TRADEMARKS FILING AND PROSECUTION IN UKRAINE
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Ukrainian National Office for Intellectual Property and Innovations (UANIPIO), such as logos, designations of origin, geographical indications, collective marks, and certification marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Ukraine IP Office. In Ukraine, trademark protection is granted according to the provisions of the Law of Ukraine “On Protection of Rights to Trademarks for Goods and Services” (Law No. 3689-XII).
Trademark in Ukraine may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Ukrainian National Office for Intellectual Property and Innovations (UANIPIO) |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | YES |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant; Prints of the trademark; List of goods and/or services in accordance with The Nice Classification; Certified copies of priority documents, if priority is claimed (may be filed to the Ukrainian Trademark Office within three months from the filing date); Signed Power of Attorney, legalization and notarization are not required (may be filed to the Ukrainian Trademark Office within two months from the filing date). |
| Prosecution process | Filing, formality examination, substantive examination, publication, registration, renewal |
| Registration term | 10 years from the date of application. |
| Renewal term | 10 years |
Trademark searches in Ukraine
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Ukraine can be conducted for word mark, numbers, images etc. It is advisable to conduct comprehensive trademark clearance search in Ukraine to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Ukraine.
Filing Trademark Applications in Ukraine
A person may file multi-class trademark applications in Ukraine. There is no limit on the number of classes but the fees to be paid for the application will increase with each additional class applied for.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Ukraine
Ordinary applications filed in Ukraine are applications filed without claiming any priority. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority Trademark applications in Ukraine/ Convention trademark applications Ukraine
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property
A priority trademark application may be filed in Ukraine. It should be filed within 6 months after the date on which the application was made in the convention country along with documentary proof as required.
Trademark Classes for goods and services
Ukraine follows the Nice classification of classes. Hence, the IP Office of Ukraine groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Ukraine
Once the application for registration is submitted, it goes through the examination process, which consists of a formality examination and a substantive examination. The formality examination checks the filing date, goods claimed to fall within trademark and other such formalities giving a two month period to respond to any discrepancies. The substantive examination occurs ex officio on the basis of Absolute and Relative grounds of refusal.
(1) Absolute Grounds for refusal- The legal protection shall not be provided for signs which:
(i) are usually not distinctive in nature and have not obtained such a character through their use;
(ii) consist only of signs that are generally used in the modern language or in fair and constant trade practices on goods and services;
(iii) consist only of signs or data which are descriptive while using in terms of goods and services referred to in the application or due to them, show the type, quality, composition, quantity, properties, intended purpose, value of goods and services, geographical origin, the place and time of production or selling of goods or provision of services, or other specifications of goods or services;
(iv) may mislead the public with regard to the goods or services, namely, as to their nature, quality or geographical origin;
(v) may mislead the public with regard to the person manufacturing the product or rendering the service; – consist exclusively of signs that are commonly used symbols and terms;
(vi) represent only the form imposed by the nature of a product itself or by the necessity to obtain a technical result, or by the form which gives substantial value to a product;
(vii) reproduce the name of a plant variety registered or applied for registration in Ukraine or which has been granted legal protection in accordance with an international agreement of Ukraine before the date of filing an application for a trademark containing such a sign, and if the claimed sign concerns a plant variety of the same or related species;
(viii) contain geographical indications (including for wines and spirits) registered or applied for registration in Ukraine, or which are granted legal protection in compliance with the relevant international agreement of Ukraine, prior to the date of filing an application for a trademark which contains such an indication, and if the priority has been claimed
(ix) prior to the date of priority for the same or related goods, if when using the sign applied for reputation of a geographical indication is used and/or the sign applied for misleads the public as to the special quality, characteristics and true origin of the product
The signs referred to in paragraphs two, three, four, seven and eight may be granted legal protection in the event that they have acquired distinctive character as a result of their use prior to the date of application.
(2) Relative Grounds for refusal- Signs shall not be registered as trademarks when as of the date of filing an application or, if the priority is claimed, as of the date of priority, they are identical or similar to such an extent that they may be confused, in particular, associated with:
(i) trademarks that were earlier registered or filed for the registration in Ukraine in the name of another person for identical or similar goods and services;
(ii) trademarks of other persons if such trademarks are protected without registration in the territory of Ukraine on the basis of the international agreements of Ukraine, namely, the trademarks recognized as well-known in compliance with Article 6bis of the Paris Convention in terms of identical or similar goods and services;
(iii) trademarks of other persons, if such trademarks are protected without registration in the territory of Ukraine on the basis of the international agreements of Ukraine, namely, the trademarks recognized as well-known in compliance with Article 6bis of the Paris Convention in terms of non-related goods and services, if the use of a trademark by another person in regard to such non-related goods and services indicates the connection between them and the owner of a well- known trademark and may harm the interests of such owner;
(iv) trade names that are known in Ukraine and belong to other persons who have acquired the right to the said names before the date of filing the applications with the NIPO with respect to identical or similar goods and services;
(v) conformity marks (certification marks) registered in accordance with the established procedure;
(vi) trademarks used by another person in a foreign state, if an application is filed on his own behalf by an agent or a representative of such person within the meaning of Article 6septies of the Paris Convention without such person’s authorization and there are no proofs that justify such filing if there is an opposition by such person.
Trademark Opposition in Ukraine
The Opposition period is 3 months from the publication date of the application. An opposition may be filed for by any person who believes that their rights are violated by the registration of the mark.
Trademark Registration in Ukraine
The mark will be registered for a period of 10 years from the date of application. Once the registration fee is paid, the registration certificate is issued.
Trademark Renewal in Ukraine
A trademark right can be renewed by filing a request for renewal six (6) months before the trademark right expires. Similar to many other jurisdictions, Ukraine also allows for a 6-month grace period for renewal after the expiry date, provided an additional fee is paid.