Trade Marks 2017 (Chapter Ukraine)8 May 2017
1 Relevant Authorities and Legislation
1.1 What is the relevant trade mark authority in your jurisdiction?
The relevant authorities are the State Intellectual Property Service of Ukraine (hereinafter “SIPS”) – a central executive body which implements State policy in the field of intellectual property – and the “Ukrainian Institute of Intellectual Property” State Enterprise (hereinafter “UA PTO”), which is managed by SIPS and where applications are filed.
1.2 What is the relevant trade mark legislation in your jurisdiction?
The relevant trade mark legislation includes:
1. the Civil Code of Ukraine, dated January 16, 2003, No. 435-IV;
2. the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, dated December 15, 1993, No. 3689-XII (hereinafter “Trademark Act”);
3. the Rules for Drafting, Filing and Consideration of Trademark Applications, approved by Order of the State Department for Intellectual Property, dated July 28, 1995, No. 116 (hereinafter “Rules”);
4. the Paris Convention for the Protection of Industrial Property (International Union) (hereinafter “Paris Convention”) 1883–1967;
5. the Madrid Agreement Concerning the International Registration of Marks 1891–1967;
6. the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Union) 1957–1977;
7. the Vienna Classification (“VCL”) 1973;
8. the Nairobi Treaty on the Protection of the Olympic Symbol 1981;
9. the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989;
10. the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) 1994;
11. the Trademark Law Treaty 1994;
12. the Singapore Treaty on the Law of Trademarks 2006; and
13. the Ukraine–European Union Association Agreement.
2 Application for a Trade Mark
2.1 What can be registered as a trade mark?
Any signs or a combination of signs can be registered as a trade mark. Such signs may be, among others, words, including personal names, letters, numerals, pictorial elements, 3D elements, colours and combinations of colours, as well as any combination of such signs. Such trade marks may be represented in a colour or combination of colours.
Sound trade marks are registered only if it is technically possible to enter them in the State Trademark Register of Ukraine in the form of notes and thus make information on their registration available to the public.
2.2 What cannot be registered as a trade mark?
Legal protection is not granted in Ukraine to designations that represent or imitate:
- State armorial bearings, flags, and other State emblems (symbols);
- official names of States;
- symbols and abbreviated or full names of international intergovernmental organisations;
- official signs and hallmarks indicating control and warranty, assay marks or seals; or
- awards and other decorations.
Such symbols may be included in a trade mark as elements that are not protected, provided that the consent of the relevant authorised body or the proprietors of the signs was obtained.
The object of the sign cannot be the names and pseudonyms of persons who occupied managerial positions in the communist party (as Secretary of the District Committee and above), the higher bodies of government and management of the USSR, the Ukrainian SSR, other Union or autonomous Soviet republics (except for cases of development of Ukrainian science and culture), who worked in Soviet public safety, the names of the USSR, the Ukrainian SSR, other Union Soviet republics and their derivatives, or names associated with the activities of the Communist Party, the establishment of Soviet power in Ukraine or in certain administrative-territorial units, or prosecution of the struggle for independence of Ukraine in the 20th century.
Legal protection is not granted to designations that:
- are usually devoid of any distinctive character and have not obtained such a character as a result of their use;
- consist exclusively of signs that are commonly used as the signs of goods and services of a certain kind;
- consist exclusively of signs or data that are descriptive while being used for goods and services defined in the application or with respect to them; in particular, signs or data that indicate kind, quality, composition, quantity, properties, purposes, value of goods and services, place and time of manufacturing or sale of goods or rendering of services;
- are deceptive or liable to mislead as to goods, services, or the person that produces a good or renders a service;
- consist exclusively of signs that constitute commonly used symbols and terms; or
- solely reflect the form caused by the natural state of goods, or by the necessity to obtain a specific technical result, or the form that imparts a significant value to a good.
Such signs may be used in a mark as elements that are not protected if these signs are not dominative in the image of the trade mark (except signs which are deceptive or liable to mislead as to goods, services, or the person that produces a good or renders a service).
Legal protection will not be granted to designations if they are identical or misleadingly similar to such an extent that they can be confused with:
- trade marks that were earlier registered or filed for registration in Ukraine on behalf of another person for identical or similar goods and services;
- trade marks of other persons if these trade marks are protected without registration according to the international agreements to which Ukraine is a party; in particular, marks recognised as well-known marks according to Article 6bis of the Paris Convention;
- trade names (company or firm 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 application with respect to identical or similar goods and services;
- qualified appellations of origin of goods (including spirits and alcoholic beverages) that are protected according to the Law of Ukraine On the Protection of Rights to Appellation of the Origin of Goods; the said signs may be used only as non-protected elements of marks of the persons who have the right to use the said appellations; and
- conformity marks (Certification marks) that have been registered in the established order.
Legal protection will not be granted to designations if they reproduce:
- industrial designs, the rights to which in Ukraine belong to other persons;
- 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; or
- surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine without their consent.
