Phonetic Similarity of Trademarks: Examples of IP Office Disputes and Court Decisions

Entrepreneurs frequently make a fatal mistake: they develop an original graphic logo, choose brand fonts, launch advertising, and consider themselves protected simply because their name visually differs from a well-known competitor by one letter or is written in Latin characters. In commercial reality, this does not work. Consumers often learn about a product from a conversation with a colleague, car audio advertising, a podcast, or a blogger’s recommendation. When a person hears a name, they do not see the font or logo. If, trying to find the heard brand, they buy a product from another manufacturer with a consonant name, a legal fact arises: similarity to the degree of confusion. To assess the full range of risks, it is useful to examine how the degree of trademark similarity is comprehensively determined: evaluation criteria and risks for business, where the acoustic aspect plays a prominent role.

Criteria for Evaluating Phonetic Similarity of Designations by Experts

The evaluation of consonance is not a subjective impression of an inspector, but a standardized linguistic and legal process. Experts of the State Organization “Ukrainian National Office of Intellectual Property and Innovations” (UANIPI / IP Office) and forensic experts are guided by special methodologies approved in Ukraine and aligned with WIPO (World Intellectual Property Organization) practice. The main task of the study is to determine whether the dominant sound contours of two words coincide when used for homogeneous goods or services under the Nice Classification (NCL).

To timely identify hidden sound matches among thousands of active certificates and applications during the review process, a professional prior search and trademark verification is conducted. During the verification, specialists break down the name into sound units according to strict regulations.

When sound identity of a TM arises, the applicant receives a document from the examination — a preliminary refusal of registration under Article 6 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services.” It states that the claimed designation is deceptive or capable of misleading the consumer regarding the identity of the manufacturer of goods or provider of services.

Syllable Composition and Stress in Names

The rhythmic pattern of a word is the foundation of its recognizability. If two commercial designations have the same number of syllables and the stress falls on the same syllable, their sound canvas becomes practically shared. For example, in three-syllable words with stress on the second syllable, the consumer perceives the middle of the word as the core of the name, skipping the nuances of the ending.

In patent practice, there is an immutable observation: the initial part of a word has the highest distinctive capacity. If the first syllables of two marks sound the same, changing the suffix or inflection (ending) rarely overcomes the conclusion of similarity to the degree of confusion. An exception is cases where the changed ending completely transforms the meaning of the word into a well-known one (semantic contrast), but purely phonetically such protection is extremely fragile.

Alternation of Vowel and Consonant Sounds of a Brand

A classic mistake of founders is to take a strong foreign name and replace an unvoiced consonant with a voiced one or vice versa (for example, replacing “T” with “D” or “S” with “Z”). From the perspective of academic and forensic linguistics, these sounds belong to paired acoustic correlates. In conditions of city noise, telephone communication, voice messages in messengers, or announcements in shopping centers, the difference between “B” and “P” is leveled out.

When linguistic examination analyzes vowel alternation, it evaluates the so-called formant structure. If the vowel sequence matches, the overall melody of the brand remains unchanged. That is why a simple replacement of a consonant inside a construction is viewed by the IP Office as an attempt at unfair competition and mimicry of someone else’s successful business.

Transliteration and Foreign Borrowings in Disputes

A widespread illusion among online store owners and marketplace sellers is the belief: “If a competitor’s brand is registered in Ukrainian, I will register the same word in English letters — and the law will be on my side.” This is categorically untrue. The norms of the Civil Code of Ukraine and the provisions of special legislation protect the intangible essence of the designation itself, rather than exclusively a set of letters of a specific alphabet.

Brand transliteration — i.e., the graphic transfer of letters and words of one writing system into letters of another — is subject to mandatory comparison for sound identity. If the word “МАРКЕТ” is submitted for registration as “MARKET,” the expert will record one hundred percent phonetic identity. If the claimed Nice classes match or are related (homogeneous goods and services), the applicant is guaranteed to receive a preliminary refusal.

Cyrillic vs. Latin: Hidden Pronunciation Traps

When comparing Cyrillic and Latin spellings, the examination applies the rules of practical transcription and transliteration. The main test is to determine: how would an average Ukrainian without fluent foreign language skills read the Latin designation? If the Latin word is read according to the rules of Ukrainian or popular English phonetics in exactly the same way as the registered Cyrillic word, the graphic barrier disappears.

