How to Challenge a Competitor’s Trademark Registration: The Appeals Chamber Procedure

Imagine this: you have spent years building your brand’s reputation, only to discover a competitor in the market with a very similar name that misleads your customers. Or, even worse, you receive a cease-and-desist letter demanding that you stop using your own name because they were clever enough to register a similar trademark first. When a competitor’s TM registration becomes your problem, it feels like the only way out is to prepare for a long and expensive legal battle.

But that is not the case. There is a much faster, cheaper, and more specialized tool for resolving such disputes — the Appeals Chamber of the IP Office (UANIPIO). This is a special body within the patent office that can be called the “first line of defense” in the fight against unlawful registrations. In this guide, we will break down in detail the grounds for challenging a competitor’s certificate, how to go through the procedure in the Appeals Chamber step-by-step, and what results can be achieved without going to court.

Section 1. Grounds for Challenging a Registration

You cannot demand the cancellation of a competitor’s certificate simply because you do not like their name or consider their business unethical. Challenging a TM registration requires valid, legally defined grounds. The Appeals Chamber is not a place for emotions; it is a quasi-judicial body that operates on facts, evidence, and legal norms. Your task is to convincingly prove that the registration issued to your competitor was unlawful from the start and violates either general legal norms or your previously acquired rights. Let’s look at the main arsenal of legal arguments you can use.

1.1. Your mark was registered earlier

This is the strongest, easiest to prove, and most common argument. In patent law worldwide, there is an iron rule: “first to file, first in right.” In legal terms, this is called the right of priority. If you filed an application for your trademark earlier than your competitor, and your mark is already registered (or even still pending but has an earlier filing date), you have every right to demand the cancellation of the later registration if it is similar to yours.

How does it work in practice? Imagine you are the owner of the “Starlight Coffee” chain. You care about your brand and filed an application for this name on March 1, 2024. A few months later, a competitor opens their coffee shop and, seeing your popularity, files an application for the name “Star Light Coffee” on June 1, 2024. Due to imperfections in the examination process, their application might even be registered. However, as the owner of rights with earlier priority (from March 1), you can file an objection with the Appeals Chamber and, based on your certificate, demand that their certificate be declared invalid. Your priority date is your main trump card.

Key nuance: homogeneity of goods and services. This principle only works if your goods/services and theirs are homogeneous. That is, if you registered the “Starlight” TM for coffee shop services (NICE class 43) and the competitor did the same, the violation is obvious. But if the competitor registered “Starlight” for car repair services (NICE class 37), your interests do not overlap, and the consumer cannot confuse these two services. In such a case, there will be no grounds for a challenge.

1.2. Similarity to the point of confusion

This is a continuation of the previous point, but more complex and subjective, as it concerns not identical but similar designations. Even if the names are not exactly the same, you can demand the cancellation of the registration if the competitor’s sign is so similar to yours that it could mislead consumers regarding the manufacturer of goods or the provider of services. The Appeals Chamber evaluates this similarity from the perspective of the “average consumer” — not an expert, but an ordinary person who does not examine logos under a microscope.

The assessment of similarity is conducted based on three criteria, which are analyzed in combination:

• Phonetic similarity (sound): the names sound similar when pronounced. This is especially important for radio advertising or word-of-mouth, where information is transmitted by ear. Example: “QuickFix” and “KwikFix” for a repair service.
• Visual similarity (graphic): the designations look similar. This takes into account not only the spelling but also the font, composition, color scheme, and use of similar graphic elements. Example: “AquaLife” written in blue italics with a wave, and “AkvaLife” written in a very similar blue italic with a similar wave.
• Semantic similarity (meaning): the designations evoke the same associations, have a similar meaning, or belong to the same semantic field. Example: TM “Royal Crown” and TM “Tsar’s Wreath” for jewelry; or “Everest” and “Himalayan Peaks” for tourist equipment.

The main question the Appeals Chamber board answers is: is there a likelihood that a consumer, seeing the competitor’s product, would mistakenly think that you produced it, or that these two companies are somehow related? If the answer is “yes,” then there are all chances for a successful challenge.

