Geographical Indications in Ukrainian Trademark Clearance

It is a common occurrence in Ukraine (especially in the food and beverage industry) to see businesses adopt “trending” designations (words, phrases) as part of their daily operations, PR campaigns and, by extension, their trademark applications (“TM application”). In Ukrainian trademark practice, trademark clearance searches traditionally focus on earlier trademarks, while geographical indications (GIs) are often overlooked. This approach creates significant legal risks, particularly in the food, beverage and agricultural sectors, as well as in connection with services relating to the commercialisation of such goods, where GIs play an increasingly important role.

In the Ukrainian context, failure to check for GI compliance prior to filing a TM application that includes or imitates GI is generally rooted in: (i) the general obliviousness of GI as a thing; (ii) failure to recognise that a valid GI precludes registering an identical or similar trademark; (iii) conduct amounting to exploitation of the reputation of a GI; and (iv) conduct giving rise to the risk of misleading consumers, particularly with regard to the producer of the goods and their specific quality, characteristics and true origin.

Check for connotations

The most versatile rule of thumb to be used when registering a trademark that may potentially conflict with a geographical indication is whether or not the mark could be perceived as an imitation of that GI. Even a mere association or reminiscence between the trademarked goods and a valid geographical indication may be sufficient to jeopardise the entire application. Importantly, this assessment focuses primarily on the mark itself. Additional elements – such as disclaimers, explicit indications of the true origin (e.g., “Made in Ukraine”), or other explanatory wording – do not necessarily eliminate the risk. If the dominant element of the mark still triggers a mental link with the protected GI, the application remains vulnerable.

In practice, this assessment goes beyond visual or phonetic similarity. Even where a mark does not reproduce a geographical indication as such, it may still be problematic if it evokes it – meaning that the relevant public, when confronted with the mark, is led to think of the GI-protected product. An emblematic example from European practice is the “Gorgonzola” case (C-87/97), in which the European Court of Justice found that the trademark “Cambozola” evoked the protected GI “Gorgonzola” due to the identical ending and the same number of syllables, despite the different prefixes. Similarly, the use of visual elements, such as the shape of a specific product or cultural symbols associated with a region, can be deemed an unlawful evocation even without textual identity.

This stringent approach is firmly rooted in Ukrainian law through the EU–Ukraine Association Agreement, which provides enhanced protection for GIs. The Association Agreement grants protection to a vast number of EU geographical indications with an effective priority date of 1 January, 2016. However, certain legacy uses were preserved for a 10-year transition period that expired on 1 January 2026.

When geographical indications enter the trademark arena

The first and most straightforward scenario where a trademark and a geographical indication intersect is the registration of a trademark that deliberately incorporates a geographical indication. Such registration, however, is possible only where:

• The applicant qualifies as a legitimate user of a geographical indication (for example, where the applicant is a producer, processor or bottler of the wine in question), and
• The application is strictly limited to goods or services falling within the scope of that indication. In other words, trademark registration cannot be used to expand the legal reach of a geographical indication beyond its protected specification.

Applicants should also be aware that a geographical indication cannot be registered as a trademark as such (word by word), as it would be regarded as descriptive of the goods concerned and, therefore, incapable of distinguishing their commercial origin, as well as their quality, properties, and characteristics.

Non‑related goods as a gateway for GI use in TM applications?

An important caveat arises where a registered geographical indication is incorporated into a trademark applied for non‑related goods. For example, where a TM application for cocoa‑based products incorporates a geographical indication protected for alcoholic beverages or cheese, the lack of relatedness between the goods may, at first glance, allow the mark to pass the absolute‑grounds examination. In such cases, the use of a GI is not automatically objectionable.

Nevertheless, we would not recommend filing such applications, as Ukrainian law provides several paths to challenge them, most notably on the grounds of their potentially deceptive nature. In practice, any TM application incorporating a geographical indication may mislead consumers as to the origin of the goods – just like placing an Italian flag on cheese that is not of Italian origin or adding typical markers, such as “Spumante”, which create the impression that the relevant goods have Italian origin, belong to a particular production tradition, and bear a link by association to a GI-protected product. This risk is further amplified for GIs with a well-established reputation. In such instances, even the use of a GI for unrelated goods may be challenged if it appears to take unfair advantage of, or is detrimental to, the reputation or distinctive character of the protected designation.

