National trademark laws include:
- the Civil Code of Ukraine (435-IV/2003);
- the Law on Protection of Rights to Marks for Goods and Services (3689-XII/1993) (the ‘Trademark Act’) and;
- the Rules for Drafting, Filing and Consideration of Trademark Applications, approved by the State Department for Intellectual Property (116/1995).
Ukraine is also party to a number of international treaties, including:
- the Paris Convention for the Protection of Industrial Property Rights;
- the Madrid Agreement and the Madrid Protocol on the International Registration of Trademarks;
- the Nice Agreement on the International Classification of Goods and Services for the Purposes of the Registration of Trademarks;
- the Vienna Classification;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Trademark Law Treaty; and
- the Singapore Treaty on the Law of Trademarks.
Trademarks which are recognised as well known by the Appeal Chamber of the Ukrainian Patent and Trademark Office (UAPTO) or by the courts of Ukraine enjoy legal protection in Ukraine. A trademark may be recognised as well known regardless of whether it is registered in Ukraine or abroad and is protected under Article 6bis of the Paris Convention.
In certain cases, the owner of an unregistered mark that is used in Ukraine can protect its rights on the grounds of unfair competition laws. Other signs that may also obtain protection as unregistered marks include:
- the moral rights to the name of a person;
- signs protected under copyright law;
- geographical indications; and
- trade names.
Any Ukrainian or foreign natural or legal person may obtain a Ukrainian trademark registration.
Foreign persons residing outside Ukraine must communicate with the UAPTO through a Ukrainian trademark attorney.
The applicant must provide its representative with a power of attorney signed by the authorised person and indicating his or her name and position in the company. The date and place of the signature must also be indicated, but notarisation or legalisation is not required. However, if the power of attorney is issued by way of substitution, it must be notarised. The power of attorney must be submitted within two months of the filing date or within two months of the date of notification to submit the power of attorney.
Legal protection is granted to a sign which does not contradict public order, humanity and moral principles, and provided that there are no grounds for refusal of legal protection according to the Trademark Act.
Under Article 6 of the Trademark Act, legal protection will not be granted for signs that:
- contradict public order or principles of humanity and morality;
- represent or imitate:
- state armorial bearings, flags, other state emblems or state symbols;
- official names of states;
- emblems and abbreviated or full names of international intergovernmental organisations;
- official signs and hallmarks indicating control and warranty, assay marks or seals; or
- awards and other distinctions of honour;
- are usually devoid of any distinctive character and have not obtained such character as a result of their use;
- consist exclusively of signs that are commonly used as the signs of goods and services of a certain kind;
- consist exclusively of signs or data that are descriptive when used for goods and services defined in the application or with respect to them, in particular signs or data that indicate kind, quality, composition, quantity, properties, purposes, value or the place and time of manufacturing or the sale of goods or rendering of services;
- are deceptive or liable to mislead as to goods, services or the person that produces a good or renders a service;
- consist exclusively of signs that constitute commonly used symbols and terms; or
- solely reflect a form caused by the natural state of goods or by the need to obtain a specific technical result, or a form that imparts a significant value to a good.
The sign cannot obtain legal protection based on the following relative grounds:
- Marks shall not be registered if they are identical or misleadingly similar to such an extent that they can be confused with:
- marks that were previously registered or filed for registration in Ukraine on behalf of another person for identical or similar goods and services;
- marks of other persons if those marks are protected without registration according to the international agreements to which Ukraine is a party – in particular, marks recognised as well-known marks;
- trade names that are known in Ukraine and belong to other persons which acquired the right to those names before the date of filing of the application with respect to identical or similar goods and services; or
- qualified indications of the origin of goods.
- Marks shall not be registered if they reproduce:
- industrial designs, the rights to which belong to other persons;
- titles of scientific, literary and artistic works known in Ukraine or quotations and characters from such works, as well as artistic works and fragments of artistic works, without the consent of the copyright holders or their legal successors; or
- surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine, without their consent.
The procedure for registering a trademark consists of the following steps:
- Filing the application – trademark application documents are filed with the UAPTO. The application should be submitted through a legal representative for non-residents of Ukraine.
- Formal (preliminary) examination – in the course of the formal examination, a filing date for the application is determined. The application is examined to verify its conformity with the formal requirements and regulations of the Trademark Act and the State Department for Intellectual Property rules. The document confirming payment of the respective fee for filing the application is also examined to verify its conformity with the specified requirements. If the application meets all of the formal requirements, the qualifying examination can be conducted.