1.3. The sign cannot be registered by law

There are so-called absolute grounds for refusal of registration. This means that certain designations cannot, in principle, be registered as trademarks for certain goods because they are incapable of performing their primary function — distinguishing the goods of one manufacturer from another. If your competitor somehow (due to an examiner’s error) managed to register such a sign, you have every right to demand the cancellation of such registration, even if you do not have your own TM. This is a matter of public interest.

Such designations include, in particular:

• Descriptive signs: these are designations that directly and immediately indicate the type, quality, properties, composition, weight, place, and time of production of the goods. For example, you cannot obtain a monopoly on the TM “Kyiv Cake” for cakes, “Cotton Candy” for cotton candy, or “Fast Delivery” for courier services. The reason is simple: every cake manufacturer has the right to indicate that their cake is a Kyiv cake, and every delivery service has the right to say they are fast.
• Generic terms: these are names that have entered general usage as designations for a certain type of product. Many do not know, but “thermos,” “xerox,” “pampers,” and “aspirin” were once registered trademarks, but due to their extreme popularity, they lost their distinctiveness and became generic names. This process is called “trademark genericide.”
• Misleading signs: these are designations that can deceive the consumer regarding the actual properties of the product or its manufacturer. For example, registering the TM “Natural Juice” for a drink containing only flavorings, or the TM “Swiss Watch” for watches produced in China.

1.4. Registration with bad faith intent

This ground is one of the most difficult to prove, but at the same time, it is a powerful tool for fighting unfair practices. It is related to the concept of unfair competition. Even if the competitor’s sign formally meets all criteria, you can prove that the very purpose of its registration was dishonest — not to develop their own unique brand, but to harm your business, “steal” your reputation, or unfairly benefit from your efforts.

What can indicate bad faith?

• “Patent trolling” or “TM squatting”: a competitor or a third party knew about the existence of your brand (which you successfully used but had not yet registered) and intentionally filed an application to “intercept” the name. The goal is either to block your activities or to later force you to “buy back” the rights to your own name from them.
• Actions of former partners or employees: your former business partner, director, or even SMM manager, knowing all your plans for launching a new product, quits and registers the TM you were about to launch in their own name. This is a direct act of bad faith.
• Registration to block a competitor: a large company registers not only its main TM but also dozens of similar names that its smaller competitor uses or plans to use, not to develop them, but only to create a “legal minefield” and prevent it from growing.

Proving bad faith intent is a complex task that requires gathering a convincing evidentiary base (email correspondence, witness testimony, commercial proposals, market analysis). This is exactly the case where the experience of specialized lawyers, such as the experts at BrandR, becomes decisive, as they know how to build a convincing argument based on circumstantial evidence. Read more about various manifestations of unfair competition in our article “Protection against unfair competition: from website copying to poaching clients.”

Section 2. Step-by-Step Appeal Procedure

So, you have analyzed the situation, chosen one or more valid grounds for the challenge, and are ready to act. The procedure in the Appeals Chamber is not just about writing a complaint. It is a formalized, adversarial process resembling a mini-court, where every word, every document, and every piece of evidence matters. To maximize your chances of success, you need to act methodically and without errors. Let’s walk through this path step-by-step.

2.1. Step 1. Preparation of the application and evidentiary base

This is the most important, complex, and time-consuming stage. You could say it is 90% of your success. The hearing in the Appeals Chamber is just the final presentation of your position. The main battle takes place during the preparation stage, when you form your “attacking” strategy and gather your “arsenal” of evidence.

1. Drafting the objection (application):
   Your main document is not just a letter, but a reasoned objection against the state registration of a trademark. This is a full-fledged legal document that must be drafted professionally and contain:

• Clear identification of the parties: your data (Applicant of the objection) and the data of the owner of the challenged certificate.
• Identification of the object of the challenge: the number of the TM certificate you are challenging.
• Legal justification: this is the heart of the document. Here, with reference to specific articles of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services,” you detail why, in your opinion, the registration is unlawful. For example: “We believe that the challenged TM ‘XYZ’ is similar to the point of confusion with the previously registered TM ‘ZYX’ (certificate No. 12345) in our name, which violates our rights provided for by Art. 6 of the Law…”
• Presentation of evidence: in the text of the objection, you refer to the evidence you are attaching to the application.
• Clear request (operative part): the objection ends with a clear request to the Appeals Chamber, for example: “We request that Certificate of Ukraine No. 54321 for the mark for goods and services ‘XYZ’ be declared invalid in full.”

