Trademark similarity is a legal category that determines the likelihood of consumer confusion between two designations due to an association with the same manufacturer. The assessment is conducted by the Ukrainian National Office of Intellectual Property and Innovations (IP Office) or a court based on three main criteria: phonetic (sound), graphical (visual appearance and fonts), and semantic (meaning and translation). The risk of confusion is established exclusively under the condition of homogeneity of goods or services according to the relevant Nice Classification classes.
- The First Impression Rule: Signs are not compared side-by-side, but sequentially—the overall image retained in the memory of an average buyer is evaluated.
- A Single Criterion is Enough: Even if logos look different, an almost complete phonetic match in related classes will lead to a refusal to register a TM or a court injunction.
- Nice Classification Classes Decide Everything: Identical names can legally coexist in diametrically opposite fields (e.g., cement and software), unless it is a well-known brand.
- Changing 1–2 Letters Doesn’t Save You: Attempts to bypass someone else’s trademark by replacing individual vowels or doubling consonants are classified as parasitic behavior and unfair competition.
Hello! I am Maksym Petrov, a lawyer at BrandR. In my daily practice supporting entrepreneurs, e-commerce projects, and IT startups, I constantly observe the same pattern: founders invest hundreds of thousands of hryvnias into naming, corporate identity, creating an online store, and purchasing inventory, only to face a legal claim or marketplace account suspension. The typical reason is that no one checked the degree of similarity between the name and designations already entered into the register in a timely manner.
A common mistake among founders is the belief: “If the name is spelled slightly differently or the logo has a different color, it’s a different brand.” Intellectual property law operates under different rules. Below, we will analyze practical tools for assessing trademark similarity, algorithms for preventing refusals, and protecting business from financial losses.
Phonetic Similarity of Signs: Criteria and Judicial Practice
When starting a comprehensive analysis of designations, the first and most obvious barrier is the consumer’s auditory perception of the name by ear. The phonetic similarity of signs is based on the acoustic impression the word produces when pronounced. In radio commercials, video clips, verbal recommendations from customers, or during a conversation with customer support, the visual logo is absent—only sound works.
When the state enterprise “Ukrainian National Office of Intellectual Property and Innovations” (IP Office) analyzes an application, a state expert compares the sound composition of words. If the risk of confusion is high, the applicant receives a preliminary refusal (a notice of potential refusal of TM registration pursuant to Article 6 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”). To identify such sound intersections in advance, professional prior search and trademark verification should be carried out at the naming development stage, rather than after submitting documents for registration.
Main Factors of Sound Matching in Company Names
Phonetic similarity is established by a combination of a number of linguistic parameters. Expertise and judges evaluate:
- Presence of close or identical sounds: the use of voiced/voiceless pairs of consonants (B-P, D-T, G-K), which sound almost indistinguishable in continuous speech;
- Matching of stressed vowels: it is the stressed syllable that forms the dominant acoustic accent of the word;
- Number and sequence of syllables: identical rhythm and word length enhance confusion;
- Common letter combinations at the beginning of the word: the beginning of a word is fixed most clearly by the human brain, so the identity of the first letters is of decisive importance.
| Registered TM | New Designation | Transcription & Sound Match | Expert Legal Conclusion |
|---|---|---|---|
| BONAQUA | BONAQUA PLUS | [bon-ah-kwah] — [bon-ah-kwah plus] (full base inclusion) | Confusingly similar. The additional word “plus” is a weak element. |
| LUMEN | LUMIN | [loo-men] — [loo-min] (alternation of unstressed vowels) | Confusingly similar. Perceived identically in fluent speech. |
| FORTIS | VORTEX | [for-tis] — [vor-teks] (different endings and stresses) | Not similar. Different rhythmic pattern, distinct suffix parts. |
| SMARTIK | SMARTY | [smar-tik] — [smar-tee] (identical stem, common root) | High risk of confusion for homogeneous children’s products. |
Practice of Appealing IP Office Expertise Decisions
If, as a result of the examination, you receive a notification of a potential refusal due to a conflict with a previously registered trademark, this is not yet a final verdict. Legislation gives the applicant 2 months to prepare a reasoned response with arguments in favor of registration.
As the practice of appealing decisions in the Appeals Chamber of the IP Office and judicial instances shows, the position is built on linguistic differentiation: stress shifting, the presence of different consonants at syllable junctions, and semantic context. Read more about brand differentiation precedents in the article phonetic similarity of trademarks examples of judicial disputes and regulator decisions.
However, even with completely different brand sounds, a consumer may confuse them due to the external appearance of the packaging or logo.
