Does incorporating an element of a well-known mark lead to refusal in Ukraine?

Not automatically. The Appeal Chamber compares the overall impression phonetically, visually and conceptually. Here the added word shifted the conceptual centre of the sign and the opposition failed despite the shared element.

How strongly are ordinary dictionary words protected?

Less strongly. «Off» is a common English word with an abstract meaning that points to no particular kind of pest. The more generic the element, the harder it is to prevent others from using it in combination with other words.

What is the dominant element test in Ukrainian practice?

The Board identifies which element carries the conceptual weight of the sign. Here «Родент» is a direct reference to rodents and dominates, whereas «Офф» is abstract, so the signs convey different concepts.

Can goods in the same class be held dissimilar?

Yes. Even though both signs covered class 5 goods, the Board declined to treat them as similar once the conceptual focus of the opposed sign was found to be different.

Is reputation of the opponent's brand decisive?

It is relevant but not decisive. The opponent's international reputation did not overcome the finding that the signs as wholes convey different impressions and that consumers would not attribute the product to the opponent.

Rodent Off v OFF!: A Shared Word Is Not Enough in Ukraine

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S.C. Johnson, owner of the OFF! repellent brand sold in almost 200 countries, opposed the Ukrainian mark «Родент Офф» (Rodent Off). The argument looked straightforward: the same word, the same class. The Appeal Chamber dismissed the opposition in full.

The case in brief

Applicant: a Ukrainian manufacturer of biological preparations for agriculture, more than 25 years on the market;
Opponent: S.C. Johnson & Son, Inc. (USA), owner of a family of OFF! marks for insect and pest control products;
Ground of opposition: similarity through the shared element «OFF» and a risk of misleading consumers as to the producer;
Outcome: opposition dismissed in full, the Ukrainian registration stands;
Date: 10 June 2026, approved by order No. 219/2026 of 5 August 2026.

The opponent's argument

S.C. Johnson owns a series of Ukrainian registrations with the dominant verbal element OFF, covering pest control products in class 5. The opposed sign contains the same element in Cyrillic transliteration, for goods in the same class.

On its face the argument is sound. But the Appeal Chamber compares signs not element by element — it compares the overall impression, phonetically, visually and conceptually at the same time.

Why «Off» did not carry the day

Phonetically: yes, the element sounds the same in both signs. But «Родент Офф» has an additional syllable and the overall sound of a two-word sign differs from a single short word.

Visually: different scripts — Cyrillic in the opposed sign against Latin in part of the opponent's family — different letter case, and additional graphic elements.

Conceptually: this is where the case was decided.

The dominant element decided it

The word «off» taken alone is abstract and polysemous — to switch off, to remove, away. It points to no particular kind of pest. «Родент», by contrast, is a direct reference to rodents.

That shifts the conceptual centre of the sign: the consumer reads it as a product against rodents, not as a member of the opponent's general repellent family. The Board therefore also declined to treat the class 5 goods as similar, even though both sit formally in the same class.

And the misleading argument?

The opponent also argued that consumers would assume the product came from S.C. Johnson. The Board rejected that too: the sign contains nothing pointing to the opponent as the source, and the overall impression does not create such an association.

Practical points

A shared word is not an automatic refusal. Where a sign incorporates an element of a well-known mark, the outcome turns on the impression created by the sign as a whole, not on the coincidence of one fragment.

Ordinary words enjoy narrower protection. «Off» is a common English word with an abstract meaning. The more generic and less original the element, the harder it is for its owner to prevent others from using it in combination.

The dominant element matters more than the coincidence. If the added word shifts the conceptual emphasis of the sign — as «Родент» does here — that is a real argument, even against a globally known opponent.

A related principle — formal similarity outweighed by real difference — decided the DEKSIL case, where the deciding factor was the similarity of the goods rather than the dominant element.

If a Ukrainian filing conflicts with your client's brand

We assess the real prospects of an opposition in Ukraine before it is filed, and handle proceedings before the Appeal Chamber on both sides. More on how we work with IP firms.

Ask about clearance in Ukraine

Send us the sign and the classes — we will tell you what the Ukrainian register shows and where the risks sit. Or write to info@patent.rv.ua.

Source: decision of the Appeal Chamber of the National Intellectual Property Authority of 10 June 2026, approved by UANIPIO order No. 219/2026 of 5 August 2026, on the opposition against registration of the trademark «Родент Офф» for class 5 goods.

Decisions of the Appeal Chamber are public documents, published among other things so that the practice can be studied. This note analyses the reasoning of the decision — the arguments raised and how the Board assessed them — not the procedural history of the case. It contains no assessment of the conduct of the parties or their representatives. Rivnepatent did not represent either party. This material is for information only and is not legal advice.

Author: Volodymyr Tarasiuk, Ukrainian patent and trademark attorney, Reg. No. 529

Source: Decision of the Fourth Board of Appeal of the EUIPO of 10 August 2026 in case R 1791/2025-4 (CRASH birds (fig.) / ANGRY BIRDS et al.), cancellation proceedings No C 66 530, EUTM No 18 950 941. The decision in the EUIPO eSearch Case Law database.