Pharmaceutical Trademark Protection in Ukraine: Litigation Risks and Prevention Strategies for Brand Owners

Ukraine’s pharmaceutical market is simultaneously one of the country’s most competitive and most legally contentious commercial environments. As the number of manufacturers and generics producers grows, so does the frequency of trademark disputes – disputes that regularly consume years of litigation time and costs running into seven figures.

For foreign pharmaceutical companies seeking to register, protect, or enforce a drug brand in Ukraine, the legal landscape presents challenges that do not exist in most EU or us markets. Ukrainian courts grapple with expert witnesses who contradict each other, with brand names that blur the line between proprietary marks and generic terminology, and with the question of how a well-known mark’s status actually functions in practice – an issue that the Grand Chamber of the Supreme Court addressed with landmark clarity in 2024.

This article examines the distinctive features of pharmaceutical trademark disputes in Ukrainian courts, the legal framework for categorising drug names, and the strategic choices brand owners can make to minimise litigation risk before disputes arise.

📋  Scope note:  Pharmaceutical trademark disputes account for approximately 15% of all IP cases litigated in Ukraine in the period 2020–2025, according to the authors’ practice analysis. Average litigation duration: one to three years per case. Combined legal costs (court fees, expert witnesses, counsel) frequently reach seven-figure sums.

Part I  |  The Litigation Environment

1.1  The Expert Witness Problem

One of the most persistent structural problems in Ukrainian pharmaceutical IP litigation is the quality and consistency of expert evidence. Under Article 102 of the Civil Procedure Code and Article 112 of the Commercial Procedure Code, a court may order a forensic examination when specialist knowledge is required to establish facts relevant to the case.

In practice, pharmaceutical trademark disputes frequently involve not one but two or even three successive expert examinations – with contradictory results. A case concerning the marks хондроксид and хондрасил (Case No. 21/80-59/20) illustrates the problem with unusual clarity: the first expert found a high degree of similarity between the marks; the second found a moderate degree; the third concluded there was no risk of confusion at all. Such divergence does not merely delay proceedings – it calls into question the reliability of expert assessment as a mechanism for resolving pharmaceutical trademark disputes.

For brand owners, the practical implication is that litigation outcomes in this category of cases are less predictable than in most other IP disputes. A strong-looking mark on paper may still face years of inconclusive expert proceedings before a court reaches a definitive finding.

⚠️  Litigation risk:  Contradictory expert evidence in pharmaceutical trademark cases is not an anomaly – it is a structural feature of the landscape. Pre-litigation investment in registration strategy and evidence documentation reduces the dependence on expert witnesses whose conclusions cannot be predicted.

1.2  Distinctiveness: The Central Battleground

The fundamental requirement for trademark registration in Ukraine – including for pharmaceutical marks – is distinctiveness: the ability to distinguish the goods of one undertaking from those of another. This requirement is established in Article 6 of the Law of Ukraine on the Protection of Rights to Marks for Goods and Services.

In the pharmaceutical context, this requirement creates a recurring conflict. Drug names frequently incorporate descriptive medical elements – prefixes indicating therapeutic category (Кардіо- for cardiac drugs, гастро- for gastric preparations, гепа- for hepatic medications), suffixes characteristic of pharmaceutical forms (-ол, -ин, -ан), and fragments of International Non-Proprietary Names (INNs) – which are precisely the elements that regulatory bodies and generic manufacturers need to remain available in the public domain.

The Supreme Court’s ruling of 6 May 2025 in Case No. 910/16093/18, concerning the mark promedol промедол, stated the principle directly: a trademark’s content must have an independent, arbitrary character in relation to the goods it designates – it must be perceived as an invented symbol that does not reflect the intrinsic qualities or properties of the goods. Only in this way can a mark perform a distinguishing function.

In practice, marks that are substantially composed of descriptive medical elements will routinely be refused registration, or will have their registration invalidated when challenged. The Supreme Court confirmed this in its ruling of 28 January 2020 in Case No. 910/20564/16, holding that farmak’s marks for диазолін (and variants) did not satisfy the conditions for legal protection because they consisted exclusively of designations that were commonly used to identify goods of that type.

⚖️  Supreme Court – Feb 2026 (Case No. 910/16718/20):  The Commercial Court of Cassation confirmed: a designation that has become generic for goods of a particular type – used by multiple manufacturers for products with the same characteristics – loses its ability to individualise the goods of any specific manufacturer and cannot be protected as a trademark.

1.3  The Three Categories of Drug Names

Ukrainian law – principally governed by MoH Order No. 426 of 26 August 2005 – distinguishes three categories of pharmaceutical names, each with different IP status.

