Trade and Service Marks
– Law of Ukraine on Protection of Rights to Trademarks and Service Marks, in force since July 1, 1994, with amendments of June 16, 1999, February 6, 2001, June 25, 2003 and October 16, 2012, last amended on April 9, 2015.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), as of April 26, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, as of December 25, 1991.
– Madrid Agreement Concerning the International Registration of Marks, as of December 25, 1991.
– Trademark Law Treaty (TLT), as of December 29, 2000.
– Protocol Relating to the Madrid Agreement, as of December 29, 2000.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as of December 29, 2000.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of December 22, 2003.
– WTO’s TRIPS Agreement, since May 16, 2008.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since July 29, 2009.
– Singapore Treaty on the Law of Trademarks, since May 24, 2010.
Applicant: individuals or legal entities, associations of persons or their successors in title.
Foreigners: enjoy the same rights as nationals; must elect a registered patent attorney.
Service marks: protection is provided for.
Kinds of protection: trade and service marks (any sign or any combination of signs, in particular words, including proper names, letters, numbers, figurative elements, colors and combinations of colors). Sounds and light signals may be protected, provided that they can be subject to examination, namely represented in a recordable format. In practice, colors per se are not accepted for registration. However, in exceptional cases, colors per se are accepted, provided that the applicant provides substantial evidence of continuous use, which has resulted in association of this specific color, with the particular category of goods/services and manufacturer.
Well-known trademarks: well-known trademarks are protected in Ukraine under the provisions of Article 6bis of the Paris Convention and the current trademark law, based on the recognition of the trademark as well-known by the Chamber of Appeal or the court. The well-known trademark is treated in the same way as if an application for registration in Ukraine had been made on the date on which the Chamber of Appeal or the court made the decision that it was “well-known”.
Not registrable: (1) national armorial bearings, flags and emblems; official names of States; emblems, abbreviated or full names of international interstate organizations; official check, warranty and standard marks, stamps; awards and other decorations. (2) Legal protection is not granted to designations which: lack distinctiveness and have not acquired distinctiveness in the course of their use; are generally used as the designations of goods and services of certain kinds; are indicative of the type, quality, quantity, properties, purpose, value of goods and services, as well as of the place and time of manufacture or selling of goods, or rendering of services; are false or may cause confusion with respect to the goods, services or person manufacturing the goods or providing services; are commonly used symbols and terms. (3) Signs may also not be registered if they represent mere shape determined by natural condition of a product or its function, or which increases value of such product; may also not be registered signs which are identical or confusingly similar with the marks previously registered or applied for in Ukraine in the name of other persons with respect to similar goods and services; signs which are the marks of other persons, if these are protected without registration on the basis of the international treaties to which Ukraine is a party, in particular marks recognized as well-known under Article 6bis of the Paris Convention; are the corporate names known in Ukraine and belonging to other persons who received the right to them before the filing date and concern similar goods and services; are appellations of origin, with the exception of cases where they are included into the mark as a non-protectable element and are registered in the name of the persons enjoying the right to use such names; are certificate marks, registered in duly order; are industrial designs, rights to which belong to other persons in Ukraine; are titles of the known works of science, literature and art, or quotations and characters therefrom, without the consent of the copyright owners or their successors; are names, pseudonyms and derivatives thereof, portraits and facsimiles of persons known in Ukraine without having obtained their consent. (4) According to revisions of the Trademark Law enacted under the Law of Ukraine “On the condemnation of the communist and national socialist (Nazi) regimes, and prohibition of propaganda of their symbols”, a trademark is not registrable if it incorporates names or pen names of individuals that held leading positions in the Communist Party (the post of the Secretary of the District Committee and higher), the supreme governmental and administrative bodies of the USSR, the Ukrainian SSR, the other union republics or autonomous soviet republics (except for instances related to the development of Ukrainian science and culture), worked within the soviet state security agencies, the names USSR, the Ukrainian SSR, the other union soviet republics and derivatives therefrom, names related to the activities of the Communist Party, establishing the Soviet regime in the territory of Ukraine or in separate administrative territorial units, prosecuting participants in the struggle for independence in the 20th century.
Priorities: according to the Paris Convention, or exhibition priority, claimed in the application.
Classification: International Classification of Goods and Services.
Territory covered: Ukraine.
Filing requirements for an application (to be sent to resident patent attorney):
1. Power of attorney (no legalization required);
2. Representation of the sign to be protected, 10 prints (size 8 x 8 cm); in case of a label, print not to exceed size 14 x 14 cm;
3. If colors are claimed, 10 prints in color; if black and white is claimed, 5 b & w prints;
4. For a sign containing a word, or relating to signs not comprising graphical elements: description of the sign;
5. List of goods and services;
6. Priority document (if the priority is claimed, to be filed within three months from the filing date);
7. For a sound mark: an audiotape and a description of the kind of sound (a musical composition or part of it; noises of any origin, etc.); for a musical composition: a written composition of the notes; for a light signal: a videotape and a description (sequence, wavelength, etc.).
Examination: formal: conformity with formal requirements; complete (substantive): meeting the requirements of registrability, in particular distinctiveness.
Appeal: possible; objections against decisions of the Patent Office may be filed by applicants with the Chamber of Appeals or courts within two months after receipt of the corresponding decision. An applicant may appeal a decision of the Chamber of Appeals before the court within two months from the date of receipt of the decision.