2. Forming the evidentiary base:
   Words without evidence are worth nothing. Your success directly depends on how convincing your evidence is. The set of evidence depends on the ground you have chosen for the challenge:

• If the ground is “earlier priority”: the main evidence is a notarized copy of your TM certificate.
• If the ground is “similarity to the point of confusion”: here the evidentiary base is much broader. It can include:
  • A comparative analysis of your TM and the challenged TM, prepared by a lawyer.
  • Results of a sociological survey showing that consumers confuse your brands.
  • Screenshots from social networks where customers leave comments confusing your products.
• If the ground is “unfair competition”: this is the most difficult case to prove. You will need evidence of the competitor’s intent:
  • Email correspondence where they offered you to “buy back” your own name.
  • An employment contract confirming that the owner of the challenged TM is your former employee.
  • Witness testimony.

It is at this stage that the experience of lawyers, such as the experts at BrandR, becomes decisive. They will not only competently draft the objection but also help gather the evidentiary base that will be most convincing to the Appeals Chamber board.

2.2. Step 2. Filing the objection with the Appeals Chamber

When your “legal weapon” — the objection and the package of evidence — is ready, it is time for the official “shot.” Filing documents with the Appeals Chamber of the Ukrainian National Office of Intellectual Property and Innovations (UANIPIO) is a formal procedure, but it requires compliance with certain rules.

What is included in the full package of documents:

• Application for filing an objection in the prescribed form.
• The objection itself in several copies (for the Chamber and for the other party).
• All evidence, numbered and formatted as attachments to the objection.
• Document on payment of the state fee. An official fee is charged for filing an objection and its consideration. Failure to pay it is a formal ground for leaving your application without consideration. The amount of the fee is fixed, and its current amount must be checked on the UANIPIO website.
• Power of attorney for the representative, if your interests are represented by a lawyer or patent attorney.

After receiving your package of documents, the Appeals Chamber checks it for compliance with formal requirements, and if everything is in order, it opens proceedings in the case, sending a copy of your objection to the owner of the challenged certificate.

2.3. Step 3. How the case is considered

After the proceedings are opened, an adversarial process begins, which consists of several stages:

1. Exchange of documents: the owner of the challenged TM receives your objection and has the right to prepare and submit a response to the objection within a set period (usually 2 months). In this response, they set out their counterarguments. After this, you, in turn, have the right to submit a reply to the response. This “paper ping-pong” allows the parties to fully disclose their positions even before the oral hearing.
2. Scheduling the hearing: after the exchange of documents, the Appeals Chamber sets the date and time of the hearing.
3. Board hearing: the case is considered by a board consisting of several experienced experts from the Appeals Chamber. The hearing takes place in a format resembling a court session. Each party (or their representative) makes a speech, presents their arguments, and answers questions from the board members and the opponent.
4. Decision making: after hearing the parties and studying all case materials, the board retires to the deliberation room to make a decision.

The entire process from filing the objection to making the final decision usually takes from 6 to 12 months, which is significantly faster than considering a similar case in courts of several instances.

Section 3. What happens after the Chamber’s decision

The board hearing has ended, the parties have expressed their positions, and the Appeals Chamber has issued its decision. This moment is the culmination of the entire process, but not its final point. Depending on what this decision is — in your favor or not — your further actions and strategy will differ radically. Understanding the possible scenarios will allow you to be prepared for any outcome.

3.1. If the decision is in your favor

This is the best possible result, meaning your arguments and evidence were convincing, and the Appeals Chamber agreed with your legal position. The board may decide to declare the certificate invalid in full or in part.

What does “declaring invalid in full” mean?

