TM registration aspects in Ukraine

REGISTRATION AND PROTECTION OF
RIGHTS FOR TRADEMARKS
IN UKRAINE
Patent Attorney of Ukraine
M.Sc. Daniel Benatov
Intellectual Property Analyst
M.Sc. Zinaida Reznytska

Dr. Emil Benatov & Partners, 2013 2
GENERAL PROVISIONS
• Procedure type: examinational.
• Validity period: Certificate is valid 10 years and may
be extended for undefined number of 10-year periods.
• Examination authority: State Enterprise “Ukrainian
Institute of Industrial Property”
• Certificate issue: State Service of Intellectual
Property.

GENERAL PROVISIONS

EXAMINATION
• Registration procedure lasts 10-12 months.
• Main steps:
- determination of the filing date;
- formal examination;
- qualification examination;
- bibliography publication;
- certificate issue.

OBJECTIONS BY THIRD PARTIES
• Third parties have right to file their objections
(oppositions) against filed applications before IPO
issues final refusal or granting decision.
• Meanwhile information concerning filed applications is
closed and may be provided to interested parties only
as a result of official paid search.
• Filing oppositions is charged with official fee.

CLAIMING PRIORITY
Applicant may claim convention priority within 6 months
since the date of filing preceding application.
Important: if national application is filed but not duly
paid, it must be considered withdrawn, which enables
filing same or similar application during 6 months and
claim priority.

ACCELERATED PROCEDURE
Applicant may accelerate examination of the
application. To do that, he must claim intention
to file subsequent international application. Further
filing international application is not mandatory.
Acceleration terms are 3 or 7 months (depends
on the chosen tariff) counting from the date
of payment accelerated procedure fee.

FEES
Filing fees consist of fee for every class of ICGS
and additional fee for color representation of the
mark.
Fees may be paid in Hryvnas, US dollars, Euro and
Russian roubles.
Official granting charge (i.e. fee for Certificate
issue) is paid in US dollars only.

APPLICATION APPEAL
• Applicant may file appeal against decision of
examination before Board of Appeals (BA) of State
Intellectual Property Service within 1 month since the
decision date.
• Decision of examination and/or BA may be in its turn
appealed in court.
• Third parties may not file appeals against examination
decision before BA.

REGISTRATION RENEWAL
Holder of national registration, if he wishes to renew it
for another 10 years must pay official renewal fee not
earlier than 6 months prior to expiration date.
This term may be extended for next 6 months with
penalty.

REGISTRATION RESTORATION
Important: only holder of national registration,
which lapsed due to unjudicial reasons, may
re-register identical mark for identical G&S within
3 years counting from the lapse date.

WELL-KNOWN MARK
Legislation doesn’t define the term of “well-known
mark”.
It’s agreed that well-known mark – is a mark, which
became reputed in Ukraine, in relevant sector of the
public as a mark of some person, which is protected
according to art. 6 bis of Paris Convention.
A mark can be recognized as well-known by the
Board of Appeal or court.

WELL-KNOWN MARK
For recognition of a well-know mark one must prove:
• the degree of knowledge or recognition of the mark in
the relevant sector of the public (evidences: history of the
mark, manufacturer and its owner, results of polls);
• the duration, extent and geographical area of any use of
the mark (evidences: data on sales values, deliveries
etc.);

WELL-KNOWN MARK
For recognition of a well-know mark one must prove:
• the duration and geographical area of any registrations,
and/or any applications for registration, of the mark;
• the value associated with the mark (evidences: awards,
participation in contests or ratings, sponsorship).

WELL-KNOWN MARK
Well-known mark obtains same scope of protection as
national Ukrainian trademark registration with effect from
the date when the mark has become well-known in
Ukraine. This date is determined by Appeal Board or
court.
Important: legal protection also extends to goods and
services, dissimilar to those for which the mark has gained
its reputation in Ukraine, in case if the use of the other
mark would indicate a connection between these goods
and the owner of the well-known mark, and that his
interests are likely to be damaged by such use.

