Overview of Trademark Law in Ukraine

Every day Ukraine becomes more interesting for foreign manufacturers and suppliers. Despite the fact that Ukraine is a member of many international conventions, such as Paris Convention for the Protection of Industrial Property, Nice International Classification of Products and Services, Madrid Agreement and Madrid Protocol Concerning the International Registration of Marks, there are some specific regulations for trademark protection in Ukraine.

In Ukraine trademark rights are protected by Civil Code and Trademark Act.

According to these legislative acts any sign or combination of signs may be registered as a trademark. For example, as a trademark may be registered words, letters, numerals, designs, color or combination of colors, three-dimensional signs.

Trademark registration

Owner of trademark may be natural person and legal entity, Ukrainian and foreigner. Foreigners may file a trademark application and do all actions for obtaining trademark rights only with registered Ukrainian patent attorney.

Ukraine is a member of Nice International Classification of Products and Services, so all goods and services are classified according to it.

Trademark Act lays down grounds of refusal of trademark registration. For example:

- State emblems, flags, official names of states, emblems, names of international intergovernmental organizations, awards cannot be registered as a trademark.

In case of special authorization these signs may be included in trademarks as non-protected elements.

- Signs devoid of distinctive characteristic, signs consist of usual designation of a type of goods or services, signs designate only kind, quality, purpose, value, time, place cannot be registered as a trademark.

Also cannot be registered deceptive signs, signs consist of usual terms or symbols, signs designate only form that is required for technical result or that provide goods with special value.

- Sign that is identical or confusingly similar with an application filed earlier or a registered trademark and designates goods or services with the same kind.
- Trademarks of third persons if these trademarks 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;
- commercial 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;
- qualified indications of the origin of goods that are protected according to the Law of Ukraine "On the Protection of Rights to Indication of the Origin of Goods".

In addition, signs can not be registered if they reproduce:

- industrial designs, the rights to which in Ukraine belong to other persons;

- titles of scientific, literary, and artistic works known in Ukraine, quotations and characters from the said works as well as the artistic works and their fragments without the consent of copyright holders;

- surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine without their consent.

Trademarks are protected for a period of 10 years from the date of filling. Trademark Certificate may be renewed for further 10 years period.

If a trademark has not been used for a period of three years from the date of publishing the information on granting the certificate or from other date after the publication, any person has the right to appeal to the court with a declaration for fully or partially pre-term termination of the certificate validity.

Trademark Rights

The owner of a trademark has an exclusive right to use trademark, give permissions and prohibit trademark use.

Use of trademark means:
- use sign on the goods, packaging, labels;
- use sign for providing services;
- import and export goods under the trademark;
- use sign in commercial documentation and advertising.

In general cases trademark owner can prohibit trademark use, but Trademark Act sets forth some restrictions. For example, owner of a trademark can't prohibit non-commercial use of trademark, use of trademark in all forms in news, use names and addresses of third parties in good faith.

Trademark owner has a right to give permissions (licenses) for use trademark. Such licenses must be in written form. There is no obligation to register such license, but if any party of license agreement wishes, license may be registered in the State Department of Intellectual Property in Ukraine.

Trademark assignment also must be in written form and must be registered.

For more information about trademark protection, please call us via +38 044 362 01 89 or email us via office@ipstyle.net