Client: Böhmert & Böhmert (Germany)
Trademark Owner: Kaufland Dienstleistung GmbH & Co. KG — German supermarket chain, part of the Schwarz Group
Legal Support Area: Overcoming provisional refusal of an international trademark registration
Project Summary
In March 2023, Polikarpov Law Firm was contacted by Böhmert & Böhmert, a leading German IP law firm representing Kaufland. The Ukrainian IP Office had issued a provisional refusal for the international trademark Benita, citing earlier conflicting trademarks registered in Ukraine.
We analyzed the grounds for refusal and initiated negotiations with the owners of the cited marks. As a result, we successfully secured letters of consent, prepared a comprehensive response, and submitted it within the procedural timeline.
Client’s Goals
- Overcome the provisional refusal for the Benita trademark in Ukraine
- Secure IP protection in the Ukrainian jurisdiction
- Resolve the conflict without litigation or cancellation proceedings
Project Complexity
- Establishing contact and trust with local rights holders
- Drafting legally sound consent letters acceptable to the IP Office
- Acting within limited timeframes under the Madrid Protocol
Polikarpov Law Firm’s Actions
- Conducted legal analysis of conflicting marks
- Negotiated and obtained consent letters from rights holders
- Drafted and submitted the official response to the provisional refusal
- Monitored the process through to successful registration
Lawyers
Anton Polikarpov — Managing Partner, led the negotiations and overall legal strategy
Anastasiia Shevchuk — Senior Associate, prepared the documentation and official response
Result
The Ukrainian IP Office reversed the provisional refusal and granted protection to the international trademark Benita. The client’s goals were fully achieved, securing Kaufland’s trademark rights in Ukraine without the need for litigation.
