tochka

The owner of the Ukrainian women's portal tochka.net tried to register the site's name as a trademark for advertising and marketing services. Two earlier Ukrainian marks «ТОЧКА» stood in the way. Neither the rights to the website nor a consent letter from its former owner helped: the Appeal Chamber upheld the refusal.

Decision of the Appeal Chamber of UANIPIO of 8 July 2026, approved by Order No. 341/2026 of 30 October 2026. The appeal of SUNLIGHT MEDIA LLC (ТОВ «САНЛАЙТ МЕДИА») was rejected in full, and the decision of 30 December 2021 refusing registration of «tochka» under application No. m201928483 remains in force.

The parties and the marks

• Applicant — SUNLIGHT MEDIA LLC (ТОВ «САНЛАЙТ МЕДИА», Ukraine); the word sign «tochka» in lower-case Latin letters was filed on 17 October 2019 for services in class 35;
• The website — tochka.net, a women's portal; according to the applicant, it has held the domain since 2019, and before that the website belonged to DIGITAL VENTURES LLC (ТОВ «ДІДЖІТАЛ ВЕНЧЕЗ»), which transferred it to the applicant;
• Cited mark «ТОЧКА» — a word mark in Cyrillic, certificate No. 63624 of 15 June 2006, owner Trading House Bondarev LLC (ТОВ «Торговий дім «Бондарев»), goods in class 33 and services in classes 35 and 43;
• Cited mark «ТОЧКА.» — a composite mark, certificate No. 192730 of 10 November 2014, services in class 35; the decision names Ariadna LLC (ТОВ «Аріадна») as the owner, while the register currently shows EOS ESTATE LLC (ТОВ «ЕОС ЕСТЕЙТ»).

How the case reached the Appeal Chamber

On 5 October 2021 the examiner notified the applicant of a possible refusal, and on 13 October 2021 the applicant filed a reasoned response. Taking it into account, the examiner concluded that «tochka» was similar to the word mark «ТОЧКА» for services within the general headings «advertising», «market research» and «sales promotion», and to the composite mark «ТОЧКА.» for all class 35 services applied for. The ground was the second paragraph of article 6(3) of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services” (the Law). On 30 December 2021 UANIPIO refused registration.

The applicant appealed to the Appeal Chamber under the first paragraph of article 15(1) of the Law, which allows an applicant to challenge a decision on its application in court or before the Appeal Chamber within two months of receiving it. During the appeal the applicant narrowed the list to services linked to advertising and websites, among them online advertising on a computer network, publication of publicity texts, targeted marketing, marketing research and website traffic optimisation.

The applicant's arguments

• Sound — the letters «ch» may be pronounced as [ʧ] or as [k] plus [ʃ], so the signs sound different;
• Script — the applied-for sign is in Latin letters, the cited marks in Cyrillic;
• Services — the applicant did not consider the class 35 lists related;
• Coexistence — mark No. 192730 had been registered after the identical mark No. 63624;
• Reputation of the site — in the applicant's view, tochka.net is better known to the public than the cited marks; its audience in April–June 2022 was 2,388,000 unique users;
• Documents — a letter of 11 October 2021 from DIGITAL VENTURES LLC on the transfer of the website and its consent to the use of the applied-for sign, an agreement of 18 March 2019 assigning the exclusive property rights in the website with an acceptance certificate, printouts of the site, and copies of letters in which the applicant asked the owners of the cited marks to permit the registration.

What the Board established

The Board assessed the application under the law in force on its filing date and applied the Rules approved by Order of the State Patent Office of Ukraine No. 116 of 28 July 1995 (the 1995 Rules; no longer in force). Under point 4.3.2.4 of those Rules, a sign is similar to the point of confusion with another sign «if it is associated with it as a whole despite individual differences in its elements» (our translation).

• Aurally — similar: «tochka» is a Latin transliteration of «точка», and the common word element sounds identical;
• Visually — not similar: different alphabets (Latin and Cyrillic), lower-case and capital letters, and a figurative element in mark No. 192730;
• Conceptually — similar: all signs carry the same idea of «точка» (a dot, a point).

The Board concluded that the applied-for sign is similar to the cited marks, «as it is associated with them as a whole despite individual differences in the elements» (our translation). It found the class 35 services of the applicant and of the cited marks homogeneous (related), given their purpose, consumers and the likely impression of a single provider (point 4.3.2.5 of the 1995 Rules). The refusal under article 6(3) of the Law was therefore held lawful and reasoned.

