Today it is important to distinguish one's own goods from those of competitors. Unfortunately, trademark rights are quite often violated. According to Civil Code of Ukraine, a trademark could be any sign or any combination thereof capable of distinguishing goods and service of one person from the goods and services of another person. According to Article 6.2 of the Law of Ukraine “On Protection of Rights to Trademarks for Goods and Services”, trademarks des¬ignations which don't have a distinctive character and didn't acquire one due to their usage cannot be registered.
A trademark certificate provides its owner with a right to use the trademark and enjoy other rights provided by the Act. The validity term of the initial trademark certificate is 10 years from the date on which the application was filed.
Thus, for such purpose the relevant mark shall be duly registered in Ukraine under national or international protection procedure. Use of unregistered marks in Ukraine is of major risk as such use shall not provide with the right to prohibit using the mark by the third persons.
Often an application for a trade-mark registration contains a huge list of all possible goods or services from a certain class, even if most of them will not be marked by a mark which is designated in the application. There is an assumption that a trademark with larger list will get a larger protection. But according to Law of Ukraine “On Protection of Rights to Trademarks for Goods and Services”, if a trade mark has not been used for goods and services, for which it was registered, for 3 years since a certificate of a trademark was granted, then any person can apply to a court to revoke the certificate in full or in part. In addition, increasing items in a list of goods and services will slow down a registration procedure.
In line with the Law of Ukraine “On Protection of Rights to Trademarks for Goods and Services” in order to authorize a company to use the supplier’s trademark in its business activity, the parties should directly stipulate in a distribution or supply agreement (or in a separate license agreement) that the distributor is authorized to use the respective TMs. The respective agreements in order to be effective in Ukraine shall be concluded in writing and signed and shall contain the essential provisions provided for by the legislation.
The right of the preliminary user can be acquired by any person who used this or similar sign for the same goods or services. Under the law using a mark is: applying the mark on any goods, for which the mark is registered, a package containing goods, a signboard connected with goods, a label, a tab, a tag or another item attached to the goods; storing such goods with the mentioned application of the mark for subsequent offering for sale; offering the goods for sale, import and export; using the mark while offering or rendering any services for which the mark is registered; using the mark in business documentation or in advertising, as well as in the Internet, including use of the mark in domain names. A TM is considered to be used if it was presented in the form of a registered mark or in a form that differs from the registered mark only in minor elements, if such a presentation does not change the features of the mark on the whole.
Only an owner of a certificate on trademark registration has a right to use the respective trademark, to allow and to prohibit others to use trademark.
Prior to applying for trademark registration we would recommend conducting the preliminary TM similarity search to check whether there are registered TMs/pending TM applications in Ukraine that are identical or similar to the marks. Registration of a trademark offers a higher degree of security to the owner of the mark. This allows applicants to prepare the application file more accurately and avoid any possible disputes and delays in relations with Ukrpatent and third parties.
The procedure for trademark registration is rather time consuming but official ways exist to accelerate the process by means of paying extra charges (standard procedure for trademark registration around 16-18 months, accelerated procedure for registration of the trademark around 1 year, speedy registration of the trademarks around 6 months). However, please note that the rights conferred by the trademark certificate are valid from the date of filing the application.
Ukrainian legislation allows any person to submit an opposition to the registration of trademark before a decision of the examination will be made. If allegations in such opposition are set out reasonably then these allegations become grounds for rejection in trademark registration.
Pursuant to the Law of Ukraine “On Protection of Rights to Trademarks for Goods and Services”, in case a mark has not been used in Ukraine fully or with respect to a part of goods and services listed in the respective TM certificate within 3 years as from the date of the official publication of information on the trademark certificate or as from another date after such publication, any person may bring legal action for early termination of such certificate. However, a trademark registration may not be terminated in case the trademark could not be used due to good reasons, such as: circumstances preventing from use of the trademark regardless of the will of trademark owner (e.g. restriction of import or other legislative requirements to goods and services); possibility of deception re producer of goods/services caused by use of the disputed mark by the plaintiff or another person.
If the Ukrainian trademark has not been used in Ukraine for 3 years following the official publication of information on the trademark certificate, and good reasons for such non-use are not in place, the above provision of the Trademark Act re early termination of a TM certificate may be applied to the mark. In Ukraine the trademark certificate may be early terminated due to non-use only through the court.
Ukrainian legislation does not require compulsory state registration of license agreements, it is recommended to register the latter with the Ministry of Education in order to provide a company with more protection in relations with the third parties.
The certificate owner can also allow use of the trademark by others; this is usually done by means of entering into a license agreement. Ukraine is a party to Madrid Agreement Concerning the International Registration of Marks. There is the special national system of registration of the trade marks to ensure their safe use.
According to the effective Ukrainian law a license agreement shall contain the following essential provisions: detailed description of IP object, type of the license (exclusive, non-exclusive), certain rights licensed under the agreement, use of IP object, license period and territory, royalty (frequency of payments, ways for calculation, rate).
In a license agreement the licensor must warrant that (1) it is a beneficiary owner of income from license fee; (2) it is not an agent or a nominal holder or an intermediary; (3) it does not have permanent establishment; (4) it is not registered in offshore jurisdiction.
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