- Substantive examination – at this stage, the trademark is examined to verify its conformity with the conditions for granting the necessary legal protection as defined by the Trademark Act. During this process, the trademark database at the examination institute, as well as external sources of information and relevant official publications, is used.
- Trademark registration and certification – if the above examinations are passed, it is concluded that the trademark meets all of the established criteria and the trademark registration is issued. After payment of the official registration fees, the trademark certificate is granted.
No opposition procedure is available in Ukraine. However, after publication of the trademark application, any third party has the right to submit an objection to an application to the UAPTO regarding the registrability of the applied mark.
According to the Trademark Act, an objection should be filed with the UAPTO no later than five days prior to the date of issue of a final decision on the application. Since 2015, the UAPTO has opened access to the database of trademark applications which have passed the stage of formal examination. Consequently, this has provided an additional option for monitoring trademark applications when filing an objection.
After receiving the decision granting protection of the trademark, an applicant must pay an official registration fee of $200 for the trademark certificate, as well as a publication fee, which amounts to UAH150 for one class and UAH100 for additional publication in colour.
If, within three months of receipt of the decision on registration of a mark, the documents confirming payment of the official fees are not submitted to the UAPTO, the trademark is not published and the application is considered to have been withdrawn. After receiving the documents confirming payment of the official fees, the information regarding the trademark registration is published by the UAPTO in the Official Bulletin and the trademark certificate is granted to the applicant or its representative.
The rights deriving from the certificate are effective from the date of filing of the application.
Removal from register
The trademark can be removed from the register in the following cases.
Invalidation: A trademark can be invalidated on the following grounds:
- The trademark does not meet the requirements for registrability;
- The trademark certificate contains elements of the image of the trademark or a list of goods and services which were not stated in the filed trademark application; or
- The trademark was registered in violation of a third party’s rights when filing the application.
According to Ukrainian law, bad faith is not considered sufficient grounds for invalidation.
An invalidation action against the registration of a trademark may be filed with the court by any interested party within three years of the date on which that party learned about or could have learned about the registration of the mark. Generally, this term is calculated as starting from publication of the mark registration in the Official Bulletin.
Revocation: A trademark can be revoked on the following grounds:
- voluntary revocation on the request of the trademark owner;
- failure to pay the renewal fee;
- genericness (ie, the mark has become a generally used term indicating certain goods or services); or
- non-use of the mark.
Revocation of a registered trademark at the initiative of a third party is possible only through court proceedings. When seeking to revoke a trademark due to non-use, a claimant must file evidence of non-use of the trademark in the last three years. The burden of proving use of a trademark rests with the mark owner (ie, the owner should document that the mark was actually used).
The UAPTO conducts searches for similarity with earlier trademarks (including those pending registration or recognised as well known), registered appellations of origin and registered industrial designs.
According to Ukrainian legislation, the trademark owner has the exclusive right to use its registered or protected trademark.
Any unauthorised commercial use of a trademark is considered infringing. Unlawfully placing a trademark or a confusingly similar sign on goods, labels and packaging is regarded as illegal.
The following types of legal action may be taken against trademark infringers.
The illegal use of a trademark incurs administrative penalties, including the seizure of unlawfully manufactured goods (as well as materials and implements used to produce the unlawfully manufactured goods).
Administrative procedures usually take four to six months from discovery of the offence to the first court decision.
The following remedies may be claimed in court in civil proceedings:
- termination of the unauthorised use of the trademark;
- reimbursement of damages;
- removal of all unlawfully manufactured goods from the market and their destruction;
- publication of the court’s decision; and
- other remedies.
The limitation period for filing a trademark infringement claim is three years from the date on which an interested party becomes aware of or should have become aware of the infringement. Following the end of the limitation period, the claim can still be considered by the court, provided that the plaintiff has sufficient grounds for being unable to submit the claim within the limitation period.
Preliminary injunctions are available if the rejection of such injunctions will make further enforcement of the judgment impossible or difficult, or if there is a risk that evidence cannot be preserved. In civil court proceedings preliminary injunctions can be granted by the court only on the basis of a party’s motion. In commercial court proceedings preliminary injunctions can also be granted at the initiative of the court.
Illegal use of a trademark can be considered a crime in Ukraine. Criminal liability occurs when a trademark infringement causes damages. The minimum amount of damages required to take criminal action is prescribed by law and amounts to approximately UAH14,500.
Ukrainian law prescribes the following criminal liabilities for trademark infringement:
- penalty; and
- limitation of the right to hold management positions or be involved in certain types of business activities for a specified period.
To initiate criminal proceedings, a party must file a statement to the police. Following preliminary investigation, the police will bring an action before the court to deliver a judgment.
