Well-known mark

There are two methods for getting exclusive rights of using a trademark. The first one is official trademark registration in appropriate office. According to Ukrainian legislation such registration is fulfilled by the Official Department of Intellectual Property. The second one is obtaining a well-known status for trademark. In this case well-known trademark does not have to be registered for getting protection from infringement actions. In Ukraine the status of well-known trademark is granted by the Appeal Chamber of Official Department of Intellectual Property or by court according to Ukrainian Law “About the Protection of Rights to Marks for Goods and Services based on Paris Convention.

In determination of well-known trademark status there are factors considered for making decision about mark. They are following:

1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
2. the duration, extent and geographical area of any use of the mark;
3. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
5. the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
6. the value associated with the mark.

For determination of degree of knowledge or recognition of the mark is carried out an interrogation of the customers for whom the good and services was addressed. A result of such inquiry is filed in the Appeal Chamber of Official Department of Intellectual Property and will be considered as relevant factor.

The duration of a mark use can be confirmed by information about date of commencement of use and continuity of use.
Information about trademark use activity in a territory of Ukraine includes information about volume of product sales, list of areas of product sales, quantity of users.

Advertising activity includes information about advertising in media, TV, radio, internet and is provided in the form of different documents about financial expenditure of advertising, agreements, financial statements.

As a confirmatory factor of enduring use of trademark in definite areas are the documents of international and national registrations.

The most effective method of determination of trademark value is the method of trademark appraisal that is based on royalties of gross sales of goods.

In Ukraine there are following trademarks that obtained a status of well-known in Ukraine are YAHOO, COSMOPOLITEN, GOOGLE, YAMAHA, BOUNTY and many others.

For more information about well-known mark in Ukraine, please call us via +38 044 362 01 89 or email us via office@ipstyle.net