REGISTRATION OF ASSIGNMENTS
Registration of trademark assignments before State
Service of Intellectual Property is mandatory.
Registration of license agreements is optional and
depends only on parties’ will.

LITIGATION
Main types of cases:
1. Invalidation of national registration which:
- doesn’t match conditions of protection;
- has new figurative elements or goods and services
positions compared to application materials;
- was filed with violation of third party’s rights.

LITIGATION
Important: partially or entirely invalidated registration
lapses from the application date.

LITIGATION
2. Non-use cancellation of national registration
If the mark hasn’t been used in Ukraine, either in
whole or for some registered goods and services,
for three years counting from publication date or
from any date after publication, then any person
may apply for previous cessation of this registration
(in whole or in part).

LITIGATION
Important: presenting of non-use evidences is partly
plaintiff’s responsibility.

LITIGATION
3. Appeal against decisions of examination and
Appeal Board of SSIP.
Appeals against decisions of examination and Appeal
Board are handled in Kyiv Administrative Court.

LITIGATION
4. Recognition of well-know marks in Ukraine.
Cases concerning recognition of well-know marks in
Ukraine are held in Commercial or Civil Courts.
Other types of cases are usually held in Regular
Court or Kyiv Commercial Court, Court of
Solomenskyj district in Kyiv or at the defendant’s –
TM holder’s - location (residence).

LITIGATION
There exist:
- 3 administrative court instances;
- 3 commercial court instances;
- 3 regular court instances.
Supreme Court as 4th
instance considers cases only
under exceptional circumstances.
Average time of considering the case in 1 instance - 1-2 years. In other
instances it usually takes 2-6 months.

CUSTOMS REGISTER
The holder of national or valid in Ukraine international
registration may record his mark in Customs Register.
• Request consideration term: 1 month.
• Official charge: none.
• Record term: 1 year; term may be extended for
undefined number of one-year periods, while the
registration is valid.

CUSTOMS REGISTER
Record in Customs Register enables:
- stop import of counterfeit goods to Ukraine;
- stop export of counterfeit goods from Ukraine.

SEARCH ENGINES
Capability of search engines in Ukraine is quite
limited.
There’re several open TM databases on UIIP official
web portal:
• registered TM (without key words search, number
of classes or holder’s name search);

SEARCH ENGINES
• not valid TM (without key words search);
• well-known TM search (database doesn’t contain all
court decisions);
The most complete search may be conducted by
means of database “E-version of the gazette “Industrial
property””, but it starts from № 4 of 2006.

SEARCH ENGINES
Important: there’s no information about
applications in open databases. It’s only
available for a fee.

SEARCH ENGINES

BALTIC APPLICANTS’ ACTIVITY
IN UKRAINE

IN UKRAINE
OIP Indicator Total
Inventions Applications,
total
11
national 7
РСТ 4
Patents, total 4
national 1
РСТ 3
Utility
models
Applications 11
Patents 10
Designs Applications 1
Patents 1
Trademarks Applications 77
Registrations 54

IN UKRAINE
OIP Indicator Total
total
46
national 9
РСТ 37
Patents, total 22
national 3
РСТ 19
Utility
models
Applications 4
Patents 4
Patents 13
Registrations 57

IN UKRAINE
OIP Indicator Total
total
11
national 3
РСТ 8
Patents, total 13
national 9
РСТ 4
Utility
models
Applications 8
Patents 3
Patents 3
Registrations 116

IN UKRAINE
OIP Country Total
Trademarks Latvia 738
Lithuania 422
Estonia 294

IN UKRAINE

OUR BUREAU
Year of foundation: 1993
Offices:
In Sofia (Bulgaria)
www.emilbenatov.com
e-mail: benatov@einet.bg
In Kyiv (Ukraine)
www.benatov.kiev.ua
e-mail: daniel@benatov.kiev.ua

THANK YOU FOR ATTENTION!

TM registration aspects in Ukraine

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