Graphical Similarity of Trademarks: Analysis of Design Elements
Once the phonetic barrier is successfully passed, the next critical stage of evaluation is the visual perception of the sign by the buyer on a store shelf or smartphone screen. Graphical (visual) similarity is assessed based on the overall visual impression created by the font, graphic elements, proportions, and color solutions.
Visual comparison includes analyzing the shape of letters, the presence of decorative serifs, font slant, as well as the relative positioning of combined parts—the verbal inscription and the graphic emblem. If a consumer perceives the geometric structure of one brand as the sign of another, confusion arises.
Visual Dominants and Composition of Brand Logos
In a combined trademark, dominant and secondary (weak or unprotected) elements are always distinguished. The verbal inscription or a large, original graphic symbol is usually recognized as dominant. Secondary elements are simple geometric shapes (circle, square), standard lines, or descriptive words (“market”, “shop”, “service”, “ltd”).
Before transferring the logo layout for state registration, the BrandR team recommends going through an internal identity deconstruction algorithm:
- Isolating the strong core: Separate the combined logo into a text part and a graphic emblem. Determine which element attracts attention first.
- Filtering unprotected elements: Exclude commonly used geometric frames, standard icons (e.g., supermarket cart, coffee cup silhouette), direct indications of geographical origin or quality.
- Checking the font solution: If the name uses a standard free font (Arial, Roboto, Montserrat), its level of graphic distinctiveness is minimal. In case of a conflict, only the sound of the words will be evaluated. Custom author lettering significantly increases the chances of protection.
- Comparison with the database of figurative signs: Compare the graphic emblem according to the Vienna Classification of Figurative Elements (Vienna Classification code) in the IP Office databases for identical or similar silhouettes.
Impact of Corporate Colors on the Degree of Similarity
By default, a verbal or graphic mark registered in black-and-white receives legal protection in any color variations. However, if the sign is claimed in a specific color combination (e.g., turquoise + black or red + yellow), color becomes an independent feature participating in the similarity assessment.
Even if graphics and sound differ, the shared semantic load of names can lead to a ban on registration.
Semantic Similarity of Designations: Assessment of Meaning
In addition to visuals and sound, expertise investigates the internal essence of the brand—the associations and concepts that the sign transmits to the audience’s consciousness. Semantic similarity arises when designations that differ in spelling and pronunciation carry the same semantic concept, evoking the identical associative range in the average consumer.
Studying the meaning of a designation involves comparing word meanings using explanatory dictionaries, analyzing translations from foreign languages, and checking logical chains. If names evoke identical mental images, the risk of recognizing them as confusingly similar becomes critical.
Semantic Synonyms and Translations in Different Languages
The most common trap for beginners is trying to take a well-known foreign word and translate it into Ukrainian for a similar group of goods. For example, a company applies for registration of the designation “Chornyy Byk” (Black Bull) for energy drinks in class 32 or “Yabluko” (Apple) for computer equipment in class 9.
Maksym Petrov, BrandR Lawyer:
“In the Ukrainian business environment, there is a persistent illusion of originality: if you take an English term and register its literal translation into Ukrainian, it is considered your own idea. From the standpoint of patent law, this is a direct path to refusal. IP Office expertise checks the semantic field in all major European languages. If signs have identical lexical meaning in the field of related goods, semantic identity is recognized for them.”
A similar rule applies to synonymous words. The designations “Hihant” (Giant), “Tytan” (Titan), and “Veleten” (Colossus) carry the same semantic load of power or large size. If both companies manufacture heavy construction equipment (Nice class 7), the expert will quite reasonably point out the likelihood of semantic confusion.
Formation of False Associations in Consumer Perception
Legislation protects the consumer from so-called “semantic mimicry”. This refers to cases where the name of a new brand exploits the conceptual structure or plotline of a well-known product.
If a buyer decides that a new product is a line extension, licensed series, or subsidiary sub-brand of a well-known corporation, this is interpreted by law as misleading the consumer regarding the manufacturer or the source of origin of the product (Clause 2 of Article 6 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”). Such actions are prohibited by the Civil Code of Ukraine (Article 495) and entail the cancellation of the certificate for a mark for goods and services.
Any similarity of names has legal significance only when the goods or services of companies intersect.
Homogeneity of Goods and Services: Nice Classification
Even with an identical name, no conflict arises if businesses operate in non-overlapping market segments—which is why the International Classification of Goods and Services (Nice Classification, NCL) is the key to brand security. The classifier includes 45 classes (1 through 34 for goods, 35 through 45 for services).
The owner of a registered sign holds a monopoly on their name not “in general”, but only within the limits of those classes and specific positions included in the certificate (the exception being brands officially recognized as well-known by the Appeals Chamber or a court). If two firms are named “Atlant”, but one manufactures metal profiles (class 6) and the other provides auditing services (class 35), these entities peacefully coexist without mutual claims.
