Generic Trademarks in Ukraine: When a Brand Is Just a Product Name

You hold a trademark certificate – seemingly a well-protected asset. But what if your mark is, in reality, simply the common name of a product that dozens of manufacturers have made for decades? Such a registration can be declared invalid, and a recent ruling of Ukraine’s Supreme Court shows exactly how.

The Law Distinguishes Two Separate Situations

Both Ukrainian law and EU law proceed from a clear principle: a sign that merely names a product cannot be appropriated by a single business. Two distinct legal scenarios, often confused, must be kept apart.

First: the sign was already customary for the relevant goods or services at the filing date. Under Article 6(2) of the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”, such signs are denied protection unless they had acquired distinctiveness through use before the filing date. This is a ground to refuse registration and, where a mark was nonetheless registered, to invalidate the certificate.

Second: the mark was distinctive when registered but later became the common name of the product through the owner’s acts or omissions – so-called “genericide”. Article 18 of the Law allows a court to terminate the certificate on this ground. Classic global examples include “cellophane”, “thermos” and “escalator”, all once proprietary brands.

The distinction is not academic: the first scenario concerns the very conditions of protection and potential invalidity, while the second concerns the termination of rights in a mark that is still on the register.

The Essential Function and Why a Product Name Cannot Perform It

In EU law the starting test is constant: can the sign perform the essential function of a trademark – to identify the commercial origin of goods, enabling the consumer to distinguish, without any likelihood of confusion, one undertaking’s goods from another’s? The Court of Justice of the EU articulated this function in Arsenal Football Club (C-206/01) and a line of later cases.

Ukraine’s Supreme Court applies essentially the same logic. In its formulation, a trademark must have an independent, arbitrary character in relation to the marked object and be perceived as an invented symbol that does not reflect the commodity nature of the goods. Only then can it set the product apart from the mass of identical goods sharing the same qualities. A name that describes the product itself simply cannot do this.

📋 The Supreme Court’s key holding Registering a customary designation as a trademark in the name of one party – without identifying the specific manufacturer in a recognisable way – effectively monopolises the name of the product for one of its makers, and therefore fails to perform the function of a trademark.

The promedol Case: How It Works in Practice

The leading recent authority is the Supreme Court’s ruling of 6 May 2025 in case No. 910/16093/18. Kalceks, a Latvian pharmaceutical manufacturer, sought to invalidate the Ukrainian certificates for the marks “promedol-zn” and “promedol промедол”, registered by a Ukrainian company for Class 5 goods (pharmaceuticals).

The basis of the claim: “Promedol” is the common name of a specific analgesic – an opioid synthesised back in 1952 – produced for decades by numerous manufacturers across many countries. A forensic examination confirmed that, well before the filing dates, the sign was firmly associated by consumers and professionals with a type of product rather than with any single company. Even Cabinet of Ministers procurement decrees referring to the drug evidenced its generic character.

The Supreme Court set aside the appellate ruling and reinstated the first-instance decision invalidating the certificates in full. It confirmed that the marks failed the conditions of protection because they consisted solely of a customary designation, and that adding the non-distinctive letter combination “zn” neither conferred distinctiveness nor pointed to any particular manufacturer.

For international rights holders this case is particularly instructive: the party that successfully cleared the register was itself an EU company seeking to enter the Ukrainian market – a reminder that Ukrainian IP litigation is a realistic and effective avenue for foreign businesses.

The EU Dimension

The Ukrainian approach is aligned with settled cjeu case law, which the Supreme Court expressly treats as an interpretive benchmark in the context of legislative harmonisation under the EU–Ukraine Association Agreement. In EU law the absolute ground against generic signs is set out in Article 7(1)(d) of Regulation (EU) 2017/1001 and Article 4(1)(d) of Directive (EU) 2015/2436, while post-registration genericide is governed by Article 58(1)(b) of the Regulation and Article 20(a) of the Directive.

In weisse seiten (T-322/03) the General Court stressed that genericness is assessed only by reference to the specific goods or services and the perception of the relevant public. In Kornspitz (C-409/12) the Court held that a mark may be revoked where end consumers perceive it as the common product name – even if sellers know it is registered – and that owner inactivity includes the failure to encourage use of the sign as a trademark. In the “spinning” case (T-246/20) the Court set out two cumulative conditions for genericide: the mark has become the common trade name for the product, and this resulted from the owner’s acts or omissions.

What This Means for Your Business

The practical lessons are simple yet routinely underestimated at the naming stage:

• Choose strong, fanciful signs. The more a name describes the product or its qualities, the higher the risk of refusal or later invalidation.
• Guard against dilution of your own mark. If your brand starts being used as the generic name of the product, defend its status actively; otherwise you may lose rights to genericide over time.
• Scrutinise third-party marks. Where a competitor tries to monopolise a generic term in your sector and blocks your market entry, there are effective grounds to challenge the registration – as the claimant did in promedol.
• Pharma deserves special care. Names derived from International Nonproprietary Names (INNs) or established drug designations generally lack distinctiveness and cannot be reserved to a single manufacturer.