However, the more well-known a trademark is, the more appealing it becomes not just to consumers but also to fraudulent manufacturers. According to this, the purpose of this article is to present the Ukrainian trademark regulation and current market conditions.
The concept of a trademark and its types
An unusual piece of intellectual property is what one may call a trademark. This is because this intangible item (designation) isn’t necessarily the end product of an original intellectual endeavor.
According to the Civil code of Ukraine, a trademark is any designation or any combination of designations suitable for distinguishing goods (services) produced (provided) by one person from goods (services) produced (provided) by other persons. These symbols can be, in particular, words, letters, numbers, visual elements, color combinations, and any combination of the above elements.
The legal protection shall be granted to a trademark that is not contrary to the public order and generally accepted principles of morality, that meets requirements of the relevant Law of Ukraine.
Lawmakers pay attention to the following categories of trademarks:
- Verbal symbol;
- Visual symbol;
- Volume trademarks;
- Combination of color;
- Combinations of symbols.
General legal framework
There are numerous legislative acts that regulate trademark rights on a legal basis:
- by international agreements of Ukraine (e.g. Singapore Treaty on the Law of Trademarks 2006);
- by The Constitution of Ukraine 1996 (articles 41, 54);
- by The Civil Code of Ukraine 2003 (the 4th book);
- by The Commercial Code of Ukraine 2003 (articles 33, 157–159);
- by the following Laws of Ukraine: “On Protection of Rights to Marks for Goods and Services” (hereinafter: – “the Law”), “On Protection Against Unfair Competition” and “On Advertising”;
- by subordinate normative legal acts (e.g. the Rules on Drafting, Filing and Examination of an Application for the Certificate of Ukraine on a Trademark for Goods and Services № 116, hereinafter: – “the Rules”) .
Hence, the legal framework is quite comprehensive. The basic principles and general regulation of trademarks ownership, right and duties of trademarks owners are specified in the Law. Mainly procedural, aspects of trademark registration are included in the Rules: provides detailed guidance on how to file an application for a trademark, including requirements for the application, supporting documents, amendment of the application, appointment of representatives,communication with the IP Service, etc.
Trademark registration in Ukraine is conducted by the State Enterprise “Ukrainian Intellectual Property Institute” (hereinafter: – “Ukrpatent”).
Once the trademark matures into registration, the Ukrpatent grants the Certificate of Registration (CoF) to brand names and to the geographical indication. The acquisition of rights to a trademark that has the international registration or is recognised to be well known in Ukraine, shall not require certification. The validity period of a certificate shall be ten years from the date of submitting an application to Ukrpatent and may be renewed by Ukrpatent at the request of the rights holder every ten years, provided that the fee is paid under the procedure established by clause 2, Article 18 of this Law.
Any individual or legal entity willing to obtain a certificate shall submit an application to Ukrpatent. The application can only be submitted in paper or electronic form. Applications sent by fax or email will not be reviewed. Intellectual property representatives (patent attorneys) may be involved on behalf of the applicant or if foreigners, stateless persons, foreign legal entities and other persons who have a place of permanent residence or permanent location outside Ukraine enter into relations with Ukrpatent. Thus, locals can engage a patent attorney at will, but for foreigners, the participation of a representative is obligatory.
The application shall be drawn up in the Ukrainian language and shall contain:
- a request for registration of a trademark;
- Information about the applicant (name and address of the applicant);
- an image of the sign that is applied for;
- list of goods and services for which the trademark will be used;
- power of attorney (or its duly certified copy) – if the application is submitted by an intellectual property representative.
The application (as well as the supporting documents) is further examined by the Ukrpatent in order to assess its compliance with the legal requirements under the Law. Usually this process may take up to 24 months from the date of submission of application (trademark registration will cost 4,000 hryvnias). However, there is an option for fast-track registration, in which case it will be possible to register your trademark within 8-9 months. For this option the fee is higher – it may cost 5220 or 9396 hryvnias depending on the type of designation. Furthermore, pursuant to the Law, any person, an individual or a legal entity, may register a trademark in foreign jurisdictions. If approved (and after payment of the necessary state fees), the decision to issue a certificate for the registration of a trademark is published in the Ukrpatent official bulletin, and the appropriate entry is made in the Register. It is worth to note that, an applicant with an earlier date of an application filing with Ukrpatent has the right to receive a certificate for the same trademark.
Rights and obligations arising from the registration
According to the Law, the trademark owner is granted rights, which in case of violation may be protected in court order, and obligations. The certificate’s rights become effective on the date the application is submitted.
Rights Arising from the Certificate:
- the right to use the trademark (article 16 paragraph 4);
- the exclusive right to prohibit other persons to use without the consent: nonetheless there are some exemptions (article 16 paragraph 6);
- transfer, by an agreement, the property right to the trademark to any third person;
- the right to grant a permission (issue a licence) for the use of the trademark to any person under a licence agreement;
- the right to place a warning marking alongside with the trademark in the form of the circled Latin character “R”.
An obligation arising from the certificate assumes exercising the rights arising from the certificate in good faith.
Conflicts over trademarks and fair use
Any encroachment on the rights of a certificate holder provided for by Article16 of this Law, as well as preparation for such actions, is considered to be the infringement of the rights resulting in the liability under the current legislation of Ukraine.
According to the law, the owner of the trademark may demand that the infringer stop violating the IP rights and pay back any losses incurred. The owner has the right to demand the removal of any goods, product packaging, labels, badges, or other items affixed to the goods that bear an illegally used trademark, as well as the ban on storage, import, and export of those goods. Additionally, the owner has the right to forbid the use of a trademark by third parties when offering and providing any services for which the trademark was registered, including in legal documents, advertisements, and online content. The owner may even demand that the images of such trademarks be destroyed.
Trademark protection in terms of antimonopoly concepts
The uniqueness of trademark antimonopoly protection is that it can be obtained by a person not on the basis of the certificate, but rather on the basis of the actual primacy of use by the trademark owner.
The Antimonopoly Committee of Ukraine carries out actions such as, but not limited to, the seizure of items bearing illegally used trademarks and the abolition of unfair competition in accordance with the antimonopoly policy of Ukraine.
Unfair competition is defined by the Ukrainian law “On Protection from Unfair Competition” as any practice in competition that goes against trade and other ethical norms in economic activity. In this context, unfair competition also includes using a name, commercial brand, trademark, advertisement, packaging, other marks, periodicals, etc. without the permission of the business entity that has previously used those marks or using a mark that is confusingly similar to or identical to that mark.
A fine of up to 5% of the entity’s revenue from turnover for the previous fiscal year may be imposed for the use of unfair competitive tactics, according to article 21 of the law “On Protection from Unfair Competition.” The statute of limitations for any unfair competition violation is three years from the commission of the offense or, in the case of an ongoing violation, following the completion of the violation.
Summarizing the above, a trademark gives its owners a wide range of legal protections that guarantee proper differentiation between the goods and services they offer from those of other producers of goods and service providers. However, it’s important to remember that a decent “cover” in the form of a trademark, as well as a high-quality product, are equally important to a business’s success. Our team is ready to help with the prosecution, registration and renewal of your trademark in Ukraine.
The content of this article is intended to provide a general guide to the subject matter, not to be considered as a legal consultation.