Criteria for Determining Interchangeability of Goods and Services
The legal complexity lies in the fact that Nice classes are not isolated walls. There is the concept of homogeneity of goods and services. Even if products belong to different classes, they are recognized as homogeneous based on a combination of the following features:
- Common target audience: Do the same target consumers buy both goods for similar life needs?
- Single distribution channels: Are goods placed on neighboring supermarket shelves, in the same marketplace category, or in specialized stores?
- Interchangeability and competition: Can a consumer refuse to purchase product A in favor of product B to solve the same problem?
- Complementarity: Is one product used exclusively or primarily together with another (e.g., toothpaste and toothbrushes)?
- Ratio of service and product: Is the service a method of manufacturing, repairing, or selling a specific product (e.g., class 30 — coffee, and class 43 — coffee shop services)?
Ukrainian judicial practice firmly maintains the position that, for example, retail clothing services (class 35) and actual tailoring of ready-to-wear clothing (class 25) are homogeneous. Opening a store under the name of a registered footwear brand without the owner’s consent will not work, even by appealing to “different classes” in the classifier.
Strategy for Competent Selection of Nice Classification Classes
When forming an application, entrepreneurs often fall into two extremes. The first is excessive economy: choosing only one narrow formulation without considering product line expansion. The second is ordering the maximum number of classes “just in case”.
Consider the financial factor: the state fee for filing an application is 4000 UAH for one class for a black-and-white sign (a discount applies for electronic filing, but the cost of each additional class remains significant). In addition, pursuant to Article 18 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, if a mark is not used in Ukraine in full or in respect of part of the goods/services continuously for 5 years, any interested person has the right to apply to court with a claim for early termination of the certificate.
The optimal strategy is to form an elastic list covering the company’s operational activities now plus potential vectors of business development for the next 2–3 years.
When all four factors converge into one, a critical legal consequence ensues—brand confusion in the real business environment.
Confusing Similarity: Business Legal Risks
Bringing together phonetics, visuals, semantics, and homogeneity forms the final conclusion of the examination—whether a confusing similarity arises that causes direct losses to the company. When two similar designations appear on the market, the consumer believes that both goods are produced by the same manufacturer or affiliated enterprises. For business, this inevitably opens a Pandora’s box of legal problems.
Forensic Examination and Public Opinion Polls
In the event of a dispute, the key evidence in a court hearing is a forensic examination of intellectual property objects. A certified forensic expert examines a pair of trademarks using a scientific methodology. To substantiate their positions, parties often involve sociological surveys.
- Costs for branding, packaging, and website: 150,000 UAH.
- Large-scale advertising launch: 100,000 UAH.
- After 1 year: Lawsuit from the right holder.
- Legal costs and forensic examination: 80,000 UAH.
- Court decision: Ban on activity, product disposal, fines.
- Result: Loss of over 330,000 UAH and the business.
- Professional prior TM search before launch.
- Adjustment of disputed letters and graphics at the sketch stage.
- Filing an application with the IP Office (securing priority).
- Obtaining a certificate and registering the .UA domain.
- Safe scaling in the market and marketplaces.
- Result: Asset capitalization without legal risks.
Financial Consequences of Forced Rebranding for a Company
If a business loses a court dispute or gets blocked, it’s not just about changing a sign. Losses are distributed across a number of critical areas:
- Confiscation and destruction of counterfeit products: Pursuant to Article 432 of the Civil Code of Ukraine, goods on which someone else’s sign (or a confusingly similar designation) is illegally used are recognized as counterfeit and are subject to withdrawal from circulation and destruction at the infringer’s expense;
- Loss of organic traffic and domain name: If your domain contains someone else’s registered mark, the owner can take it away through the UA-DRP procedure (alternative dispute resolution for domain disputes) or court;
- Marketplace account suspension: Prom.ua, Rozetka, OLX, as well as international giants (Amazon Brand Registry, Etsy) block sellers without warning upon receiving a notice from a right holder via the DMCA mechanism or a complaint about intellectual property rights infringement.
How to Protect a Brand from Lawsuits
The degree of trademark similarity is a complex phenomenon where phonology, graphic design, linguistics, and trademark law act inseparably. Trying to independently assess the safety of a name “by eye” without access to official closed application databases and a deep understanding of judicial methodology creates critical risks for investments in marketing.
Minor modification of a single letter, adding a banal geometric frame, or translating a word into another language does not save a business from lawsuits in the presence of homogeneity of goods. To secure an online store, manufacturing plant, or service company, act preventatively: conduct audits and secure priority before bringing the product to market.