For retail and the service sector (cafes, beauty salons, local e-commerce), this factor is decisive. A client tells a taxi driver: “Take me to the ‘Fortuna’ restaurant.” The consumer does not specify how the name is written on the facade — “Fortuna” or “Фортуна.” Accordingly, the monopoly of the holder of the certificate for the mark for goods and services covers the sound use of the name in commercial circulation completely.

Different Spellings with Identical Pronunciation

A separate layer of conflicts consists of homophone words — lexical units that are spelled differently but pronounced identically. This happens especially often during the registration of neologisms or borrowed English words. For example, using letter combinations “PH” instead of “F” (Photo / Foto), doubling consonants (Classic / Klasik), or replacing “C” with “K” and “S.”

Marketers often justify such naming as “creative author’s orthography.” However, during registration at UANIPI, such creativity turns into a legal problem. The examination compares phonetic transcriptions. If the transcription record matches by more than 80–90%, visual modifications are ignored, because by ear the buyer is unable to distinguish the modified word from the original.

Indicative IP Office Decisions on Consonance

The practice of the IP Office indicates a systemic position: if goods belong to the daily consumption category (FMCG, food products, cosmetics, pharmaceuticals), the auditory factor often outweighs the graphic one. In a supermarket or pharmacy, the purchase decision is made in seconds, or the buyer voices the name to a consultant or pharmacist orally. In such categories, even minimal consonance is recognized as dangerous.

The administrative practice of the Board of Appeal of the IP Office regularly confirms: the presence of differences in spelling does not cancel similarity to the degree of misleading. The panel analyzes how the brand functions in a real trading environment, not just on the application paper.

When One Letter Does Not Save a Name

In disputes regarding the registration of names in the food and soft drinks sector, attempts to register variants with a vowel replacement inside the word (for example, replacing “O” with “A” in the root) or adding one letter at the beginning of the word often appear. The examination unequivocally qualifies such designations as similar to the degree of confusion.

During analysis, experts distinguish so-called “strong” and “weak” elements. A weak element is descriptive characteristics (for example, words like “Bio,” “Eco,” “Lux,” “Plus”). If an applicant takes someone else’s consonant name and simply attaches the word “Eco” or “Trade” to it, the examination ignores this addition when evaluating sound, since the main distinguishing load is carried precisely by the root word.

Board of Appeal Decisions on Phonetic Confusion

Appealing UANIPI decisions to the Board of Appeal is a mandatory pre-trial filter for restoring the applicant’s rights. The practice of reviewing objections demonstrates two basic scenarios:

The first scenario is an unconditional refusal to the applicant. When the applicant claims that the words have different origins (for example, one word is invented and the other originates from Latin), the board notes: the ordinary buyer is not an etymologist. If the designation cannot be reliably identified by sound during oral communication, the initial examination decision remains in force.

The second scenario is successfully overcoming the refusal by separating homogeneity. The applicant limits the list of goods or services within the NCL class, excluding those positions where there is a direct intersection of sales channels with the opponent. If goods cease to be homogeneous, sound proximity ceases to be an obstacle to registration.

Judicial Practice in Reviewing Consonance Disputes

When administrative levers of influence are exhausted, disputes move to the Commercial Court of Kyiv City (which has exclusive jurisdiction in most intellectual property disputes in Ukraine) and are reviewed by appellate instances and the Supreme Court. In the courtroom, brand protection against confusion relies on legal positions developed by the highest judicial instance.

The commercial court does not conduct linguistic comparisons independently based on its own judicial discretion. The court appoints a forensic examination in the field of intellectual property. A certified forensic expert draws up a conclusion, which becomes the main evidence in a case on invalidating a certificate for a mark or terminating the violation of intellectual property rights.

Trademark judicial practice indicates that plaintiffs win the majority of disputes where the difference between verbal designations lies solely in spelling differences or the use of common suffixes. This leads to colossal financial losses for the infringer.

