Amendments to the Ukrainian trademark law entered into force on August 16, 2020, as part of a set of laws intended to implement the requirements set out in the EU-Ukraine Association Agreement, synchronize local legislation with that of the EU and ensure legal and linguistic consistency of legal acts regulating intellectual property rights in Ukraine.
Non-Traditional and Collective Marks
The amendments introduce the possibility to register any type of a sign as a trademark, provided that it is capable of distinguishing goods and services and that it can be represented in the trademark register in a manner allowing the competent authorities and the public to clearly and precisely determine the scope of protection.
In particular, the new law adds sound marks to the list of signs eligible for registration, which already included colors, product shapes and packaging designs under the previous law. The amended law reinforces the need to update the trademark register’s technical capabilities in order to include different types of marks.
The amendments also introduce collective trademarks, which may be owned by an established association that will be the proprietor of the mark.
The amended law introduced an opposition procedure similar to the one in the EU. Once the filing fee is paid and the IPO establishes that the application meets the filing requirements (including applicant’s data, the mark’s image and the list of goods and services), it will issue a notification on granting a filing date, and the application will be published in the Official Bulletin and entered into the application database. The data on international registrations or subsequent designations for Ukraine will be published in the Bulletin once the IPO receives the relevant notification from WIPO.
Any person may file an opposition within three months from the application publication date. For national trademarks, applicants may file a response to the opposition within two months from the date they receive the opposition notification from the IPO. Applicants may refute the objections, amend their applications, or withdraw them. For international trademarks, right holders may file a response within three months from the date the IPO sends a provisional refusal to WIPO.
Oppositions and responses are considered at the stage of substantive examination, when the application is checked for absolute and relative grounds for refusal. Opponents may file an appeal to the final decision within two months from the date of receiving it.
Previously, oppositions could be filed no later than five days before the final decision on the application is issued, but the law did not include any provisions which permitted opponents to appeal the IPO’s decision.
Grounds for Refusal
The amended law also extends the list of absolute and relative grounds for refusal and invalidation.
The new absolute grounds are the following:
If a trademark is in conflict with a plant variety denomination registered or applied for in Ukraine, or which was granted protection in accordance with an international agreement to which Ukraine is a party before the trademark filing date;
If a trademark is in conflict with a geographical indication registered in Ukraine or which was granted protection in accordance with an international agreement to which Ukraine is a party before the trademark filing date, and misleads as to the special quality, characteristics and true origin of the goods;
If a trademark is misleading about the nature, quality and geographical origin of the goods and services.
The new relative grounds are the following:
If a trademark is identical with or similar to an earlier right, not only in terms of confusion, but also in terms of association;
If a trademark is identical with or similar to the extent of confusion or association with a well-known trademark and designates identical or similar goods or services, or if it designates nonsimilar goods or services but shows a connection with the owner of a well-known trademark and may harm his/her interests;
If a trademark application is filed by an agent or a representative in their own name without the owner’s consent, and if there is no evidence to justify such filing and the owner has objected (Article 6septies of the Paris Convention).
Consent to Registration and Use
The amended law establishes that a trademark identical with or similar to an earlier trademark can be registered if the owner of the earlier mark gives consent and if there is no risk of consumer confusion.
The deadline to re-register a trademark was reduced from three to two years following its cancellation. Trademarks may be re-registered if they were cancelled because they were not renewed in time or if the trademark owner surrendered the trademark in full or in part. In these cases, trademarks may also be re-registered by another person if the previous owner gives consent.
Non-Use Grace Period
While the previous version of the law provided for a three-year non-use grace period, the national courts applied the five-year non-use grace period introduced by the EU-Ukraine Association Agreement, which came into force on September 1, 2017. The amended law now explicitly provides for a five-year non-use grace period.
The amended law introduces two additional types of trademark fair use by third parties:
Descriptive fair use, referring to the use of a registered trademark in relation to the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of the goods or services protected by the trademark;
Nominative fair use, referring to the use of a registered trademark in commerce when it is required to indicate the intended purpose of a good or a service, i.e. when it is compatible with or is a spare part of the goods/services sold under the trademark.
The law also amends the existing provision on trademark fair use in comparative advertising, specifying that such use must solely be intended for distinguishing goods and services and emphasizing their differences.