Category	Examples	IP status
International Non-Proprietary Names (INNs)	paracetamol, ibuprofen, amoxicillin	Public domain – cannot be subject to exclusive rights
Commonly accepted names	analgin	Public domain – cannot be subject to exclusive rights
Trade (commercial) names	Nurofen®, panadol®, vitrum®	Protectable as trademark / commercial designation

The conflict arises when a manufacturer attempts to register a trade name that incorporates elements of an INN or a commonly accepted name – for example, ‘paracetamol plus’ or ‘ibuprofen-med’. Such applications are routinely refused, and existing registrations of this type are vulnerable to invalidation challenges by competitors.

Manufacturers who rely on names that blend INN elements with proprietary additions face a specific strategic risk: the INN component remains unprotectable, leaving only the combination as the protectable element. If the combination is not sufficiently distinctive, the entire mark may be refused.

1.4  Well-Known Marks: A Powerful but Limited Instrument

The status of a ‘well-known mark’ under Ukrainian law confers broader protection than a standard registration – including against identical or similar marks outside the registered classes. This status has been used as a strategic weapon in several high-profile pharmaceutical disputes.

The Grand Chamber of the Supreme Court’s ruling of 17 April 2024 in Case No. 910/13988/20, arising from the protracted dispute between darnytsia and lubnyfarm over the mark цитрамон, established a principle of fundamental importance. Lower courts had found the цитрамон mark to be well-known as of 1 January 1997 and had invalidated the competitor’s registration. The Grand Chamber reversed the approach and clarified: the recognition of a trademark as well-known is not an independent method of acquiring rights – it is merely a condition for obtaining protection. Any court decision establishing that a mark is well-known is effective only inter partes; it cannot be applied against third parties who are not parties to those proceedings.

The implication is significant: even a clearly well-known pharmaceutical brand cannot use the well-known mark status as a universal weapon against all competitors. Its effect is bounded by the specific dispute in which it is established.

📌  Strategic implication:  Well-known mark status is a litigation tool, not a registration substitute. It shifts the burden of proof in a specific dispute but does not create erga omnes rights equivalent to registration. Pharmaceutical brand owners operating in Ukraine should maintain active trademark registrations rather than relying on well-known mark recognition.

Part II  |  Building a Registrable Pharmaceutical Trademark

2.1  Preliminary Clearance Search

The first – and non-negotiable – step in any pharmaceutical trademark strategy in Ukraine is a comprehensive clearance search. The search must extend beyond the national UANIPIO database to include the Madrid System international register, the MoH drug registration database (to identify names already in commercial use), INN lists published by the World Health Organisation, and standard medical terminology databases.

The purpose is not merely to avoid identical marks. Ukrainian courts and UANIPIO consider the risk of consumer confusion across phonetic, visual, and semantic dimensions – meaning that a mark that clears an identical-match search may still face a serious challenge from a similar earlier mark. A thorough clearance analysis maps this broader risk landscape.

Critically, the clearance search should also encompass designations that are not registered but have been in substantial commercial use. Under Ukrainian IP law, long-standing unregistered use of a designation can provide grounds to oppose a new registration – a risk that standard database searches will not reveal.

2.2  The Three Dimensions of Distinctiveness

To survive both registration examination and litigation challenge, a pharmaceutical trademark must be differentiated from competitors across all three recognised assessment dimensions.

Phonetic differentiation is particularly important in the pharmaceutical sector, where drugs are frequently recommended and ordered orally – by physicians prescribing, by patients requesting, and by pharmacists dispensing. A mark that sounds too similar to an existing brand creates confusion risk at the point of prescription and dispensing, which is precisely the context that regulators and courts focus on. Differentiating factors include syllable count, stress pattern, dominant consonants, and overall aural rhythm.

Visual differentiation governs how the mark appears on packaging, labels, and prescriptions. Differences in length, initial and terminal letters, and letter combinations are all relevant. The commercial context – a patient reading a label independently – sets the standard against which visual similarity is assessed.

Semantic differentiation addresses the meaning or conceptual content of the mark. Pharmaceutical marks that describe the therapeutic action or composition of the drug reduce their own distinctiveness and invite challenge. The more a mark’s meaning is independent of medical terminology – the more it is genuinely invented rather than descriptive – the stronger its position in both registration and litigation.

2.3  Strategies for Incorporating Descriptive Elements

The practical challenge is that pharmaceutical companies often have legitimate commercial reasons to incorporate descriptive elements – consumer recognition of a therapeutic category can be commercially valuable even if legally risky. Three techniques allow descriptive elements to be incorporated while preserving registrability.

Combination: pair the descriptive element with a fanciful or invented word. The mark кардіомагніл® (combining a therapeutic prefix with an invented suffix) retains informational content while the combination as a whole achieves distinctiveness.

Transformation: substantially alter the descriptive element phonetically or graphically so that the resulting mark is no longer a direct description of the active ingredient. The transition from ezomeprazole to nexium® illustrates this: the commercial mark retains associations without being a direct description.

