UKRAINE: Appeal Chamber Clarifies Assessment of Dominant Elements in Trademark Similarity Analysis

A recent decision from the Appeal Chamber of the Ukrainian National Office for Intellectual Property and Innovations (UKRNOIVI) highlights how Ukraine assesses likelihood of confusion when trademarks share a common foreign-language element. The decision, which was published on December 25, 2025, provides practical guidance for international brand owners seeking protection in an increasingly active Ukrainian trademark landscape.

The case concerned a dispute between two Spanish brewing companies, Hijos De Rivera, S.A. and Sociedad Anónima Damm. The former sought protection in Ukraine for the combined trademark ESTRELLA GALICIA under International Registration No. 1166479 in Class 32 (beer). The registration was opposed by the owner of the earlier trademark
ESTRELLA DAMM, protected in Ukraine since 2007 under International Registration No. 924729.

During examination, UKRNOIVI found the opposed mark confusingly similar to the earlier mark and refused protection. The applicant appealed this decision to the Appeal Chamber.

The applicant argued that the marks differed visually, phonetically, and conceptually. It submitted that the elements  GALICIA and DAMM created distinct conceptual meanings: “Galicia” refers to a historical region in Spain, while “Damm” corresponds to the founder’s surname and company name. The applicant further argued that the term “estrella” (“star”) is commonly used in the beer industry and cannot be monopolized when combined with additional elements. The applicant also emphasized visual differences between the marks. To demonstrate reputation, the applicant referred to sponsorships in Formula 1 and MotoGP, as well as media exposure, including product placement in the Netflix series La Casa de Papel.

The Appeal Chamber rejected these arguments, emphasizing the dominant role of the shared element ESTRELLA. It found that, for the average Ukrainian consumer, the additional elements GALICIA and DAMM carry limited semantic meaning because they are foreign-language words unfamiliar to the public. As a result, the shared verbal element was likely to create an association between the marks despite differences in graphic design and additional wording.

The Chamber also stressed the territorial nature of trademark protection, noting that registration or recognition of a mark in the European Union does not automatically establish distinctiveness or reputation in Ukraine. Evidence of recognition must relate specifically to consumer perception in Ukraine at the relevant date.

The Appeal Chamber therefore dismissed the appeal and upheld the refusal of protection for the trademark ESTRELLA GALICIA in Ukraine. The decision reflects a strict approach to dominant elements in composite marks and forms part of a broader pattern of disputes in Ukraine involving international brands, highlighting the need for foreign brand owners to assess potential conflicts at an early stage of market entry. The decision is subject to appeal.

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