For comparison, the same similarity test appears in the current Rules approved by Order of the Ministry of Economy of Ukraine No. 19889 of 6 August 2024 (point 15 of chapter 2 of section II).

The website, the agreement and the consent: why they did not help

The Board listed the applicant's website documents and held that they «do not rebut the similarity of the applied-for sign «tochka» under application No. m201928483 to the cited marks under Ukrainian certificates No. 63624 and No. 192730» (our translation).

A key detail: the consent to use the sign came from DIGITAL VENTURES LLC, the former owner of the website, not from the owners of the cited marks. The applicant filed copies of its letters to the owners of the «ТОЧКА» marks asking for permission, but the decision does not mention any consent received from them. The Board did not separately assess the arguments about the site's reputation or the coexistence of the two «ТОЧКА» marks.

Our view: buying a Ukrainian domain is not buying a trademark

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

A domain and a website are assets that can be bought together with their audience. They do not, however, give an exclusive right to the name for advertising and marketing services, and where an earlier Ukrainian mark exists, buying the domain does not solve the problem. The current Law addresses such situations in article 6(6) of the Law: a similar sign may be registered «if the owner of the certificate for the earlier registered mark or the owner of another earlier acquired right consents to it and there is no possibility of misleading consumers» (our translation). In other words, what counts is the consent of the earlier mark owner. Whether such a letter could have changed the outcome for a 2019 application, assessed under the law on its filing date, the decision does not say.

For clients acquiring Ukrainian online businesses this means the trademark position should be cleared as part of due diligence, alongside the domain transfer. A Latin transliteration of a Ukrainian word is treated as the same word when it sounds and means the same; the different alphabet helped here only in the visual comparison.

Outcome

• the appeal of SUNLIGHT MEDIA LLC was rejected in full;
• the decision of 30 December 2021 refusing registration of «tochka» under application No. m201928483 remains in force;
• the decision took effect on approval by order, 30 October 2026, and may be challenged in court within two months of receipt.

Practical points

Register first, domain second. Before buying a Ukrainian website or domain for a brand, search the name against Ukrainian marks for the relevant goods and services — free Ukrainian trademark search.

Transliteration does not make a name new. «tochka» and «ТОЧКА» sound the same and mean the same, so the Board held them similar despite the different alphabets.

Consent must come from the owner of the earlier mark. A letter from the seller of a website does not replace an agreement with the trademark owner. For a case where the parties did agree, see HEADBAG v HEAD.

The response to the provisional refusal matters. Arguments and the list of services are best prepared at the examination stage — responding to a provisional refusal in Ukraine.

If your client is buying a Ukrainian website or brand

We search the Ukrainian register, assess conflicts with earlier marks, and help secure consents or file and defend applications before UANIPIO and the Appeal Chamber.

Questions we are asked about this case

Does owning a .net or .ua domain give a right to register the same name as a trademark in Ukraine?

No. In the tochka case the applicant held the tochka.net domain and an agreement assigning the property rights in the website, but the Board of the Appeal Chamber held that these documents did not rebut the similarity of the applied-for sign to the earlier registered marks «ТОЧКА». Rights in a website and rights in a trademark are different things.

Does a Latin-script spelling avoid a conflict with an earlier Cyrillic mark in Ukraine?

Not in this case. The Board accepted that the signs differ visually (alphabet, letter case, a figurative element), but «tochka» is a transliteration of the Ukrainian word «точка» (dot, point), sounds identical and has the same meaning. The signs were therefore held similar overall.

Whose consent can help register a mark similar to an earlier Ukrainian mark?

Under article 6(6) of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services” as currently in force, a sign similar to an earlier registered mark may be registered with the consent of the owner of the certificate for the earlier registered mark or of the owner of another earlier right, provided that consumers cannot be misled. In the tochka case the consent came from the company that previously owned the website, not from the owners of the cited marks.

What should a foreign client check before buying a Ukrainian website or domain for a brand?

Search the Ukrainian trademark register for the name and the relevant goods and services before the deal. If a similar earlier mark of another person is on the register, assess the risk in advance and consider approaching that mark owner, not only the seller of the domain.

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