Visually — the same standard font, Latin script, capital letters; BAG is perceived as part of a single sign and does not remove the similarity;
• Aurally — the common element HEAD [hed] sounds identical and comes first;
• Conceptually — HEAD («head») is an independently distinctive element; BAG («bag, sack») does not neutralise its meaning.

In class 9 the applicant had already removed the goods overlapping with registration No. 737651. The class 25 goods — even in the applicant's narrowed list — were found identical or related to those of registrations No. 584785 and 1156590, given purpose, consumers and the impression of a single source (point 17 of chapter 2 of section II of the Rules). The Board added that HEAD at the start of the sign may evoke the appellant's company name, known as a sports goods maker, and mislead consumers as to the producer.

Conclusion: HEADBAG and the HEAD marks «are similar to the point of confusion» (our translation).

The settlement

On 3 June 2026 the applicant and the appellant informed the Appeal Chamber in a joint letter that they had agreed the list of goods for which registration was acceptable, and the appellant amended its request: set aside the UANIPIO decision and register the mark for that list. Referring to Article 6^quinquies of the Paris Convention, which requires all factual circumstances to be taken into account, the Board upheld the appeal in that form.

• Class 9 — bulletproof clothing and vests, body armour, clothing and footwear for protection against fire and accidents, protective suits for pilots, protective masks (not for medical use), knee pads for workers, life jackets;
• Class 25 — work clothing; dresses, except sports dresses and sports casual wear; aprons; bath and work robes; military clothing, footwear and headgear (with a list of specific items).

The applicant's broad wording «clothing, footwear and headgear, except those intended for skiing, tennis…» did not make it into the agreed list.

Our view: a niche works better than an exclusion

What follows is our assessment; the decision does not state it in these terms.

The Board found similarity and relatedness even for the applicant's narrowed list, which already excluded skiing and tennis. «All clothing except sports clothing» did not cure the conflict. What saved the registration was not a difference between the signs but a split by consumer group: military clothing, work clothing and protective equipment — a segment the appellant itself did not object to.

For an applicant who had built the brand for years, this is better than risking a refusal for most of class 25. The decision does not assess the weak-element and prior-use arguments separately, so it cannot tell whether they would have changed anything without the settlement.

Outcome

• the appeal of Head was upheld and the UANIPIO decision of 17 October 2025 to register was set aside;
• HEADBAG is to be registered for the agreed reduced list of goods in classes 9 and 25, subject to payment of the publication fee and the state duty for issuing the certificate;
• the decision took effect on approval by order, 30 October 2026, and may be challenged in court within two months of receipt;
• according to the decision, the appeal fee is to be refunded as provided by law.

Practical points

A known word at the start of a sign is a risk even with a second word added. HEAD plus BAG was held similar to HEAD. Clear the name before filing — free Ukrainian trademark search.

An exclusion does not replace a real niche. The split worked when the list was reduced to goods for a different group of consumers.

Opposing during examination opens the way to the Appeal Chamber. Without it the earlier right holder could not have appealed the registration in this way. Deadlines and procedure — trademark oppositions in Ukraine.

A settlement is possible at any stage. Here the parties agreed the list while the appeal was pending, and the Board registered the mark for exactly that list. Compare w walky, where a well-known store name did not stop a registration, and VOSS v Marlboro, where Philip Morris's appeal was rejected.

If your client's mark conflicts with a Ukrainian brand

We file and answer oppositions and appeals before the Appeal Chamber in Ukraine, and help negotiate specifications that both sides can live with.

Questions we are asked about this case

Does adding a second word to an earlier mark avoid similarity in Ukraine?

Not necessarily. In the HEADBAG case the Board of the Appeal Chamber held that the added element «BAG» did not remove the similarity with HEAD: the common element comes first, sounds identical and keeps its meaning. Under point 15 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, a sign is similar to the point of confusion if it is associated with the mark as a whole despite individual differences in its elements.

Who may appeal a decision to register a third party's mark to the Appeal Chamber in Ukraine?

Under the second paragraph of article 15(1) of the Law of Ukraine on Protection of Rights to Marks for Goods and Services, a person who filed an opposition against the application under article 10(8) of that Law, within two months of receiving a copy of the decision. The opposition during examination is therefore a precondition.

Can the parties settle once the case is before the Appeal Chamber?

Yes. In this case the applicant and the appellant informed the Appeal Chamber by a joint letter of an agreed specification, the appellant amended its request accordingly, and the Board decided to register the mark for that agreed specification.

Does long and intensive use of the brand help the applicant?

The applicant relied on use since 2019, sales, a website and social media, and argued acquired distinctiveness. The Board nevertheless found the sign similar to HEAD for identical or related goods. The decision contains no separate assessment of that evidence, so it gives no direct answer.

See also: w walky: a store name is not yet a brand on goods · VOSS v Marlboro