Trademark Protecttion Law Ukraine

TRADEMARK PROTECTION LAW IN UKRAINE
 
The trademark protection law in Ukraine is governed by the 'Law of Ukraine On the Protection of Rights to Marks for Goods and Services' (Gazette of the Verhovna Rada [GSR], 1994, ? 7, p. 36).
 
This Law regulates relations arising in connection with acquisition and use of the property right to marks for goods and services (hereinafter termed as "mark") in Ukraine.
 
LEGAL PROTECTION OF MARKS
 
Conditions of Granting the Legal Protection
 
The legal protection is granted to a mark that does not contradict the public-order, humane and moral principles and is not subject to the refusal of the rights protection according to the grounds defined by this Law.
 
The object of a mark may be any sign or any combination of signs such as words, including personal names, letters, numerals, figurative elements, colors and combinations of colors, as well as any combination of such signs.
 
Grounds for Refusal of the Legal Protection
 
According to this Law, the legal protection shall not be granted for marks that represent or imitate:
  1. state armorial bearings, flags, and other state symbols (emblems);
  2. official names of States;
  3. symbols and abbreviated or full names of international intergovernmental organizations;
  4. official control, guarantee, or testing seals, stamps;
  5. decorations and other honorary signs.
According to this Law, the legal protection shall not be granted for marks that:
  1. are usually devoid of distinguishing capacity and did not obtain such a capacity through their use;
  2. consist exclusively of signs that are commonly used as the signs of goods and services of a certain type;
  3. consist exclusively of signs or data that are descriptive while using 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 of goods and services, the place and time of manufacturing or sale of goods or rendering of services;
  4. are deceptive or liable to mislead as to goods, services, or the person producing goods or rendering services;
  5. consist exclusively of signs that are commonly used symbols and terms;
  6. present only the form caused by the natural state of goods, or by the necessity to get a specific technical result, or the form imparting the essential value to the goods.

Signs shall not be registered as marks if they are identical or misleadingly similar to:

  1. marks that were earlier registered or filed for the registration in Ukraine on behalf of another person for identical or similar goods and services;
  2. marks of other persons if these marks are protected without registration according to the international agreements to which Ukraine is a party, in particular the marks recognized as well-known marks according to Article 6-bis of the Paris Convention for the Protection of Industrial Property;
  3. trade names that are known in Ukraine and belong to other persons who have acquired the right to the said names before the date of filing the applications to the Office with respect to identical or similar goods and services;
  4. qualified indications of the origin of goods (including alcohols and alcohol drinks) that are protected according to the Law of Ukraine "On the Protection of Rights to Indication of the Origin of Goods"; the said signs may be used only as non-protected elements of the marks of the persons who have the right to use the said indications;
  5. conformity marks (certification marks) that have been registered under the determined procedure.

Signs shall not be registered if they represent:

  1. industrial designs, the rights to which in Ukraine belong to other persons;
  2. titles of scientific, literary, and artistic works known in Ukraine or quotations and characters from the said works as well as the artistic works and their fragments without the consent of copyright holders or their successors in title;
  3. surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine without their consent.
PROCEDURE FOR OBTAINING A CERTIFICATE
 
Application
 
A person who wishes to obtain a certificate shall file an application to the Office. The application may be filed, on the instruction of the applicant, via a representative on intellectual property matters or another proxy. The application shall relate to one mark.
 
The application shall be presented in Ukrainian and shall contain:
  1. a request for registration of a mark;
  2. a reproduction of the sign that is claimed;
  3. a list of goods and services, for which the applicant requests to register the mark, that are grouped according to the ICGS.

In a request for registration of the mark, the applicant(s) and his address shall be indicated. If the applicant requests to protect the color or color combination as a distinguishing feature of a mark, the applicant shall:

  1. make a declaration to this effect and specify in the request the color or combination of colors to be protected;
  2. present in the request color reproductions of the mark concerned; the Office shall specify the number of copies of such reproductions.
The application shall be filed along with the requisite fee as determined with consideration of the number of the ICGS classes that cover the goods and services indicated in the application. The payment document shall be received by the Office together with the application or within two months after the date of filing the application.
 
