Trademarks in Ukraine
By Julia Semeniy
Konnov & Sozanovsky
As a rule trademarks are
protected in Ukraine on
the basis of state registration.
According to the On Rights
in Marks for Goods and Services
Act of Ukraine any designation or
combination of designations may
be registered as a trademark in
Ukraine, in particular: words, letters, figures, images (graphical
compositions), three-dimensional figures or a composition
thereof, colours and combinations of colours, and any
combination of the above-mentioned. Registration of sound,
light trademarks, colours and combinations of colours is allowed,
provided it is technically possible to include them on
the trademark register and to publish them.
Both legal entities and individuals can apply for trademark
registration in Ukraine. If an applicant is a person who
does not reside in Ukraine, he is entitled to file an application
only through his representative who is a patent attorney of
Ukraine.
Trademark applications are examined for conflicts with
earlier registered trademarks or trademarks with earlier priority
or filing date, where similar goods/services are claimed.
Since Ukraine is a party to the Paris Convention claiming
priority is available in Ukraine. The priority can be claimed
from the filing date of the application filed, or from the date
when a trademark was shown at an exhibition held in another
Paris Convention member state. This means that any application
with a later filing date or priority date will not be an
obstacle to registration of a similar or identical trademark
with earlier priority.
The owner of a trademark registration certificate holds
tangible rights in trademark, including the following rights:
(1) to use a trademark at his own discretion;
(2) to allow the use of trademark by others (for example,
on the basis of a licensing agreement);
(3) to forbid the use of trademark by others.
An additional benefit of trademark registration in
Ukraine is that it allows registration of a domain name like:
www.trademark.ua (i.e, second level of ‘.ua’ domain).
The trademark registration certificate is valid for ten years
from the date of the application’s filing. However, it may be
renewed for each next period of ten years provided that the
official renewal fee is paid. If a registered trademark is not
used for three years from the date of the trademark’s registration
or any date after that, any person can initiate legal action
for early termination of the trademark registration certificate.
If a trademark was only used in regard to a part of the claimed
goods and/or services, the certificate can be terminated by a
court for that part of the goods and/or services, in regard to
which the trademark was not used.
A trademark can be also protected as well known in
Ukraine. The decision to recognize a trademark as well
known can be issued by the Appeal Chamber with the State
Intellectual Property Department of Ukraine, or by court. In
order to recognize a trademark to be well known in Ukraine
the following factors are evaluated: degree of notoriety of a
trademark; duration of trademark use; scope of trademark
use; scope of advertising of a trademark, as well as other
methods of its promotion in the market (participation at exhibitions,
fairs); registrations of a trademark in any countries
of the world; cases of successful assertion of rights in a trademark;
cases of recognizing a trademark to be well known in
other countries.
A trademark which is recognized as well known in
Ukraine is granted the same protection as trademark registration
is. Moreover, in this case the protection covers not only
the goods and/or services for which it is recognized as well
known, but also for other goods and/or services, in regard to
which use of such a trademark can mislead consumers.
A trademark owner is entitled to assign tangible rights in
trademarks on the basis of the assignment agreement. The assignment
agreement should be in writing but no further notarization
or legalization is required. The assignment agreement
is valid if signed by the parties. However, the fact of the
assignment must be recorded and corresponding data about
transfer of the exclusive rights to a trademark must be entered
in the State Trademark Register.
Ukrainian legislation stipulates different ways of protection
and enforcement of trademark rights. The method of
protection to be chosen in each specific case depends on the
particular circumstances thereof.
For instance, one can apply to the Antimonopoly Committee
of Ukraine in order to stop unauthorized use of a trademark
claiming unfair competition. It is possible to proceed
with the Antimonopoly Committee even if a trademark is not
registered but constitutes a part of one’s business reputation
and use of this trademark by another person leads to confusion.
However, it is possible to apply to the Antimonopoly
Committee within six months after you learnt or had to learn
that your rights were infringed. The decision as to whether
the case is to be started should be issued by the Antimonopoly Committee within 30 days of the filing of the petition. This
term can be prolonged for 60 days if any additional information
is needed. Afterwards the Antimonopoly Committee investigates
the case and decides if there was unfair competition.
As regards liabilities applied in the course of the mentioned
procedure, the Antimonopoly Committee can decide to stop
the infringement, to impose a fine on the violator and to seize
the infringing goods.
Applying to the State Customs Office is another administrative
method of protection which can be used in order
to prevent unauthorized import/export of goods where the
mentioned trademark is used. Within the last year there have
been some changes with respect to border measures. Respective
provisions were incorporated into the Customs Code of
Ukraine and additional subordinate legislative acts were issued.
Now, in order to proceed with border measures it is necessary
to make a deposit of EUR 5,000 or bank guarantee for
an equal amount.
Furthermore, if processing by Customs of the “infringing”
goods is stopped, it is necessary to obtain within 15 days a
further court resolution for seizure of such goods (previously,
the filing of the claim to the court was sufficient for further
seizure). The mentioned term can be extended for a further
15 days. If the court resolution is not obtained, then further
processing of goods by Customs is allowed. Other changes
were also introduced with respect to border measures.
Another way to protect one’s trademark rights is to initiate
a legal action in court. There may be actions against trademark
infringements, cancellation of actions with regard to
trademark registrations or any decisions issued with regard
to trademark application or registrations by the State Patent
Office, legal actions for early termination of trademark registrations.
Other legal actions allowed by Ukrainian legislation
are also possible though the above-mentioned types of legal
actions are most frequent.
There are three types of courts in Ukraine: common courts,
economic courts and administrative courts. If at least one
party in a case is an individual (not being a private entrepreneur)
it will be considered by a common court. An economic
court will decide cases where both parties are legal entities or
entrepreneurs. Administrative courts decide cases against decisions,
actions or inaction on the part of the authorities. For
example, a decision to register a trademark or refusal to register
a trademark issued by State Intellectual Property Department
can be appealed against in an administrative court.
If the legal action relates to trademark infringement, cancellation
or early termination of trademark registration, the
case shall be considered by a common court or economic
court, depending on who the parties are.
According to the procedural Codes, each party to a case is
obliged to prove circumstances they refer to. In the course of
an infringement action a trademark owner should prove that a
trademark is used by another person illegally. In a cancellation
action a plaintiff should prove that a trademark does not conform
to the terms under which legal protection can be granted
in Ukraine, and that trademark registration violates his personal
rights. According to current court practice a person who
initiates legal action for early termination of trademark registration
should prove that this registration violates his rights or
interest. For example, he should provide a court with evidence
that he intends to use the trademark in his own activity. He
should also provide the court with evidence confirming that
the trademark is not being used.
Though a civil procedure against trademark infringement
is still more widespread, illegal use of a trademark is also
subject to criminal procedure where such illegal use caused
large-scale financial losses. It should also be noted that the
corresponding provision of the Criminal Code of Ukraine was
amended last year and the low limit of financial damage above
which trademark infringement constitutes a criminal offence,
was reduced ten fold.
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