Some issues of opposition procedure as to trademarks in Ukraine
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Most trademark filing application systems across the globe incorporate some form of opposition procedure, so that third parties can file their opposition against trademark registration. In most countries, a trademark application is published in a Trademarks Journal, and, after the aforesaid publication has been made, is automatically opened to opposition for clearly specified period of time, within two or three months commonly. To file a trademark opposition in such countries, the Opponent must file a statement of grounds (or notice of opposition) and pay an official opposition fee. The statement of grounds simply details the grounds upon which the opposition is based.
Under Ukrainian registration there is no an 'opposition proceeding'. More precisely, there is not such type of 'opposition proceeding' like in most countries. However, there is some type of official opposition procedure according to our current legislation. So, in regards to the Paragraph 8 of the Article 10 of the Law of Ukraine On Protection of Rights to Trademarks (referred to as Law), any person may file with the Ukrainian Patent Office (referred to as the UPO) a reasonable objection against trademark registration.
The UPO shall consider an objection provided that it has been received not later than five days prior to the date of making a decision on application. The results of the consideration of an objection shall be presented in the decision of the UPO as to application. The copy of such decision shall be sent to a person by whom the objection was filed.
Such procedure is a little bit complicated, provided that there is no official information available, which indicates, whether an application has been already examined, and decision as to the application has been made or not. Therefore, it is quite difficult for third parties to establish whether they can still file oppositions against a certain application.
However, taking into account the universally received period for trademark registration, it is possible to predict approximate time of making a decision as to trademark registration and file a reasonable objection against it. Nevertheless, a positive outcome in this case cannot been guaranteed.
The other negative side of such type of 'opposition procedure' is that to monitor all of the applications filled that could infringe Intellectual Property rights is required. Since August 21, 2015 such monitoring has become more simplified. So, the access to information about the trademark applications that successfully passed the formal examination is opened from August 21, 2015. The information is updated every day so there is an opportunity to review new applications filed regularly.
The opened information about trademark application allows the holders of marks to monitor the applications filed that could infringe their IP rights, and file the oppositions (objections) against such infringing applications in time for prevention of the registration in Ukraine. However, such monitoring must be conducted permanently (approximately once a week), which leads to additional costs.
What is more, the search in the database could be done by the keywords, the name of representative or applicant, classes of Nice or Vienna classification, etc.
To sum up, we consider such sophisticated procedure must be simplified. A proper opposition procedure similar and like as in most countries would better protect everyone's rights.
Oksana Padokh, IPStyle International Department Lawyer
Elena Polosmak, IPStyle International Department Specialist