2.3 What information is needed to register a trade mark?
The information and documents required for filing a trade mark application in Ukraine are the following:
- an image of the claimed mark;
- the list of goods and/or services for which legal protection is applied, grouped according to the International Classification;
- the full name and address of the applicant(s), and the State code according to the WIPO standard;
- an indication of the trade mark colour (if applicable);
- the date, country and number of the priority application or date of exhibition (if priority under the Paris Convention is claimed);
- a certified copy of the priority application or document confirming the presentation of exhibits incorporating the applied trade mark at an official or officially recognised international exhibition (if priority under the Paris Convention is claimed); and
- Power of Attorney signed by an authorised person on behalf of the applicant.
2.4 What is the general procedure for trade mark registration?
In the case of a smooth trade mark registration process, the procedure is the following:
- Filing the application. The set of trade mark application documents is filed with the UA PTO. The application should be submitted through a representative for non-residents of Ukraine.
- Formal (preliminary) examination. In the course of a formal examination, a filing date for the application is determined. The application is examined to verify conformity with the formal requirements and regulations in compliance with the Trademark Law and the Rules; the document for the payment of the respective fee for filing the application is also examined to verify conformity with the specified requirements. If the application meets all of the formal requirements, then the qualifying examination is conducted.
- Substantive examination. At this stage, the trade mark is examined to verify conformity with the conditions for granting the legal protection defined by the Trademark Law. In such case, a database at the examination institute, including the materials of the earlier filed applications, as well as external information sources and relevant official publications, are used.
- Trade mark registration and granting of the certificate. If, at the previous stage, the examination concluded that the trade mark corresponds to all of the established criteria, the decision of trade mark registration is issued. After payment of the official registration fees, the trade mark certificate is granted.
2.5 How can a trade mark be adequately graphically represented?
Where registration of a trade mark image is being applied for, it must be submitted in the form of photocopies or prints sized 8cm × 8cm. If the registration of a 3D trade mark is being applied for, its image must be made from an angle which enables imagining the object as a whole. Additionally, it is necessary to provide representations of all necessary views that provide clear and comprehensive representations of the trade mark.
If registration of a label as a trade mark is applied for, it should be submitted as a representation of the trade mark, under the condition that its size does not exceed 14cm × 14cm.
Photocopies or prints must be of high contrast and distinct, and must be submitted in the colour or combination of colours mentioned in the application.
2.6 How are goods and services described?
All goods and services for which legal protection is applied should be grouped in classes according to the Nice Classification and each of them should be precisely defined in the application.
2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?
A Ukrainian trade mark registration covers the whole territory of Ukraine.
2.8 Who can own a trade mark in your jurisdiction?
Any Ukrainian or foreigner and/or Ukrainian or foreign legal entity may obtain a Ukrainian trade mark registration.
2.9 Can a trade mark acquire distinctive character through use?
A trade mark can acquire distinctive character through its use in Ukraine. A trade mark devoid of any distinctive character can obtain legal protection on the assumption of provision of materials confirming the acquisition of distinctive character by the trade mark as a result of its extensive use prior to the filing of an application.
2.10 How long on average does registration take?
On average, the trade mark registration procedure in Ukraine takes approximately 10–14 months in the case that the trade mark application is not opposed by any third party and no official action is issued against the application by the UA PTO.
2.11 What is the average cost of obtaining a trade mark in your jurisdiction?
The average cost of official filing, registration and publication fees for registering a black-and-white trade mark in one class of the Nice Classification by one applicant in Ukraine amounts to USD 245.
2.12 Is there more than one route to obtaining a registration in your jurisdiction?
In addition to the national procedure of a trade mark registration, there is another possible route to obtaining a registration in Ukraine, which is the international procedure of trade mark registration via the Madrid system (the Madrid Agreement and the Protocol). An alternative method of protecting rights to a trade mark is recognising it as a well-known mark.
2.13 Is a Power of Attorney needed?
According to Ukrainian legislation, foreign and other persons residing in or having a permanent location outside Ukraine shall exercise their rights in the relations with the UA PTO via a representative on intellectual property matters appointed by an applicant or other person empowered to act on behalf of the applicant. In this context it is necessary to provide the UA PTO with a Power of Attorney signed by the applicant.
2.14 If so, does a Power of Attorney require notarisation and/or legalisation?
Neither notarisation nor legalisation is required. However, in case the PoA is issued by way of substitution, it should be notarised. Otherwise, it is necessary to provide the UA PTO with a notarised copy of Power of Attorney issued by the applicant to the person who signed the Power of Attorney to represent the interests of the applicant in Ukraine.
2.15 How is priority claimed?
The Convention priority of a prior application for the same trade mark may be claimed within six months from the date of filing the prior application with the relevant institution or body of a Member State of the Paris Convention, provided that the priority on the previous application was not claimed. A priority document (a certified copy of the previous application) is to be filed within three months from the date of filing the application.
The priority of a mark that was used in an exhibit shown at an official or officially recognised international exhibition in the territory of a Member State of the Paris Convention may be determined by the date of opening of the exhibition, provided that the application is filed within six months from the said date.
