Referring to Someone Else's Trademark in an Article: Where Is the Line?

Third-party brands are mentioned online every day – in reviews, comparisons, blogs and educational materials. Much of this is entirely lawful. But an “informational article” can function not as neutral content, but as a tool for driving customers to a commercial website. Where exactly does permissible referential use end and infringement begin?

The Dispute

This question was at the heart of case No. 910/3946/24 before the Supreme Court of Ukraine. The claimant sought to stop the use of a word sign in relation to Class 41 services online – in the defendant’s website content, advertising, business documentation and Google search.

The facts look narrow at first glance: an English-language article was published on the website of an entrepreneur active in the same field of services. Its title and body used a word sign reproducing the word element of the claimant’s registered mark. The claimant argued this was infringement – a confusingly similar sign used for related services. The defendant maintained it was purely an informational and educational publication.

📋 How the case progressed
First instance: claim granted; use of the sign prohibited on the specific web page
Court of appeal: prohibition extended to the website content as a whole (online infringement is not confined to a single url)
Supreme Court: set aside the lower decisions and dismissed the claim
The Court’s focus: whether the sign performs the function of a trademark – that is, whether it individualises goods or services

Not Every Mention Is an Infringement

A trademark does not give its owner an absolute monopoly over a word in every possible context. Where a journalist writes about a brand, a researcher analyses a market, a reseller honestly indicates product compatibility, or a blogger publishes a neutral review, the mere mention does not in itself amount to infringement.

The Supreme Court’s approach is instructive: the analysis centred not on the fact that the sign appeared online, but on whether it performs the function of a trademark. The Court held that, to establish use, the certificate holder must specify exactly how the defendant uses the mark and produce evidence of the acts listed in Article 16(4) of the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”.

Readers familiar with EU practice will recognise the underlying logic: liability turns on use in the course of trade that affects the essential function of the mark, while Article 14 of Directive (EU) 2015/2436 carves out descriptive and referential use made in accordance with honest practices. Article 16(6) of the Ukrainian Law performs a comparable role.

📋 Two extremes to avoid If every textual mention of a third-party mark were automatically infringement, this would unduly restrict freedom of information, professional criticism, education and honest commentary. Yet if any use could be excused simply by calling it “informational”, trademark owners would enjoy weaker protection in the digital environment.

The Real Question: Not “Is It an Article?” but Where and Why It Was Published

Format does not settle the matter. Calling a text an “article” does not make the use neutral. The very same phrase can carry different legal significance depending on context.

On an independent educational portal, a mention may be neutral. On the website of a trader offering related services, the same phrase may work differently: driving traffic, building an association, boosting search visibility, or creating the impression of a connection with the rights holder.

In this case the claimant emphasised that the defendant’s website advertises Class 41 services, and that a search for the disputed sign returned the defendant’s site first in Google results. It is precisely in such circumstances that the practical line runs between neutral reference and use for commercial advantage.

A Three-Step Analysis: Use, Prohibition, Exception

A key legal issue in the case is the interplay of paragraphs 4, 5 and 6 of Article 16 of the Law. They are best treated as three distinct steps:

✅ Step 1 Was there an act of use? Article 16(4) – forms of trademark use, including in advertising, business documentation and on the Internet. The question: did use of the sign occur at all.

✅ Step 2 Can it be prohibited? Article 16(5) – the scope of the exclusive right: identity or similarity of signs, relatedness of goods and services, likelihood of confusion or association.

✅ Step 3 Does an exception apply? Article 16(6) – use without the owner’s consent. This is where good faith, descriptiveness and informational or non-commercial character come in.

Difficulties arise when these steps collapse into one. If a court concludes at the outset that the sign is not used as a trademark because the material is “informational”, the analysis of confusion risk, commercial context and possible exceptions may remain incomplete.

A sequential approach is more persuasive: first establish the fact and context of use; then determine whether it falls within the exclusive right; and only then examine whether the defendant has proved an exception.

Who Must Prove the Use Was “Informational”?

This point is fundamental. In commercial proceedings each party proves the circumstances it relies on – as the Supreme Court reiterated here. So where a defendant claims it used a third-party mark purely for informational and educational purposes, that argument must be backed by evidence, not left as an assertion.

A defendant may show that the material is genuinely neutral in content; is unconnected to the sale or promotion of related services; is not deployed in SEO to capture search traffic; contains no commercial calls to action; creates no impression of a link with the mark owner; and is not embedded in the site architecture as a promotional element.

Conversely, the owner must prove not only similarity of the signs but also the context: the commercial nature of the site, relatedness of the services, search visibility, and placement of the sign in URLs, headings, body text, meta tags or advertising blocks. Proving context is the key to future disputes.

Expert Evidence: Where Special Knowledge Ends and Law Begins

Court-appointed expert examinations are common in trademark disputes. But an expert opinion does not replace the court.

An expert can address matters requiring special knowledge: whether signs are confusingly similar, which elements dominate, whether an association may arise. An expert should not decide questions of law: whether a given act constitutes “use of a trademark” within the meaning of the statute, whether the exclusive right was infringed, or whether an exception applies.

📋 The Supreme Court on expert evidence Determining whether use of a trademark has occurred in a given legal relationship involves applying substantive law to the established facts, and is therefore a question of law rather than one requiring special knowledge.

The approach is sound, but it sets a high bar for the reasoning of the judgment. Because questions of law fall within the court’s exclusive competence, its findings cannot be formal or declaratory: the court must identify which facts it relies on, which evidence supports the informational or commercial character of the use, and how this maps onto paragraphs 4, 5 and 6 of Article 16.

Judicial Discretion and Its Limits

Courts have latitude in assessing evidence and in legal characterisation. Yet in disputes over online trademark use, that discretion must be especially well reasoned, because the court assesses not only the text but the digital and commercial context around it.

A finding that use was “informational” should not rest on a general impression of the article. A court may legally characterise the nature of the use, but it cannot substitute its own assumption for proof of that nature. Where a party invokes informational or non-commercial use, the factual basis must be established in the proceedings.

Why Prohibiting a Single url May Not Work

Online infringement has a technical peculiarity: a page can be deleted and recreated minutes later with the same text at a different address. In this case the appellate court took into account that the same sign, in the same article, had been re-published on a new web page – one of the reasons it favoured a broader prohibition.

The practical lesson for rights holders: in online cases, analyse not just the specific page but the mechanism of infringement. Injunctive relief should be framed so that it cannot be circumvented by simply moving the text to another address.

Conclusion

The ruling in case No. 910/3946/24 opens an important debate on the limits of trademark use online. Its significance lies in placing the function of the mark and the context of use at the centre of the analysis.

The approach is broadly justified: not every mention of a third-party mark is infringement, and a trademark should not become a tool for banning any informational or analytical use of a word. The key question remains how to distinguish neutral reference from use for commercial advantage – particularly where the material sits on the website of a party offering related services.

The answer can hardly be reduced to “it is an article, therefore permitted” or “it is someone else’s mark, therefore prohibited”. The line runs where an informational mention begins to operate, in fact, as a tool for commercially attracting an audience or creating an association with another party’s mark. Future practice must therefore be evidence-driven rather than formal.

This material is of a general informational nature, reflects the law and case law as at the date of publication, and does not constitute legal advice. Any views expressed are those of the author and do not create an attorney-client relationship. For an assessment of your specific situation, we recommend consulting a qualified professional.