A case from our practice

A Lithuanian company behind a finance app designated Ukraine for its figurative mark under the Madrid system. UANIPIO refused protection for all class 25 clothing, citing two marks of the French AZ FACTORY. The case reached us four days before the response deadline. We filed one day before it expired — and four days later UANIPIO granted protection for all goods and services.

The case in brief

• Mark: figurative: a black round silhouette of a mascot character with large white eyes; international registration No. 1898474 of 16 September 2025 designating Ukraine;
• Holder: a Lithuanian company behind a finance app; basic mark — an EU trade mark;
• Specification: Nice classes 9, 25, 35 and 36: software, clothing, business and financial services;
• Objection: partial provisional refusal for all class 25 goods on relative grounds;
• Outcome: on 3 November 2026 protection in Ukraine was granted for all goods and services.

The provisional refusal: «two dots in a circle»

On 30 July 2026 UANIPIO sent WIPO a partial provisional refusal (published in WIPO Gazette No. 2026/32 of 20 August 2026). For all class 25 goods — clothing, polo shirts, t-shirts, sweatshirts, hoodies, caps — the examiner found the mark confusingly similar to two marks of AZ FACTORY (Paris): international registrations No. 1581591 of 18 March 2021 and No. 1588032 of 14 June 2021. The ground was paragraph two of article 6(3) of the Law of Ukraine on Protection of Rights to Marks for Goods and Services (the Law): signs similar to marks «earlier registered or applied for registration in Ukraine in the name of another person for the same or related goods and services» are not registered.

Classes 9, 35 and 36 were not objected to.

The holder has three months from dispatch of the notification to respond (paragraph three of point 5 of chapter 4 of section X of the Rules approved by Order of the Ministry of Economy of Ukraine No. 19889 of 6 August 2024, the Rules). Foreign holders act before UANIPIO only through a Ukrainian patent attorney. The holder reached us through fellow lawyers on 27 October 2026, four days before the deadline.

Our response

All three marks are purely figurative, with no words. So only the images and their meaning could be compared. What they share is a general idea — «a circle with two dots». We showed that the similarity ends there and backed the comparison with facts the examiner could not see on their own.

1. Comparison under the Rules' criteria. Point 18 of chapter 8 of section VI of the Rules lists the features that matter for figurative signs: «external form and outline, presence or absence of symmetry, meaning, type and character of the images (naturalistic, stylised, caricature), combination of colours», adding that «the decisive factor is the first visual perception (overall impression)». The marks differ on each:

• form and outline: the holder's circle is solid black, a dark disc silhouette; the cited marks are a thin outline with an empty white field;
• dominant elements: the holder's mark is dominated by a large white dome shape, while its two dots are tiny and secondary; the cited marks have no inner shape and are dominated by two large black spots;
• colours: the holder's mark is mostly black (about 70% of the area), white on black; the cited marks are mostly white, black on white;
• meaning: the holder's mark depicts the brand's mascot character with big white eyes; the cited marks are a geometric composition that creates no such image.

We also noted that a circle is a simple geometric figure which, under point 3 of chapter 2 of section II of the Rules, «usually lacks distinctiveness». Protection covers the specific graphic execution, not the idea.

2. A mascot in use since 2020. The holder's mark is not an abstraction but the brand's official character, used at least since November 2020. We filed the holder's brand kit describing the character as the «mascot and hero of the brand», a 2021 article on the company website and a 2020 trade publication on the app launch showing the character.

3. What other offices decided. The AZ FACTORY marks are protected in Singapore and Israel, among others, where offices also examine relative grounds ex officio. Yet Singapore granted the holder's mark protection for all goods and services, including clothing, and Israel objected only to the wording of class 9 goods. We filed both offices' statements. They do not bind UANIPIO, but they show the marks are not perceived as similar.

4. Coexistence in the EU. The basic mark is an EU trade mark applied for on 2 November 2020 — earlier than AZ FACTORY's French applications (9 November 2020). It was registered on 19 February 2021, and since 2021 both owners have held their marks for clothing in the EU without challenging each other.

5. The cited marks are not on the market. According to a Richemont press release of 22 May 2024, AZ FACTORY was moving from commercial activity to an education programme for young designers. The azfactory.com online store was not working at the date of the response. So there was no real risk of buyers confusing clothing.

All foreign-language documents were filed with a translation of the key information. We filed the response with six annexes and the holder's power of attorney on 30 October 2026, within the deadline.

Outcome

• on 3 November 2026, four days after the response was filed, the examiner concluded that the mark meets the conditions for protection for all goods and services for which protection in Ukraine was requested;
• the same day UANIPIO sent WIPO a statement of grant of protection following a provisional refusal (Rule 18ter(2)(i));
• the specification was not limited: all class 25 goods — «Clothing; polo shirts; printed t-shirts; sweat shirts; hooded sweatshirts; sports caps and hats» — remained.

Our view

The examiner's conclusion does not explain which arguments persuaded; it only records that the mark meets the conditions for protection. The decision gives no direct answer, so what follows is our assessment.

The point-by-point comparison carried the case. The refusal rested on an overall impression of «a circle with two dots». The response broke that impression down into the features the Rules themselves treat as relevant and showed a difference on each. For figurative marks this is the strongest argument.

Outside facts carry weight. Decisions of other offices, EU coexistence and the cited owner's exit from the market are things the examiner does not check ex officio. But they answer the key question — is there a real risk of confusion. For an international registration such evidence is relatively easy to gather: it is public in the WIPO and EUIPO databases.

The deadline runs quietly. Three months count from UANIPIO's dispatch of the notification, not from when the holder learns of it. The notification travels through WIPO and the holder's local counsel, so the real time to respond is much shorter.

Practical points

Received a Ukrainian provisional refusal? Act early. A response can be prepared in days, but the power of attorney, translations and evidence from the holder take time. See Responding to a provisional refusal from the Ukrainian IP office and Designating Ukraine under the Madrid system.

Use evidence from every jurisdiction. Decisions of offices that have already examined the mark and the status of the cited marks elsewhere are ready-made arguments for Ukraine.

Power of attorney: current details, tied to the Register. If the holder's address has changed but the International Register still shows the old one, state both in the power of attorney — and record the change with WIPO so the issue does not recur in other countries. See Power of attorney for Ukrainian trademark filings.

Questions and answers

If your client faces a refusal in Ukraine

We prepare responses to Madrid provisional refusals and national preliminary conclusions, including on short notice, and put together the power of attorney, translations and evidence in the form UANIPIO accepts. More on how we work with IP firms.

See also: Responding to a provisional refusal from the Ukrainian IP office · Designating Ukraine under the Madrid system