Lessons from the Ukrainian IP office Appeal Board historical practice

Lesson 1. Absence of opposition may significantly weaken the practical enforcement of GI protection.

Decisions adopted by the Appeal Board of the Ukrainian IP Office from 2017–2019 demonstrate that GI‑related trademark assessment in Ukraine was, at that time, highly evidence‑sensitive. In the Oyster Cava Bar appeal (2019), the applicant successfully secured trademark registration for Class 43 services by proving that it was merely an official importer of genuine CAVA products (e.g., not an authorized GI user) and that its services were directly connected with the sale and serving of authentic CAVA. Notably, no opposition was filed by CONSEJO REGULADOR DEL CAVA, the GI rights holder.

A similar evidentiary approach can be observed in the Château Moulin appeal (2017), where the applicant supported the trademark application with documentation merely confirming the French origin of the wine materials used in production.

While such an approach would be difficult to reconcile with the Ukrainian IP Office’s current, more restrictive practice regarding geographical indications, these cases illustrate a point: absence of timely opposition may effectively undermine GI-enforcement, even where a protected indication is clearly implicated. For GI rights holders, proactive monitoring and prompt filing of an opposition remain an absolute necessity.

Lesson 2. House marks: an old but visible enemy of GIs

Earlier Appeal Board decisions may give the impression that adding a “house mark” (i.e., the manufacturer’s primary brand name) creates a safe harbour for using a protected GI. In KONYAK KOBLEVO (2016) and SHABO KONYAK (2017), the Board appeared willing to accept that the presence of a strong house mark was enough to neutralise GI‑related concerns.

These cases, however, should not be overread. They reflect a transitional legal landscape influenced by the 10-year grace period granted under the EU–Ukraine Association Agreement. With this transitional period now concluded, such approaches have become legally obsolete. Following harmonisation with EU law, a GI is no longer viewed as a mere “descriptive element” that can be offset by a primary brand. It is an independent object of protection. Even if a label features a prominent house mark, the inclusion of a term like KONYAK now may be viewed by the IP Office as a direct infringement of the rights of French producers (Cognac). This is because the use of the protected name “parasitises” the GI’s established reputation, and the presence of a secondary brand does not cure the unlawful use of a protected designation.

In practice, this shift means that if a trademark application incorporates a geographical indication and the applicant is not an authorised user of that GI, the examiner will normally issue a provisional refusal and to overcome such a refusal, the applicant must provide concrete evidence confirming their right to use the protected designation. This may include, for example, certificates confirming compliance with the product specification or proof of inclusion in the register of authorised users of the geographical indication. Without such evidence, relying on the strength of a house mark or historical precedents is no longer a viable strategy for securing trademark protection in Ukraine.

By way of conclusion

From a practical perspective, GIs should be treated as a separate and important element of trademark clearance in Ukraine, especially in the food, beverage, alcohol, agricultural products, and hospitality sectors.

A proper trademark clearance involving potential GI conflicts should typically include:

• searches for registered GIs and pending GI applications in Ukraine;
• searches for EU GIs protected in Ukraine under the EU-Ukraine Association Agreement;
• assessment of phonetic, visual, and semantic similarity, not only identical names;
• assessment of possible imitation or evocation (association with a protected GI);.
• assessment of the reputation of the GI and potential unfair advantage;
• assessment of the relationship between goods and services.

In practice, failure to conduct trademark clearance involving potential GI conflicts may lead not only to opposition but to refusal of trademark registration, invalidation actions, rebranding costs, product relabelling and disputes with GI rights holders or manufacturer associations.

For these reasons, GIs should be considered alongside earlier trademarks when conducting trademark clearance in Ukraine, rather than being treated as a separate or secondary issue.