Supreme Court Position on Consumer Perception

Numerous rulings of the Commercial Cassation Court within the Supreme Court enshrine a fundamental legal position: “Similarity to the degree of confusion is based on the general impression that trademarks create on the average consumer with a moderate level of attention.”

The Supreme Court consistently emphasizes the following aspects:

1. Imperfect memory: The consumer rarely has the opportunity to see two goods side by side to compare letters in detail. They operate with residual auditory or visual recollection.
2. Priority of general perception: Individual minor graphic elements do not neutralize the identical sound of the dominant verbal block.
3. Homogeneity of acquisition channels: If goods are sold in the same supermarket department or on the same marketplace page, the risk of confusing similar names increases manifold.

Examination of Sound Similarity of Names of Homogeneous Goods

During a study under specialty 13.6 (“Research related to commercial (company) names, trademarks”), a forensic expert answers a specific question of the court: “Are designation ‘X’ and designation ‘Y’ so similar that they can be confused?” The expert uses scientific criteria:

• Analysis of phoneme coincidence according to the International Phonetic Alphabet (IPA).
• Calculation of the similarity coefficient of word lengths and pronunciation frequency range.
• Evaluation of the semantic component: whether the consonant word evokes a different stable semantic image (for example, “Mir” and “Mor” sound close, but have categorically different meanings, which separates them in perception).

How Business Can Avoid Conflicts Due to Consonance

The issue of patent purity of a name worries any entrepreneur: can you open a store with a similar name, is a trademark needed for an online store, and what threatens a marketplace block due to a TM? The answer is unambiguous: running a business without a verified and registered brand in modern conditions is extremely risky.

This problem is particularly acute in digital commerce. If your store uses a consonant name, international platforms (Amazon, Etsy) or Ukrainian platforms (Rozetka, Prom.ua) do not wait for Ukrainian court decisions. A right holder’s complaint via the IP Infringement procedure is sufficient, and the seller’s cabinet is blocked until the dispute is fully resolved. How to choose an online store name without TM infringement and how should a business owner act?

For entrepreneurs facing the opening of physical retail outlets and doubting the legality of their signs, we have prepared a profile material on whether you can open a store with a similar name and what to do if the brand is already registered, which details the nuances of geographical demarcation and sign conflicts.

Algorithm for Preliminary Audit of Potential Phonetic Risks

Before investing in branding, test the chosen word against these practical vectors:

• Telephone test: Call 5–7 acquaintances and pronounce the name once in a normal conversation. Ask them to send you this word in text via a messenger. If three out of five wrote the name with mistakes or indicated another word — the phonetic construction is unstable and will carry legal risks.
• International registers before export: If entering the EU or US markets is planned, be sure to check the startup name for patent purity not only in the UANIPI database, but also in the registers of EUIPO (European Union Intellectual Property Office) and the WIPO Global Brand Database. Many names that sound original in Ukraine are direct phonetic clones of European marks.

Protection Strategy Upon Detecting a Similar Designation

What to do if a preliminary check reveals a dangerously consonant trademark? There are several options:

1. Adjusting naming at the start: This is the cheapest path. Add a unique prefix, change the root base, or turn the name into a combined construction with a high degree of originality.
2. Letter of Consent: If the opponent’s business does not intersect directly with yours, you can negotiate and obtain official notarized consent to register your mark. For the IP Office, this is a weighty argument for removing objections.
3. Challenging based on non-use: Under Article 18 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services,” if a similar trademark is not used by the owner in Ukraine continuously for 5 years, its registration can be prematurely terminated in full or in part through judicial proceedings.

Conclusions and Brand Protection Against Consonance

Phonetic similarity of trademarks is one of the most insidious risks in business. Unlike graphic plagiarism, which is noticeable immediately, sound collisions often remain unnoticed by the company founder until the moment a claim letter is received, a marketplace block occurs, or a preliminary refusal is issued by the IP Office. Judicial practice is implacable: for the consumer and the court, a brand is primarily a name that sounds in everyday life.

Attempts to save on legal verification at the naming stage lead to thousands in court costs, fines for unfair competition, and loss of customer trust during forced rebranding. The professional team at BrandR helps entrepreneurs build a secure business without bureaucracy. A timely audit of your brand’s sound is a reliable foundation for scaling your business.

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