An entrepreneur came up with a name, ordered a logo, printed packaging and filed an application to register a trademark - and a few months later received a rejection. The reason is not that someone has already registered an identical name, but that a similar one exists that consumers might confuse with his brand. This is one of the most common mistakes made by small and medium-sized businesses in Ukraine, says intellectual property lawyer at "LODJIK" Alina Parkhuta.
Checking "if such a name exists" is not enough
Many business owners search the register for only an exact match with their name before registering a trademark. If there is no match - they consider the path clear. But the law prohibits registering not only identical, but also similar designations if there is a risk that consumers might confuse them or think the goods come from one manufacturer.
According to Parkhuta, three types of similarity are evaluated: phonetic (sound), graphic (spelling) and semantic (meaning). Moreover, for combined marks - with logos, fonts, colors - both the composition as a whole and individual elements are analyzed.
Why there is no formula "70% similarity - rejection"
The most unpleasant thing for a business that wants to assess risks in advance: there is no clear numerical scale of similarity. There is no law that says 80% matching letters means rejection, and 60% can be registered.
Trademarks may differ in individual elements, but at the same time create in the consumer an impression of common origin of goods or services. That is why assessing the risk should not only be based on the principle of "similar or not similar", but taking into account the general perception of designations and the nature of goods and services
The key question is not formal similarity, but the likelihood of confusion: will the buyer think this is the same manufacturer, a related company, or a new line of an already known brand.
"LODJIK" and "LODJIKA" - a practical example
The lawyer cites a telling case: the trademark "LODJIK" is registered for cosmetics, and another company files an application for "LODJIKA" for the same goods. The words are not identical, but they sound and are perceived so similarly that a consumer might decide this is a new line of the same brand. Formally - different names, essentially - a conflict.
What this means in practice for those launching a brand now
A preliminary search before filing an application should include not only a search for identical names, but:
- analysis of phonetic, graphic and semantic similarity with already registered marks;
- verification of combined designations and their key elements separately;
- analysis of goods and services for which similar marks are registered - conflict is relevant precisely in a related field;
- assessment of the probability that a consumer will associate the new mark with someone else's.
The difference in the cost of a mistake is striking. Detecting a potential conflict at the stage of choosing a name costs a legal consultation. Detecting it after money has already been spent on a website, packaging, an advertising campaign and launching on marketplaces - this is already renaming the business from scratch.
A question to ask yourself before launching any brand in Ukraine: did you check the register for similarity, or only for an exact match?
