UKRZOLOTO

In 2019 a sign reading «УКРЗОЛОТО» (UKRZOLOTO, literally «Ukrainian gold») hung over a jewellery shop in Kropyvnytskyi. The owner of the registered UKRZOLOTO trademark sued the sole trader running the shop. Her defence: a shop sign is not a mark on goods, and she used the logo as a work of fine art under a licence from its authors. Seven years later, on 29 October 2026, the Central Commercial Court of Appeal upheld a ban on using the designation on signs. Here is why the logo licence did not help.

What happened

The UKRZOLOTO trademark is registered under Ukrainian certificate No. 124382 of 25 June 2010, among others for class 14 goods — jewellery. From 2019 it belonged to Markholder LLC. A sole trader whose main business is retail sale of watches and jewellery sold jewellery in premises over which a UKRZOLOTO sign was placed in 2019. This was proven by a sales receipt of 26 October 2019, an inspection report of 6 November 2019 and photos of the sign. The trademark owner had given no consent.

Markholder LLC sued in the Commercial Court of Kirovohrad Region, asking to stop the use by removal of the sign. A court expert report of 31 July 2020 found that the designation on the sign was confusingly similar to the trademark for related goods and services and was use and reproduction of it.

During the proceedings, under an agreement of 30 June 2021, the trademark was assigned to the closed-end venture investment fund JSC «Cefei». In 2024 the court substituted the new owner as claimant and kept Markholder LLC in the case as a third party. The new claimant amended the claim: to prohibit use of UKRZOLOTO in any font and alphabet on signs and their display when offering for sale and/or selling class 14 goods. On 6 November 2024 the court granted the claim in full.

The defence

The defendant argued that a sign is neither a mark on goods nor a trademark. She said she used the UKRZOLOTO logo as a work of fine art under a licence agreement of 2 January 2019 with its authors, and that the work had a copyright registration certificate of 11 October 2016. The authors, joined as third parties, supported her: they said they had used the name since 2000 and 2002, and that one of them, as a sole trader, had installed the sign in June 2019.

The court expert did not answer whether the sign reproduced a work of fine art. An additional examination, ordered in 2021 at the defendant’s request, never took place because its cost was not paid.

What the courts decided

A sign is use of the trademark. The appeal court relied on part 4 of article 16 of the Law of Ukraine on Protection of Rights to Marks for Goods and Services (the Law) in the version in force when the dispute arose. In our translation, use of a mark includes «applying it to any goods for which the mark is registered, the packaging containing such goods, a sign connected with them», offering such goods for sale and selling them. Placing the designation on the shop sign, offering and selling jewellery all fall under this form of use. The court rejected the argument that «sign» and «sale» are separate forms of use calling for different remedies: the other form the appellant relied on concerns services. In the current version of the Law (of 26 February 2026) this is article 16(4), with «trademark» in place of «mark».

The person trading under the sign is liable. It was the defendant who sold goods covered by the registration in the premises under the sign. That others ordered and installed the sign does not change this. The court also called the appellant’s arguments internally inconsistent: he had earlier stated that a licence agreement for the logo had been concluded with the defendant, and she said she used the image on the sign under a licence agreement.

Copyright in the logo did not help. The first-instance court held that using a designation lawfully protected as a copyright work to mark goods for which a mark is registered infringes the certificate holder’s rights. The findings that the sign reproduced the trademark and that use of a work of fine art on it was not proven were not disputed on appeal, so the appeal court did not re-examine them.

Removing the sign did not end the case. The sign was taken down during the proceedings. But the claim seeks to prohibit future use, and removing one sign does not rule that out. The court saw no grounds to close the case for lack of subject matter.

The other grounds of appeal were procedural — recusal of the judge, an adjournment, the participation of Markholder LLC as a third party. The court dismissed them and upheld both the judgment of 6 November 2024 and the additional judgment on costs of 5 December 2024. The resolution took effect on the day it was adopted and may be appealed in cassation.

What it cost

The defendant was ordered to pay UAH 1,921 in court fees and UAH 19,612.80 for the expert examination to Markholder LLC, and, by the additional judgment, UAH 15,000 in legal fees to Markholder LLC and UAH 25,000 to JSC «Cefei». UAH 61,533.80 in total, not counting the court fees for the appeals, which were charged to those who filed them.

