眾律國際法律事務所

Introduction:

Language: Ukrainian      

Capital: Kiev

Area: 603,500 km2

Population: 42,539,010 (2016)

Currency: Ukrainian hryvnia (UAH)

Religions: Major part of Ukraine religious is Orthodox with 46%.

Geographical situation: in Eastern Europe, bordered by Russia to the east and northeast, Belarus to the northwest, Poland and Slovakia to the west, Hungary, Romania, and Moldova to the southwest, and the Black Sea and Sea of Azov to the south and southeast, respectively.

International treaty membership:

Singapore Treaty on the Law of Trademarks (May 24, 2010)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (July 29, 2009)

WIPO Copyright Treaty (March 6, 2002)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (December 29, 2000)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (December 29, 2000)

Trademark Law Treaty (August 1, 1996)

Madrid Agreement Concerning the International Registration of Marks (December 25, 1991)

Convention Establishing the World Intellectual Property Organization (April 26, 1970)

Paris Convention for the Protection of Industrial Property (December 25, 1991)

Legislation:

The Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”

Government Institutions:

State Intellectual Property Service of Ukraine (SIPS)

Type of trademark:

The object of a mark may be any sign or any combination of signs. Such signs may be, among other, words, including personal names, letters, numerals, 3D shapes, pictorial elements, colors and combinations of colors, as well as any combination of such signs.

Service marks are also allowed to be protected.

Ground for refusal :

the legal protection shall not be granted for marks that represent or imitate:

-  State armorial bearings, flags, and other State emblems, and other State symbols; official names of States;

-  symbols and abbreviated or full names of international intergovernmental organizations;

-  official signs and hallmarks indicating control and warranty, assay marks, seals; decorations and other distinctions of honor

-  marks that are usually devoid of any distinctive character and have not obtained such a character as a result of their use;

Signs shall not be registered as marks if

-  they are identical or misleadingly similar to earlier mark, well known marks and origin of goods.

-  They are 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 legal successors;

Application content:

Foreign and other persons residing or having a permanent location outside Ukraine shall exercise their rights in the relations with the Institution through representatives registered under the Provisions regarding Representatives on Matters of Intellectual Property, approved by the Cabinet of Ministers of Ukraine. The registration fees for foreigner shall be paid in US Dollar.

The request for the registration of a mark:

-  an image of the sign being claimed;

-  a list of goods and services for that the applicant requests to register the mark which are grouped according to the ICGS.

-  Information on applicant, name, address.

-  Payment of fees.

Application process:

The application's examination shall be conducted by an institution of expert which will give a report to the Institute. On the ground of such a report, the Institution shall make a decision on the registration of the mark for all the goods and services listed in the application or on the refusal of the registration of the mark for all the goods and services listed in the application, or on the registration of the mark for a certain part of the goods and services listed in the application and on the refusal of the registration of the mark for the remaining part of the goods and services listed in the application. The applicant shall be notified about the decision of the Institution.

The applicant shall be entitled to the right to require copies of the materials, which were opposed to the application, within a month after receiving the decision of the Institution. These copies shall be sent to the applicant within a month.

If there are reasons to consider that the claimed sign does not meet fully or partially the requirements for granting the legal protection, the institution of expert examination shall send to the applicant the grounded preliminary conclusion with the proposition to give a motivated answer to support the registration of mark. The applicant will have 2 months to give an answer.

On the base of the decision the trademark registration will be published in the Official Bulletin, and issue a certificate after payment of the fees by the applicant.

In the same time with the publication of the data concerning granting a certificate, the Institution provides the State registration of a mark. For this purpose, the Institution enters the relevant data in the Register.

Refusal:

The protection of a mark will be rejected if it meet some ground for refusal or if the applicant is not able to pay the fees for different step in the registration.

As we said in the previous section, for every decision of refusal, the applicant will have a right to make observations.

Also, the applicant may appeal to the court or the Appellate Chamber against the Institution decision on the application within 2 months from the date of receiving the Institution decision.

Before approving the Appellate Chamber decision, within a month from the date of making the decision, the Head of the Institution may present a grounded written protest against this decision, and this protest shall be considered within a month. The decision of the Appellate Chamber made on the protest is final and may be cancelled only by the court.