Synthesis: create a unique combination of two descriptive elements so that the resulting compound acquires its own recognisable identity. Гепатромбін® (combining references to hepatic and coagulation effects) achieves independent brand recognition while incorporating therapeutic references.

⚠️  Registration risk:  Even a creative mark can be refused if it misleads consumers about the drug’s properties or creates a false impression of its therapeutic effect. Invented marks that imply efficacy or safety claims beyond what the product delivers may face refusal on public interest grounds.

2.4  Composite Marks and Graphic Elements

A composite mark – combining a word element with a distinctive graphic – provides both extended protection and reduced confusion risk. Under Article 16 of the Trademarks Law, protection extends to both the verbal and the visual component. In a dispute, both dimensions are assessed, which can make the composite mark more defensible than a purely verbal mark.

Ukrainian law prohibits registration of certain graphic elements as components of pharmaceutical marks: universal medical symbols (the Rod of Asclepius, caduceus, red cross), realistic depictions of anatomical structures without artistic transformation, and plain geometric shapes without distinctive artistic execution. These elements can serve as background in a composite design but cannot function as the distinctive element.

Part III  |  Enforcement and Prevention Strategy

3.1  Multi-Layer Registration

A single trademark registration provides a starting point, not comprehensive protection. A robust pharmaceutical brand protection programme in Ukraine should include the following layers.

• Registration of the primary mark in both Cyrillic and Latin scripts, to prevent competitors from exploiting script differences to create confusingly similar marks on different linguistic markets.
• Registration of defensive variants – alternative formulations of the core mark that a competitor might plausibly use to approximate the brand without directly copying the registered mark.
• Coverage of adjacent Nice Classification classes: Class 3 (cosmetic and hygiene products), Class 10 (medical devices), Class 35 (trade and marketing services), and Class 44 (healthcare services), to protect the brand in related commercial contexts.
• Regular review and renewal: pharmaceutical markets evolve, product lines expand, and trademarks that were adequate for an initial product range may require extension as the brand develops.

3.2  Building the Evidentiary Record

In Ukrainian trademark disputes, evidence of genuine commercial use is not merely a strategic asset – it is frequently decisive. Courts and UANIPIO’s Appeals Chamber consider documented use when assessing the scope of protection and the credibility of a rights holder’s claims.

The evidentiary record for a pharmaceutical trademark should include: primary supply documentation (invoices, contracts with distributors and pharmacy networks confirming commercial use and sales volumes); dated packaging samples (photographs, prototypes, and archived packaging specimens with clear manufacturing dates); marketing and advertising materials spanning the history of the brand; and statistical data on market volumes attributed to the mark.

Practice in pharmaceutical IP litigation suggests that rights holders with a systematically maintained evidentiary record prevail significantly more often than those who must reconstruct their commercial history retrospectively. Early investment in record-keeping avoids the situation where a brand that is genuinely distinctive in the market cannot prove it in court.

3.3  Market Monitoring System

A proactive monitoring programme is the most cost-effective form of pharmaceutical trademark protection. Detection of a potential infringement at the stage of a competitor’s registration application costs a fraction of the cost of full contested litigation. The elements of an effective monitoring programme include:

• Monthly review of new trademark applications published by UANIPIO – identifying potentially conflicting applications before rights are granted;
• Monitoring of MoH drug registration decisions – identifying new pharmaceutical products with names that could be confused with the brand owner’s marks;
• Media and conference monitoring – tracking competitor advertising, promotional materials, and product presentations for possible mark violations;
• Parallel import surveillance – identifying products in the Ukrainian market that may be using similar designations.

The cost differential between proactive monitoring and reactive litigation is substantial. Rights holders who maintain active monitoring programmes spend, in the authors’ experience, significantly less on IP-related legal costs than those who identify infringements only after they have become established in the market.

Reactive approach	Proactive approach
Litigation begins after infringement is established	Opposition filed at application stage
Competitor mark already in use – injunction remedy complex	Application refused – no use, no harm
Full litigation costs: expert witnesses, court fees, counsel	Opposition costs: fraction of litigation budget
Brand damage accumulates during proceedings (1–3 years)	Brand position maintained throughout
Well-known mark status contested – uncertain outcome	Registration record supports all proceedings

Conclusion: The Economic Case for Prevention

Pharmaceutical trademark disputes in Ukraine are expensive, prolonged, and difficult to predict. Expert witnesses reach contradictory conclusions; descriptive elements in drug names create endemic challenges to distinctiveness; and even the well-known mark status has been confirmed to have only relative, inter partes effect.

The most effective response to this environment is a prevention-oriented strategy that precedes disputes: thorough clearance searches before adoption; registration in multiple scripts and adjacent classes; a systematically maintained evidentiary record; and active market monitoring. The investment required to implement this framework is, in the authors’ practice, consistently lower than the cost of a single contested pharmaceutical trademark case. The framework also creates the strongest possible platform for any proceedings that do become unavoidable.