Before filing in Ukraine the same question always arises: file the word, the logo, or a device without wording at all? These are three different types of mark, each protecting something different, and the choice shapes both the scope of protection and the odds of getting through examination.

Word mark — the broadest protection of the name

A word mark protects the name itself, irrespective of styling. Change the typeface, the colours, add a device — the protection still applies, because what is registered is the word.

This is the strongest option where the value sits in the name. It is also the hardest to obtain: a word mark claims the word as such, so the examiner assesses it on its own merits — descriptiveness, distinctiveness, and similarity to earlier marks.

Composite mark — protects a specific appearance

A composite mark protects a particular combination of wording and graphics. It is easier to register, because the figurative element adds distinctiveness where the word alone is weak.

The trade-off is the narrower scope: the protection attaches to that combination. If the client rebrands, the registration ages with the old logo.

There is also a trap that Ukrainian practice illustrates well. A device does not automatically distinguish a sign from an earlier mark — and it can make matters worse. In one Appeal Chamber case the eye device in the earlier mark was held to reinforce the similarity, because it supported the same concept as the word. And in another, the composite styling of the applied-for sign counted for nothing once the verbal elements were found identical.

Figurative mark — a device with no wording

The third type: a logo, emblem or symbol with no verbal element at all. Protection attaches to the graphics.

The advantage: it is language-independent. The sign works the same in Ukraine and abroad, needs no transliteration, and cannot be held descriptive of the goods.

The limitation: it does not protect the name at all. A competitor may take the word and draw its own device without infringing the figurative registration.

One further requirement: the device must be sufficiently original. Simple geometric shapes, ordinary arrows and common pictograms lack distinctive character on their own.

Colour, or black and white

A mark may be filed in colour or in black and white. Black and white gives freedom: the mark may then be used in any colour scheme. A colour claim is worth making only where the colour combination is itself a recognisable part of the brand.

Which to file

• the value is in the name — file the word mark first;
• the name is weak or descriptive — a composite mark may get through where the word alone would not, but expect narrower protection;
• the device is used independently of the name — on packaging, in an app, on the product — a figurative mark is worth adding;
• budget allows and the brand matters — the word and the device as two separate registrations is the strongest combination.

A point that decides cases

Evidence of use must match the mark as filed. In a Ukrainian case on acquired distinctiveness the applicant lost precisely on this: the packaging showed a composite sign with a bespoke typeface and a device, while the application was for a plain word mark. The evidence proved use of a different sign.

The practical rule: file what is actually used, or be ready to prove use of exactly what was filed.

Working with us

We advise on the filing strategy before the application is made — word, composite, figurative, or a combination — and handle prosecution and appeals in Ukraine. More on how we work with IP firms.