Objections by third parties: any person may file an objection against a pending trademark. The results of consideration of such objection are taken into account upon establishing a conclusion in the application. A copy of such conclusion (decision of the Patent Office) is forwarded to the person who filed the objection.
Corrections: possible at any time either on the applicant’s initiative, or at the request of the Patent Office. In the latter case, the corrections shall be submitted within two months after the receipt of the official notification by the applicant.
Amendments of application: additional materials modifying the application are accepted provided that these amendments do not extend the initially claimed scope of protection; modifications of the applied mark itself are prohibited.
Division of applications: an applicant has the right to divide an application in two or more applications (divisional applications) by allotting the list of goods and services given in this application between the divisional applications so that each of divisional applications does not comprise goods and services similar to those mentioned in the other applications.
Letters of consent: are no longer acceptable since July 2005, but bilateral declarations of coexistence are accepted.
Publication: the main trademark particulars are published in the “Official Gazette” if the appropriate fees for the grant of a certificate and for publication are duly paid within three months from the receipt of the decision about the registration of the trademark. The term of submission of payment may be extended by up to six months. Simultaneously, the trademark particulars are entered into the Trademark Register.
The certificate of registration is issued one month after the official registration of the mark.
Duration: ten years from the filing date.
Renewals: protection is renewable for further ten-year periods. Grace period: six months.
Exclusive rights to use the registered trademark: belong to the owner.
Obligation to use: compulsory.
Use conditions: the use of a trademark is constituted by its applying on any goods for which it has been registered, their package, signboards related to these goods, labels, tabs, tags or any other subjects fixed to the goods, storing goods bearing the said mark for the purpose of offering for sale, offering these goods for sale, sale, importation and exportation of these goods; its use in relation to rendering or offering any service in respect of which it has been registered; its use in business papers or advertising, as well as in the Internet, including use in domain names. The trademark shall be deemed to be used if it is used in the form of the sign as registered, as well as in the form that differs from the registered sign only in certain elements, provided that this does not deteriorate the overall distinctive character of this sign.
Non-use or insufficient use in respect of all or part of the goods listed in the certificate during a period of three years after the information on registration is published, or from the date when the last use was terminated, may lead to a cancellation if requested by any third party. It must be noted that on September 1, 2017, all parts of the EU-Ukraine Association Agreement entered into force. According to Article 198 of the Agreement "The Parties shall provide that a trade-mark shall be liable to revocation if, within a continuous period of five years, it has not been put to actual use in the relevant territory in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use". Bearing in mind that the aforementioned provision has not been implemented into national Trademark Law, according to the current court practice, it shall apply differently depending on the circumstances. Particularly, the provisions of the aforementioned Article 198 of the Agreement (five-year non-use grace period) are applicable in those court cases, where one of the parties to the case is an EU member (taking into consideration that the parties of the EU-Ukraine Association Agreement are the EU and Ukraine). On the other hand, regarding the non-EU members, the provisions of Article 4 of the TRIPS Agreement should be applicable, where any advantage, favor, privilege or immunity granted by a member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other members. Apparently, the five-year non-use grace period is considered by the Trademark Office as an advantage for the trademark owner in comparison to the three-year non-use grace period. As a result, in court cases, where a defendant is a WTO member the 5-year non-use grace period shall apply. At the same time, in the non-use court cases where the defendant or both parties are Ukrainian legal entities or individuals (which is our case) the three-year non-use grace period shall apply. Nevertheless, the court practice regarding this question is still in the progress of developing and may be changed.
Right of prior user: provided for.
Opposition: opposition as an administrative or court procedure which lies in filing, by third parties, a formal protest/objection against the publication and/or registration of a trademark after the completion of official ex parte examination of an application within a prescribed term, does not exist in Ukraine. In other words, if the PTO has issued a decision about the grant of a certificate of registration, at this stage, third parties have no opportunity to apply to the Chamber of Appeals or the court within a short term preceding the publication and grant of a protection document. At this stage, the only option which is open to them is the cancellation procedure. It is possible to cancel a registration only before the court.
Invalidation: a certificate of registration can be declared to be invalid in full or in part only in a court.
Assignment – license: registration with the Patent Office is not compulsory, but registration of transfer of rights (assignment) is compulsory. A party to a license or assignment agreement may inform third persons about the grant of the license or assignment of rights. Such notice is made through the publication of the corresponding particulars in the Official Bulletin, and such particulars are simultaneously entered in the Register.
Compulsory license: no provision.
Nullification: if the conditions for trademark registration were not met; if there are available elements in the representation of a trade or service mark or in the list of goods and services, which were not mentioned in the application; if a trademark was applied for registration with an infringement of rights of third parties. A request for cancellation of a registered trademark may be filed within three years following the publication and registration date. The validity of a trademark may be terminated by a decision of the court if the mark becomes a sign commonly used to designate a defined type of goods or services.
Infringement and penalties: unauthorized use of a trademark, including acts that require authorization of the trademark owner and preparation to perform such acts, constitutes infringement of the rights to a trademark. The law provides for administrative (such as fines and confiscation of infringing products), civil and penal sanctions, including imposition of fines on infringers, confiscation of goods bearing the registered trademark, equipment and materials used for their manufacture, as well as destruction of such infringing goods and equipment.
Right of re-registration: no other person, except for a former certificate owner, shall have the right to re-register a mark within three years after expiration of the certificate.