The applicant may appeal to the court against the Appellate Chamber decision approved by the Institution within 2 months from the date of receiving the decision.

Rights of exploitation and related delay:

The protection of the mark is granted for 10 years, renewable each time for 10 years.

The protection granted allow the owner of the rights to use exclusively this mark, like applying the mark on any goods for which the mark is registered, using the mark for advertising or internet website.

The ownership of the mark also allows the right owner to prevent other parties to use the mark in the same range of goods and services. There are exception to this principle, if the mark is use in a non commercial purpose, if the mark is quoted in news or if the name or address of a person is the same than the protected mark.

The mark can also be transferred to another person.

Transfer and conditions:

The types of transfer allowed are assignments and licenses.

The licensing agreement shall contain a provision providing that the quality of goods or services manufactured or rendered according to the licensing agreement will not be lower than the quality of goods and services provided by the proprietor of the certificate, and that the proprietor of the certificate will provide the control under the fulfillment of the said requirement.

An agreement for transferring the property right to the mark and a licensing agreement are valid if they were concluded in writing and signed by the contracting parties. Each contracting party has the right to notify an indefinite circle of persons about transferring the property right to the mark or granting a license for using the mark. Such a notification is provided by publishing the information in the official bulletin of the Institution in the volume and under the procedure determined by the Institution with simultaneous entering this data in the Register.

Whereas, the transfer of the mark shall be refused if it may cause a deception of a consumer with respect to goods and services or to the person manufacturing goods or rendering services.

Certification:

The right of property to a mark shall be certified by a certificate. The certificate contains the copy of the image of the mark entered in the Registry and the list of goods and services.

The Institution 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.

In the case of publishing information about transferring the property right to the mark with respect to a part of the goods and services listed in the certificate, the Institution shall grant a new certificate to the person to which the said right was transferred, provided that the document for the payment of the State fee for granting a new certificate is available.

Withdrawal and cancellation:

The applicant has the right to withdraw an application at any time before the date of paying the State fee for granting a certificate.

The proprietor of the certificate may at any time renounce the certificate fully or partially on the bases of a declaration submitted to the Institution. The renunciation shall be effective from the date of publishing the relevant information in the official bulletin of the Institution.

The certificate validity is terminated in the case of default of the payment of the fee for extending the certificate validity period. The Institution before the expiration of the current certificate validity period shall receive the document for the payment of the fee for each extension, provided that the payment was made within the last 6 months of the said period.

If a mark is not used in Ukraine fully or with respect to a part of goods and services listed in the certificate within 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.

In this case, the certificate validity may be terminated fully or partially unless the proprietor of the certificate gives valid reasons for such a nonuse.

A certificate may be fully or partially invalidated by the court in the following cases:

-  The registered mark does not meet the requirements for granting the legal protection.

-  The certificate contains elements of the mark reproduction and the list of goods and services that were not presented in the filed application.

-  The certificate was granted in the result of the filing an application with the infringements of rights of other persons.

If the certificate is considered to be fully or partially invalid, the Institution shall inform about it in its official bulletin.

The certificate or a part of the certificate that have been considered to be invalid, are considered to be those that are out of effect from the date of filing the application.

Customs protection:

Objects are registered in the customs register for the period of six months or one year. Registration effective date shall be considered the day when the object was included in the customs register on demand of the applicant.

Customs authorities take actions to prevent movement of pirated goods across the customs border of Ukraine after registration of objects of intellectual property law in the customs register and based on the data contained therein. They also have the right to discretion customs clearance of goods concerning which the right holder had failed to file application for the protection of his proprietary rights to the object of intellectual property law, but there are sufficient reasons to believe that proprietary rights to said object may be violated as a result of movement of said goods across the customs border of Ukraine.

Sources:

Wipo.int:

• The Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”
• Resolution of the Cabinet of Ministers on Registration of Objects of Intellectual Property Law in Customs Register, Gathering of Information, and Interaction of Customs Authorities with Other Law Enforcement and Controlling Authorities and Owners of Rights to Objects of Intellectual Property Law in the Event of Suspension of Customs Clearance of Goods at the Discretion of the Customs Authority

Vincent Lagier