A European consumer goods brand had built its identity over a decade across several markets. When it entered Ukraine, it discovered a locally registered mark that was nearly identical to its own – registered by a domestic entity in an overlapping Nice classification category. The local holder showed no sign of vacating the space. Every month of inaction was a month the infringer consolidated its market position.
This matter involved a cross-border trademark dispute in Ukraine, where a foreign brand owner pursued an infringement claim and a parallel invalidation procedure against a conflicting local IP registration. The process required coordinating opposition proceedings before the Ukrainian IP authority alongside civil enforcement action in the Ukrainian commercial courts. Resolution took approximately fourteen months from initial filing to a final enforceable outcome.
This case study outlines the strategy deployed, the complications that arose, and the three transferable lessons relevant to any business facing a similar cross-border IP conflict in Ukraine.
Client profile and the challenge at hand
The client was a mid-sized consumer products company headquartered in Western Europe. It held trademark registrations in the EU, the UK, and several neighbouring jurisdictions. Ukraine represented a priority growth market. The business had invested in distribution relationships and retail shelf space before completing its local trademark application.
That sequencing proved costly. By the time the client's Ukrainian trademark application was filed, a domestic entity had already registered a visually and phonetically similar mark. The registration covered goods falling squarely within the same Nice classification classes as the client's core product lines.
The conflicting local mark had been registered for several years. It was actively in use – at least nominally – which closed the door on non-use cancellation as the primary route. The client faced a two-front problem: it needed to challenge the existing IP registration on substantive grounds, and it needed to stop the domestic entity from using the mark commercially while that challenge was pending.
For broader context on IP registration strategy and enforcement tools available in Ukraine, see our overview of intellectual property services in Ukraine.
Legal strategy: rationale and sequencing
The team identified three available routes. Each carried a different risk profile and timeline.
The first option was a standalone infringement claim before the Ukrainian commercial courts. This would have produced an injunction relatively quickly – potentially within three to four months. However, it would not have resolved the underlying IP registration. The domestic entity could have continued using the mark under its existing registration as a defence.
The second option was an invalidation procedure before the Ukrainske natsionalne biuro intelektualnoi vlasnosti (Ukrainian National Intellectual Property Office, hereinafter the IP Office). This route directly attacked the registration. It required demonstrating that the mark should not have been granted in the first instance – on grounds of similarity to the client's earlier foreign registrations and likely consumer confusion. The timeline for this route was twelve to eighteen months.
The third option was a combined approach: simultaneous invalidation proceedings before the IP Office and a parallel infringement claim in the commercial courts. The infringement claim would include an application for interim relief, seeking to restrain use of the conflicting mark while the invalidation was pending.
The team recommended the combined approach. The rationale was straightforward. Winning only on infringement would leave the registration intact – a continuing threat to any future expansion. Winning only the invalidation would take too long without addressing the ongoing market harm. The combined strategy addressed both the immediate commercial damage and the structural IP risk.
Ukrainian intellectual property legislation permits invalidation of a registered mark where it conflicts with an earlier right holder's mark that was known in Ukraine prior to the conflicting application date. The client's EU registration predated the local filing by several years. This was the central argument.
Key milestones and complications encountered
The matter proceeded in several distinct phases.
Months one to three. The team filed the invalidation request with the IP Office and simultaneously lodged the infringement claim in the commercial court. The court application included an interim injunction request. The court granted a preliminary injunction within six weeks, restraining the domestic entity from using the mark in commerce pending the outcome of proceedings.
Months four to seven. The domestic entity filed a counterclaim. It argued that the client's foreign mark lacked sufficient reputation in the Ukrainian market to constitute an earlier right. This was the principal complication. Ukrainian courts and the IP Office apply their own assessment of whether a foreign mark was sufficiently well known locally at the relevant date. The client had not previously registered or promoted the mark in Ukraine before the conflicting registration was filed. Evidence of market presence was therefore limited.
The team responded by assembling a body of evidence demonstrating the mark's international reputation. This included export records showing product sales into Ukraine through third-party distributors, online retail listings accessible to Ukrainian consumers, and trade press coverage in industry publications reaching the Ukrainian market. The argument shifted from strict registration priority to acquired distinctiveness and cross-border reputation – a recognised basis under Ukrainian intellectual property legislation.
Months eight to twelve. The IP Office issued a preliminary finding in favour of invalidation. The domestic entity appealed within the administrative procedure. The commercial court proceedings continued in parallel. The interim injunction remained in force throughout.
Month fourteen. The IP Office upheld its preliminary finding on appeal. The local registration was declared invalid. The commercial court, notified of the invalidation outcome, entered judgment on the infringement claim. The client received a damages award and a permanent injunction.
One further complication deserves mention. Service of process on the domestic entity presented delays early in the court proceedings. Ukrainian civil procedure rules require formal service before substantive steps can proceed. The team used a combination of registered postal service and court-directed electronic service to satisfy the requirement and avoid a prolonged standstill.
Businesses operating across CIS jurisdictions with related technology or AI-related brand assets may also wish to review our analysis of AI and technology law in Ukraine, where IP considerations intersect with digital product regulation.
Transferable lessons for cross-border IP matters in Ukraine
Lesson one: file the trademark application before entering the market. The single most significant factor that shaped this matter was the sequencing error at the outset. Ukrainian trademark law operates on a first-to-file basis. A foreign mark – regardless of its reputation elsewhere – does not automatically receive priority over a locally registered mark filed earlier. Delaying the trademark application while building distribution networks creates a window during which a conflicting registration can be lodged. Closing that window costs multiples of what an early filing would have required.
Lesson two: the combined strategy outperforms single-track proceedings in most contested cases. Businesses often choose between enforcement and invalidation based on speed alone. In Ukraine, a standalone infringement claim – while faster for interim relief – leaves the structural IP conflict unresolved. An infringer with a live registration has a meaningful defence. Running the invalidation and enforcement tracks in parallel is more resource-intensive, but it removes that defence and produces a durable result. The interim injunction available in court proceedings provides commercial protection while the longer invalidation process runs its course.
Lesson three: evidence of cross-border reputation must be assembled proactively. Where a foreign brand has not previously registered or promoted its mark in Ukraine. The opposition proceedings and invalidation procedure will require affirmative evidence of market presence. Distributor records, online visibility, and trade publication coverage all carry weight. This evidence base should be identified and preserved as early as possible – ideally before any dispute arises. Waiting until proceedings are under way to gather evidence creates both delay and risk of gaps that a well-advised domestic respondent will exploit.
To explore a tailored enforcement strategy for a trademark dispute in Ukraine, contact us at info@ferrazwhitmore.com.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising clients on intellectual property protection, IP registration, infringement claims, and opposition proceedings across 46 jurisdictions. Our cross-border IP practice combines Portuguese civil law expertise with English common law tradition, giving clients a dual perspective on enforcement strategy across both civilian and post-Soviet legal systems. We have supported international businesses in managing trademark disputes and navigating IP registration procedures in Ukraine and across CIS markets. As an international law firm in Ukraine and across the CIS region, we regularly assist clients who need a lawyer in Ukraine with experience in cross-border IP matters. Our team works with brand owners, technology companies, and institutional investors who need results-oriented counsel when local registration conflicts threaten their market position. To discuss your cross-border trademark situation, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.