Date of Filing
 
The date of filing an application is the date when the Office has received documents that contain at least:
  1. a statement drawn up in any form for registration of the mark, written in Ukrainian;
  2. information on the applicant and the address of the applicant, written in Ukrainian;
  3. a sufficiently clear reproduction of the mark that is claimed;
  4. a list of goods and services for which the mark is claimed.
Priority Date
 
An applicant has the right to claim the priority of an earlier application on the same mark within 6 months from the date of filing the earlier application to the Office or the relevant body of the State, which is a member of the Paris Convention for the Protection of Industrial Property.
 
An applicant who wishes to use the priority right shall file a priority declaration, with the reference to the date of filing the earlier application and the application number, and a copy of the application in Ukrainian.
 
Examination of Application
 
Examination of an application has the status of scientific and technical examination and consists of the formal examination and qualifying examination (examination by substance). The examination is made by the examination institute according to this Law and regulations issued by the Office in compliance with this Law.
 
The examination institute carries out information activity required for examination of applications and is the center for the international exchange of information communications according to the Convention on International Information Communication that was adopted on December 3, 1958, by the United Nation General Conference for Education, Science, and Culture.
 
The Office shall make a decision on the registration of the mark for all the goods and services listed in the application or on refusing the registration of the mark for all the goods and services listed in the application, the applicant shall be notified on the Office decision.
 
The applicant has the right to require the copies of the information materials, which were opposed to the application, within a month after receiving the Office decision. These copies shall be sent to the applicant within a month.
 
The applicant has the right to correct errors in the application, change his name and his address, address for service and name and address of his representative as well as to make changes on reducing the list of goods and services.
 
The said corrections and changes are taken into consideration, provided that the examination institute has received them not later than the document on the payment of state fee for granting a certificate is received.
 
The applicant shall submit the additional materials if required by the Institute within 2 months from the date of receiving the notification or conclusion of the examination institute or the copies of the materials, which were opposed the application.
 
If the applicant failed to submit the additional materials within the fixed period, the application would be considered withdrawn, and the applicant shall be notified accordingly.
 
The applicant has the right to notify the examination institute of his opinion on the objection within 2 months after receiving the copy of the objection. The applicant may decline the objection and leave the application unchanged, make changes in the application, or withdraw the application.
 
Appeal on opposition
 
The current legislation of Ukraine in the field of intellectual property provides for the mechanism for applicant rights to be administratively protected by applying to the Board of Appeal of the State Department of Intellectual Property.
 
According to the Law of Ukraine any oppositions of applicants on the State Department's decisions concerning acquisition of rights to any intellectual property objects are subject to consideration by the Board of Appeal of the State Department in accordance with the procedure established in its Regulations
 
The current legislation has established the period within which an appellant may appeal a decision on its application before the Board of Appeals to be not more than 2 months from the date he received the decision or copies of required documents.
 
Publication on Granting a Certificate
 
On the basis of the decision on registration of a mark is published in the official bulletin. The applicant shall pay the said fees after the date of receiving the decision on registration of a mark.

Registration of a Mark
 
At the same time with the publication of the data concerning granting a certificate, the Office provides the state registration of a mark. For this purpose, the Office enters the relevant data in the Register. After entering the data in the Register, any person has the right to access to this information.
 
Granting a Certificate
 
The Office shall grant the certificate within a month from the date of the state registration of the mark. The certificate shall be granted to a person that has the right to obtain the certificate. If several persons have the right to obtain the certificate, they shall obtain a single certificate.
 
INFRINGEMENT OF THE CERTIFICATE OWNER AND REMEDIES
 
Use of a trademark without the consent of the Certificate owner amounts to infringement of the trademark.
 
Remedies
 
The followings are the remedies of a certificate owner
  1. On the request of the certificate owner, the said infringement shall be terminated, and the infringer shall indemnify the actual damage to the certificate owner.
  2. The certificate owner may also request to remove from the goods or the goods package the illegally used mark or a sign, which is so much similar to the mark that the mark and the sign may be confused, or to liquidate the produced reproductions of the said mark or the sign, which is so much similar to it that they may be confused.
  3. The person who was granted a license also has the right to demand the restoration of the affected rights of the certificate owner by the certificate owner consent.

DURATION

The property right to mark shall be certified by a certificate. The validity period of the certificate is 10 years from the date of filing an application to the Office and may be extended by the Office for 10 years each time at the request of the certificate owner.