The decision of the first-instance court may be appealed to the court of higher instance. The preliminary investigation and court hearings can take up to two years.
The costs of filing and pursuing an action include:
- court fees;
- attorneys’ fees; and
- expert and translation expenses.
Court fees are determined by law, depending on the type of claim. For material claims, court fees are calculated as 1.5% (for legal entities) or 1% (for individuals) of the amount of the claim. For immaterial claims, court fees are calculated as a certain percentage (as prescribed by law) of the minimum salary.
In both civil and commercial proceedings legal expenses are recoverable (court fees, expert expenses, translation expenses and attorneys’ fees).
In civil proceedings the amount of recoverable attorneys’ fees is limited by law.
In commercial proceedings the amount of recoverable attorneys’ fees is not limited. However, in practice, the court rarely awards attorneys’ fees in full.
The behaviour of the parties at trial does not affect the recoverability of costs or the proportion awarded. The establishment of the winning party is essential.
A trademark owner can file a request to enter a trademark in the Customs Register. The customs authorities will then suspend the release of goods bearing the mark included in the Customs Register and notify the trademark owner of the importation and exportation of such goods. The trademark owner can collect samples, take photographs and undertake examinations of the goods in question. The trademark owner can file a lawsuit against the importer or exporter, destroy the unlawfully manufactured goods under a simplified procedure or initiate other enforcement actions on the grounds of importing or exporting infringing products.
The seizure of infringing goods at the border by the customs authorities is possible following the decision of a court on the application of preliminary measures and the filing of a claim with the court, on the grounds of infringement of trademark rights.
Additionally, the infringing goods can be destroyed at the border, subject to the consent of the shipment owner. The trademark owner bears all expenses related to the destruction, unless the shipment owner and the trademark owner agree to the contrary.
Otherwise, the shipment owner can remove the trademark from the goods or the packaging (upon request of the trademark owner) at the border; following this, the goods can then be imported or exported.
Ownership changes and rights transfers
A trademark owner can dispose of its exclusive right to the trademark by assignment or through a licence agreement.
An assignment must be registered with the UAPTO. The effective date of the assignment is the date of its state registration. Assignment is possible for all goods or services covered by the trademark registration or only some of them. The partial assignment of trademark rights is registrable, provided that this does not mislead the consumer as to the origin of the goods or services. Assignment registration documents need not be legalised.
Voluntary exclusive and non-exclusive licences may be granted. Only registered trademarks, and not pending trademarks, may be the subject of a licence agreement. Licence agreements are not subject to obligatory registration. Parties can choose to record the licence agreement with the UAPTO (optional registration).
For the purposes of maintaining trademark protection, the licensee’s use can be attributed to the mark owner and considered as proper use of the trademark. Thus, in the event of a cancellation action for non-use, the owner can prove use by submitting documents proving use by the licensee or another party under the owner’s control. A licensee can sue for infringement, provided that it has the licensor’s consent.
A trademark that is an original work may also be protected by copyright. This applies to:
- device marks;
- words (eg, original book titles and film titles);
- three-dimensional marks; and
- other types of mark.
Legislation provides the judicial means of protection against unauthorised use of a trademark in domain names or on websites. The unauthorised use of a mark online with respect to identical or similar goods or services constitutes trademark infringement.
Domain names in the country-code top-level domain ‘.ua’ can be registered only by:
- the owner of a trademark with a valid registration in Ukraine, the word element of which completely corresponds to the domain name; or
- the holder of a licence for use of the trademark. In this case, the right to register the domain name by the licensee should be expressly recognised; otherwise, the licence should be exclusive.
Gorodissky & Partners
25 Chornovola Street
Tel +380 44 278 4958
Fax +380 44 279 6896
Managing partner in Ukraine
Nina Moshynska is a managing partner at Gorodissky & Partners (Ukraine) and has experience in all areas of IP law. She specialises in patent matters, trademark proceedings and copyright and also counsels clients on issues related to IP infringement, licensing and unfair competition.
Ms Moshynska is a founder, former first president and member of the Ukrainian Patent Attorney Association, as well as a member of the International Association for the Protection of Intellectual Property, the International Trademark Association, the Licensing Executives Society International and MARQUES.
Since 2009 Ms Moshynska has been ranked among the best Ukrainian IP lawyers by Best Lawyers. Managing Intellectual Property and the World Intellectual Property Review ranked Ms Moshynska as one of the best IP protection professionals.
This article first appeared in World Trademark Review. For further information please visit www.WorldTrademarkReview.com.