A case from our practice

The Ukrainian office found the name of an annual international event, «КОНГРЕС З БЕЗПЕКИ НА ТРАНСПОРТІ» (Transport Safety Congress), descriptive for organising congresses and conferences and misleading for the remaining services. We responded that it is the established proper name of a specific event — and the trademark was registered for all 53 services in class 41 without narrowing the list.

The case in brief

• Sign: the word mark «КОНГРЕС З БЕЗПЕКИ НА ТРАНСПОРТІ» (Transport Safety Congress); Ukrainian application No. m202203995 of 23 February 2022;
• Applicant: the organiser of annual professional events on road and transport safety;
• Specification: Nice class 41, 53 items: education, congresses, conferences, publishing, video;
• Outcome: certificate No. 386832 of 3 June 2026 for the full list.

The objection: descriptive and misleading

The preliminary conclusion of 16 January 2024 covered the whole list. It was still issued under the 1995 Rules on drafting, filing and examining applications for certificates for marks, which were in force at the time. It had two grounds:

• for «organising and conducting congresses» and «organising and conducting conferences», the sign lacks distinctive character and has not acquired it through use; it is also descriptive and «indicates the purpose and characteristics of the services». The examiner quoted a dictionary: «congress — a meeting, an assembly with broad representation, mainly of an international nature»;
• for the other services in class 41 the sign may mislead, as they do not match this definition.

The ground was article 6(2) of the Law of Ukraine on Protection of Rights to Marks for Goods and Services (the Law): signs that are devoid of distinctive character, describe the goods or services, or may mislead as to them cannot be registered.

Why the response came 19 months later

The ordinary term for a reasoned response is two months from receipt of the conclusion. But this conclusion arrived while the Law of Ukraine on Protection of the Interests of Persons in the Field of Intellectual Property during Martial Law Introduced in Connection with the Armed Aggression of the Russian Federation against Ukraine No. 2174-IX was in force. From the day martial law was introduced, it suspended «the running of time limits for actions related to the protection of intellectual property rights and of time limits relating to the procedures for acquiring these rights». So the term for the response did not run.

The Law of Ukraine No. 4362-IX of 16 April 2025 repealed Law No. 2174-IX with effect from 31 May 2025. Suspended time limits resumed «taking into account the time that had elapsed before their suspension, but for not less than seventy-five days». As the conclusion in this case arrived during the suspension, the full 75 days ran from 31 May 2025, that is, until 14 August 2025. That is the day our response reached the office.

Our response

The response was filed with eight annexes and rested on four arguments.

It is the name of a specific event, not a description of a service. Under the name «Transport Safety Congress» the applicant holds an annual international event that brings together experts, public authorities, companies and civil society organisations and adopts programmes and resolutions. The individual words «congress» and «transport safety» may be common, but the phrase as a whole has become the established proper name of this particular event.

The name has acquired distinctive character. In the response we stated that the applicant has worked in this field since 2013 and has used the name for about ten years. The annexes included pages of the organiser's website, the congress programmes and resolutions, videos, Facebook posts, Google search results and publications by third-party media and sector bodies, including on the 2nd International Transport Safety Congress in November 2020, that is, before the application was filed. Participants come from all regions of Ukraine and from abroad.

There is nothing misleading. The sign does not mislead as to the kind or purpose of the services: it identifies the organiser and the event, and the applicant does not use it for services that do not fit.

The same logic has already worked. Since 2021 the applicant has owned certificate No. 297156 for the word mark «ФОРУМ З БЕЗПЕКИ НА ТРАНСПОРТІ» (Transport Safety Forum) for services in class 41, including organising and conducting congresses and conferences. In this context «congress» and «forum» denote the same format of a large professional event. Refusing an analogous name of the same applicant would be inconsistent.

Outcome

• on 13 April 2026 the office concluded that the sign meets the conditions for protection for all services applied for;
• the specification was not narrowed: all 53 items in class 41 remained, including congresses and conferences;
• on 3 June 2026 the trademark was registered under certificate No. 386832; it runs until 23 February 2032 and can be renewed.

The conclusion was already issued under the Rules approved by Order of the Ministry of Economy of Ukraine No. 19889 of 6 August 2024 (the Rules). It does not say which arguments persuaded the examiner; it only records that the sign meets the conditions for protection.

Our view: why it worked

The decision gives no direct answer, so what follows is our assessment.

In our view the weightiest point was the existing certificate for «Transport Safety Forum». The word «forum» describes the format of an event just as «congress» does. Accepting one name for the same services and refusing the other without explaining the difference is hard to justify. Similarly, in the HRV case the applicants' own registered word mark became the main argument.

Second came the evidence that the name works as the name of one specific event rather than as a description of any conference. The Law of Ukraine on Protection of Rights to Marks for Goods and Services allows registration of a sign lacking distinctive character if it acquired distinctiveness through use before the filing date (last paragraph of article 6(2)). Here use began before the application was filed in 2022, and it was confirmed by third-party sources, not only the organiser's website. By contrast, in the «Smetana do borshchu» case evidence of use did not help because it showed a different sign from the one applied for.

Practical points

Register event names while they are in use. A series of names from one organiser («forum», «congress») strengthens each subsequent application.

Collect evidence dated before the filing date. Programmes, resolutions, videos and publications by third-party media and partners carry more weight than pages of the applicant's own website. The Rules list the factors considered: public awareness, and the duration, extent and geography of use and promotion (point 8 of chapter 2 of section II).

The wartime suspension is over. The additional 75 days expired on 14 August 2025. Ukraine is back to two months from receipt to answer a preliminary conclusion, with the possibility of extension and restoration (point 3 of chapter 8 of section VI of the Rules). Responding to a provisional refusal from the Ukrainian IP office.

Use a power of attorney without an expiry date. After the decision the office reminded us that the power of attorney on file had been valid until 1 April 2024. Without a new one, documents are accepted only if signed by the applicant, and a fee paid by the representative is not credited. The new power of attorney was issued «valid until revoked». Power of attorney for Ukrainian trademark filings.

Questions and answers

If your client faces a refusal in Ukraine

We prepare responses to preliminary conclusions and Madrid provisional refusals, including objections of descriptiveness and lack of distinctive character, gather evidence of acquired distinctiveness, and check how Ukrainian time limits apply to older office actions. More on how we work with IP firms.

See also: HRV: a monogram the examiner read as «RV» · Missed a deadline in Ukraine