Separately, the Commercial Court of Kirovohrad Region has case No. 912/3545/19, a claim by Markholder LLC for UAH 120,000 in damages for use of the designation in 2019–2020. It is stayed pending the final outcome of this case — which, the court held, is why Markholder LLC had an interest in remaining in the case as a third party.

What the court did not decide

The logo authors said they had used the name since 2000 and 2002, while the trademark application was filed on 1 February 2008. Article 16(6) of the Law provides that the owner’s exclusive right to prohibit use does not extend to «the exercise of any right that arose before the filing date of the application» (our translation). Whether anyone had such a right, and whether it covered the defendant, the resolution does not assess: the appeals did not raise this argument. The decision gives no direct answer.

Nor does it decide who authored the logo or whether the licence from the authors was valid. It only records that the first-instance finding that use of the work on the sign was not proven was not disputed on appeal.

The register today

As of 12 November 2026 certificate No. 124382 (application No. m200801717 of 1 February 2008) is in force and renewed until 1 February 2028. It covers classes 3, 14, 16, 18, 20, 21, 25, 35, 36, 37, 40, 41 and 42, and is owned by JSC «Cefei». The same owner holds the Latin-script UKRZOLOTO marks (certificates No. 60764 and No. 194263), and Markholder LLC holds several class 35 marks containing the word.

This is not the only such case. The resolution mentions several other cases of the Commercial Court of Kirovohrad Region involving Markholder LLC or JSC «Cefei»: Nos. 912/3032/19, 912/3033/19, 912/3035/19 and 912/164/20.

Lessons for brand owners and their counsel

• In Ukraine a shop sign is trademark use for the goods sold there. A claim goes to whoever trades under it.
• «I did not put up the sign» is no defence. Who ordered, made or installed the sign did not matter to the court.
• Copyright registration is not a trademark registration. Copyright protects the work; a trademark lets its owner stop confusingly similar designations for the registered goods.
• Consent must come from the certificate holder. A licence from the logo authors did not replace it. See our note on assignments and licences in Ukraine.
• Taking the sign down does not end the dispute. The ban applies to the future, costs were awarded, and a damages claim is pending.
• Search before the sign goes up. A clearance search in the Ukrainian register is simpler than seven years in court.

Our view

This is our assessment, not the court’s finding. The common mistake in such stories is to confuse rights in an image with rights in a name. A logo may be a work, and it may have a copyright registration, but if it consists of a word already registered as someone else’s trademark for the same goods, a shop sign bearing it is use of that trademark. A long history of using the name is no automatic shield either: it has to be proven, and in this case it never reached the court’s assessment.

If your client trades under a name registered to someone else in Ukraine

We check the Ukrainian register before a name goes on signs, packaging or a website, and assess the risk of a claim from the owner of a similar trademark. If a claim has already arrived, we look at whether earlier rights can be shown and what the options are: a licence, a rebrand or a defence. More on how we work with IP firms.

Questions we are asked about this case

Is a shop sign use of a trademark in Ukraine?

Yes. Article 16(4) of the Law of Ukraine on Protection of Rights to Marks for Goods and Services treats as use of a trademark, among other things, applying it to a sign connected with goods for which the trademark is registered, as well as offering such goods for sale and selling them. In case No. 912/3031/19 the courts held that a UKRZOLOTO sign over a shop selling jewellery was use of the mark.

Does a copyright registration for a logo protect against the trademark owner?

In this case it did not. The first-instance court held that using a designation protected as a copyright work to mark goods for which a trademark is registered infringes the rights of the certificate holder. The Central Commercial Court of Appeal did not re-examine that finding because it was not appealed, and upheld the judgment.

Who is liable if someone else ordered and installed the sign?

According to the resolution of the Central Commercial Court of Appeal of 29 October 2026 in case No. 912/3031/19, the person selling the goods in the premises under that sign. The court rejected the argument that other persons ordered and installed the sign.

Does removing the sign end the dispute?

No. The sign was taken down during the proceedings, but the court did not close the case: the claim seeks to prohibit future use of the designation on signs, and removal of one sign does not rule out such use.

What did the dispute cost the losing party?

Under the first-instance judgment and the additional judgment, the defendant was ordered to pay UAH 1,921 in court fees, UAH 19,612.80 for the court expert examination and UAH 40,000 in legal fees — UAH 61,533.80 in total. Court fees for the appeals were charged to those who filed them. A separate claim for UAH 120,000 in damages, case No. 912/3545/19, is stayed pending the final outcome of this case.

See also: CRICOVA: a brand registered to someone else · Assignments and licences in Ukraine