A case from our practice

Two individuals applied to register the word mark «СТОГРАД ДЕВЕЛОПМЕНТ» (STOGRAD DEVELOPMENT) for real estate, construction and business services. The examiner cited three earlier «СТОГРАД» and «STOGRAD» marks held by two different owners. One of them was partly owned by one of the applicants — and consent was still needed. We obtained two letters of consent, and the mark was registered for all 699 services.

The case in brief

• Sign: the word mark «СТОГРАД ДЕВЕЛОПМЕНТ»; Ukrainian application No. m202400170 of 5 January 2024;
• Applicants: two individuals;
• Specification: 699 services in Nice classes 35, 36, 37, 42 and 45: business management and advertising, financial and real estate services, construction and repair, design, legal services;
• Objection: similarity, for all class 36 and 37 services;
• Outcome: certificate No. 380400 of 4 March 2026 for the full specification.

The objection: three «СТОГРАД» marks

The preliminary conclusion of 22 July 2025 found the sign, for all class 36 and 37 services, «similar to such an extent that it may be confused with, in particular associated with» three earlier registered marks. 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 composite mark «СТОГРАД», certificate No. 188715; owners: two individuals, one of whom is also an applicant in our case;
• the word mark «СТОГРАД», certificate No. 305315; owner: RIVNEZHYTLOBUDINVEST LLC (ТОВ «РІВНЕЖИТЛОБУДІНВЕСТ»);
• the word mark «STOGRAD», certificate No. 305316; owner: RIVNEZHYTLOBUDINVEST LLC.

All three cover class 36 and 37 services. The examiner disregarded the second word of the sign: «The presence in the sign of the indication «ДЕВЕЛОПМЕНТ» does not give it sufficient distinctiveness, but only indicates a certain field of activity». The conclusion gave the dictionary meaning: «the field of business, real estate and construction management».

There were no objections to the class 35, 42 and 45 services.

Our response

There was no point in arguing about similarity: «СТОГРАД» in the sign coincides fully with the cited marks, and the services are the same. But all three marks belonged to people and a company the applicants could reach an agreement with.

Article 6(6) of the Law allows a sign similar to another person's mark to be registered «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». So we prepared two letters of consent:

• from RIVNEZHYTLOBUDINVEST LLC, for certificates No. 305315 and No. 305316;
• from both co-owners of certificate No. 188715, including the one who is an applicant.

Each letter contains what point 24 of chapter 2 of section II of the Rules requires: the owners of the certificates, the certificate and application numbers, both applicants, our application number and the class 36 and 37 services for which consent is given. The owners also confirmed that «both marks can coexist in Ukraine» and described the consent as irrevocable and given for an unlimited period.

We also filed powers of attorney from RIVNEZHYTLOBUDINVEST LLC and from the other co-owner of certificate No. 188715 in favour of our patent attorneys. They expressly include the right «to certify documents, to certify copies of documents, including powers of attorney». Why this matters when consent comes from someone other than the applicant is explained in the «MAAG PROFILE» case.

We filed the letters of consent on 28 August 2025, within the two-month response period set by point 3 of chapter 8 of section VI of the Rules.

Outcome

• on 6 February 2026 the examiner concluded that the sign meets the conditions for protection for all services applied for; the office decided to register the mark the same day;
• on 4 March 2026 the trademark was registered under certificate No. 380400 in the names of both applicants; it runs until 5 January 2034 and can be renewed;
• the specification was not narrowed: 173 services in class 35, 110 in class 36, 159 in class 37, 161 in class 42 and 96 in class 45 all stayed in the certificate.

Our view

The examiner's conclusion does not explain how the letters of consent were 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 «one's own» mark. Article 6(3) of the Law refers to marks registered «in the name of another person». Certificate No. 188715 did not belong to one of the applicants alone but jointly with another individual, and the new application was filed by two applicants in a different line-up. The owners of the old certificate and the applicants were different groups of persons, and the examiner cited that certificate like any third-party mark. Consent from both co-owners removed the obstacle.

On the status of certificate No. 188715. According to the UANIPIO register, this certificate has now lapsed with effect from 28 May 2023. Even so, it appears among the citations in the preliminary conclusion of 22 July 2025. The conclusion does not explain why the examiner took it into account. The co-owners' consent settled the point either way.

On the descriptive element. The word «development» did not move the sign away from «СТОГРАД»: the examiner treated it as the name of a field of activity. This is the usual approach: adding a word that describes the services to someone else's name does not remove similarity.

Practical points

The line-up of owners matters. If you once registered a mark together with a partner and now file a new application in a different line-up, the examiner may cite the old mark. Agree on consent with all co-owners in advance. For bringing the rights together, see recording assignments and licences in Ukraine.

A descriptive word does not cure similarity. «Development», «group», «plus» and similar words do not distinguish a sign from another person's mark. Check before filing: free Ukrainian trademark search.

Several owners, several consents. Here we needed consent from a company and from two individuals. A similar case with a certificate held by two owners is EVKALIPT R. See also 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