Client: “Privatinvest” LLC

Essence: Trademark registration

Specialists: Victoriia Ostapchuk, Victoriia Germasheva

Result: Successful negotiation on preliminary refusal in trademark registration

Representation of the Customer’s (national chain of “Brain. Smart Purchasing Stores” and “” online store specializing in wholesale and retail of computers, electronics, peripheral equipment and software) interests before the Patent Office of Ukraine regarding the Trademark registration.

The Office issued a preliminary refusal to register the Client’s trademarks «», «» and «» arguing that a similar word signs

«» (Certificate № 36656 issued on December 15, 2003), «» (Certificate № 72832 issued on February 15, 2007) have previously been registered in Ukraine in the name of «KOMEL» LLC, «» (Application № m 2017 17497 of August 8, 2017) filed on behalf of “AlibabaGroupHolding Ltd”, «» (Certificate № 218360 issued on October 25, 2016) in the name of «BRAIN TV» LLC, «» (Certificate № 237286 issued on February 12, 2018) in the name of «Talan Group» LLC, «» (Certificate № 242732 issued on June 11, 2018) in the name of a natural person, «» (Certificate № 220855 issued on December 26, 2016) in the name of the charitable organization «BrainbasketFaundation».

In order to challenge the decision of the Patent Office to refuse registration of the mark, the agency’s experts built a strong strategy which was based on the following arguments:

—the Client’s mark is recognized by Ukrainian and foreign consumers in relation to the specified activity which results from the prolonged use of the mark by the Client (over 20 years);

—the areas of activity in which the Client’s sign and the opposed ones are used are different, which prevents the consumers from confusing the signs;

—some of the opposed signs are not applied, as a consequence, they are not known to the Ukrainian consumer;

—there is a legal relationship with one of the companies belonging to the owners of the opposed signs, who gave their consent to the registration of the Client’s trademarks.