• Cancellation from the moment of registration: this means that your competitor’s certificate is canceled as if it never existed. The registration is considered unlawful from the very date it was made.
• Making changes to the register: based on the decision of the Appeals Chamber, UANIPIO makes the corresponding entry in the State Register of Certificates for Marks for Goods and Services and publishes this information in its official bulletin. From this moment, your competitor loses any exclusive rights to this designation.
• Your further actions: After such a decision, the “ball is back in your court.” You can:
  1. File your own application for TM registration, if you haven’t already. Now the obstacle in the form of the competitor’s registration no longer exists.
  2. Demand that the former owner stop using the designation. Now you have every right to send them claims, as their use has become illegal.
  3. Go to court for compensation. It is important to understand that the Appeals Chamber does not award damages. But its decision is “rock-solid” evidence with which you can go to court and demand compensation for damages caused to you during the entire period of the illegal registration.

Sometimes the Appeals Chamber may conclude that the registration violates your rights not in full, but only in part. For example, if your TM is registered for restaurant services (class 43), and the competitor registered a similar TM for a wide list of services, including restaurants, cafes, and bars. In such a case, the Chamber may declare their certificate invalid only in the part concerning restaurants, cafes, and bars, leaving it valid for other services that do not overlap with yours.

3.2. If you were refused (possibility to go to court)

Unfortunately, another result is also possible. The board may conclude that your evidence was not convincing enough and your arguments were weak, and refuse to satisfy your objection. This means that the competitor’s certificate remains valid.

Does this mean a final defeat? Absolutely not.
The decision of the Appeals Chamber is not a final verdict. The legislation gives you the right to challenge this decision. But the next instance will no longer be an administrative body, but a court.

Algorithm of actions in such a case:

1. Receipt and analysis of the decision: you receive the full text of the Appeals Chamber’s decision, which details exactly why you were refused. Together with your lawyer (for example, with the BrandR team), you must carefully analyze the board’s reasoning and find its weak points.
2. Preparation of a statement of claim to the court: you have a statutory period (usually two months from the moment of receiving the decision) to prepare and file a statement of claim with the commercial court. In this claim, you will ask the court not just to cancel the certificate, but to cancel the decision of the Appeals Chamber and oblige UANIPIO to declare the certificate invalid.
3. New consideration: the court process is a completely new consideration of the case. You can provide the same evidence, as well as attract new ones, conduct forensic examinations, and call witnesses. The court is not bound by the conclusions of the Appeals Chamber and will make its own independent decision based on all presented evidence.

Although the path through the court is longer and more expensive, it gives you a second chance. There are many cases where the court ruled in favor of the applicant, canceling the previous decision of the Appeals Chamber. Therefore, a negative decision of the Chamber is not the end of the fight, but only the completion of its first, pre-trial stage.

Conclusions

So, discovering an unlawful trademark registration by a competitor is not a verdict for your business, but only a signal for decisive and competent action. And, as we have seen, this does not always require preparing for an exhausting legal war immediately. There is a specialized, effective, and significantly faster tool created specifically for such situations.

The main conclusion to be drawn: the Appeals Chamber of UANIPIO is a powerful and effective mechanism for the pre-trial protection of your rights. It is not just a bureaucratic instance, but a full-fledged quasi-judicial body where your case is considered by highly specialized experts. Successful cancellation of a mark certificate of a competitor in the Appeals Chamber allows you to quickly and with less expense “clear” the market, remove a legal obstacle to your own registration, and stop misleading consumers. This is a targeted strike at the legal root of the problem.

However, do not underestimate the complexity of this procedure. This is not filing a simple complaint, but a full-fledged adversarial process that requires deep knowledge of legislation, judicial practice, and the ability to build a convincing evidentiary base. The success of your case depends 90% on how competently the initial objection is drafted and the evidence is gathered. That is why the participation of a specialized professional is not a luxury, but a critical necessity. An experienced TM challenge lawyer, such as the specialists from the BrandR team, knows all the “pitfalls” of the procedure, understands the logic of the Appeals Chamber board’s thinking, and will help form a legal position that will have maximum chances of success. This is an investment that will save you much more — time, money, and, most importantly, the right to your own brand.