2.16 Does your jurisdiction recognise Collective or Certification marks?
According to Ukrainian legislation, Collective marks are recognised. An application for a Collective mark can be filed by an association of persons that either produces goods or renders services having a common purpose. The application must be accompanied by the Regulations governing the use of a Collective mark and signed by all members of the association.
Certification marks are not recognised in Ukraine.
3 Absolute Grounds for Refusal
3.1 What are the absolute grounds for refusal of registration?
Under Article 6 of the Law of Ukraine on the Protection of Rights to Trademarks and Service Marks, legal protection shall not be granted for marks that:
1. contradict public order or principles of humanity and morality;
2. represent or imitate:
2.1) State armorial bearings, flags, and other State emblems, and other State symbols (emblems);
2.2) official names of States;
2.3) emblems and abbreviated or full names of international intergovernmental organisations;
2.4) official signs and hallmarks indicating control and warranty, assay marks, seals; or
2.5) awards and other distinctions of honour;
3. are usually devoid of any distinctive character and have not obtained such character as a result of their use;
4. consist exclusively of signs that are commonly used as the signs of goods and services of a certain kind;
5. consist exclusively of signs or data that are descriptive while used for goods and services defined in the application or with respect to them; in particular, signs or data that indicate kind, quality, composition, quantity, properties, purposes, value of goods and services, the place and time of manufacturing or the sale of goods or rendering of services;
6. are deceptive or liable to mislead as to goods, services, or the person that produces a good or renders a service;
7. consist exclusively of signs that constitute commonly used symbols and terms; or
8. solely reflect the form caused by the natural state of goods, or by the necessity to obtain a specific technical result, or the form that imparts a significant value to a good.
3.2 What are the ways to overcome an absolute grounds objection?
In the case of disagreement with a provisional refusal based on absolute grounds, an applicant can submit a response to the provisional refusal with arguments in favour of trade mark registration, which are be taken into consideration before the issuing of a final decision on the application. Such motivated response should be submitted to the UA PTO within two months from the date of receipt of the notification of the provisional refusal of trade mark registration.
The signs indicated in point 2 of question 3.1 may be included in a mark as elements that are not protected, provided that the consent of the relevant authorised body or the proprietors of the signs was obtained.
The signs indicated in points 3–5 and 7–8 of question 3.1 may be used in a mark as elements that are not protected if these signs are not dominant in the image of a mark.
The absolute grounds for refusal indicated in points 3–5 and 7 of question 3.1 may be overcome by proving that a mark acquired distinctiveness through its extensive and long-term use.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
A final decision on a refusal to grant protection for a trade mark may be appealed by the applicant.
3.4 What is the route of appeal?
An applicant may appeal against a final decision on a refusal to grant protection for a trade mark to the court or to the Board of Appeals of SIPS within two months from the date of receiving a final decision.
A decision of the Board of Appeals may be appealed by the applicant to the court within two months from the date of receiving such decision.
4 Relative Grounds for Refusal
4.1 What are the relative grounds for refusal of registration?
There following are relative grounds for refusal of registration:
1. Signs shall not be registered as marks if they are identical or misleadingly similar to such an extent that they can be confused with:
- marks that were earlier registered or filed for registration in Ukraine on behalf of another person for identical or similar goods and services;
- marks of other persons if these marks are protected without registration according to the international agreements to which Ukraine is a party; in particular, marks recognised as well-known marks;
- 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 respect to identical or similar goods and services; or
- qualified indications of the origin of goods.
2. Signs shall not be registered if they reproduce:
- industrial designs, the rights to which in Ukraine belong to other persons;
- titles of scientific, literary, and artistic works known in Ukraine or quotations and characters from the said works, as well as artistic works and fragments of artistic works without the consent of copyright holders or their legal successors; or
- surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine without their consent.
4.2 Are there ways to overcome a relative grounds objection?
The applicant has a right to file a motivated response to a provisional refusal issued by the UA PTO within two months from receiving such provisional refusal. The term for filing a response may be extended for no more than six months. A term missed because of valid reasons shall be renewed if the relevant request to the UA PTO is submitted within six months after its expiration.
Motivated arguments, which need to be filed for the benefit of trade mark registration, depend on the grounds of the provisional refusal.
4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
A final decision on the refusal to grant protection for a trade mark may be appealed by the applicant.
4.4 What is the route of appeal?
An applicant may appeal against a final decision on the refusal to grant protection for a trade mark to the court or to the Board of Appeals of SIPS within two months from the date of receiving a final decision.
A decision of the Board of Appeals may be appealed by the applicant to the court within two months from the date of receiving such decision.
5.1 On what grounds can a trade mark be opposed?
A trade mark can be opposed if the trade mark presented in the application does not conform to the conditions of granting legal protection, namely on the absolute and/or relative grounds indicated in the responses to questions 3.1 and 4.1.
5.2 Who can oppose the registration of a trade mark in your jurisdiction?
According to the Trademark Law, any person has a right to submit an opposition against an application to the UA PTO in respect of the trade mark presented in the application not conforming with the requirements of granting legal protection.
5.3 What is the procedure for opposition?
According to the Trademark Law, an opposition should be filed to the UA PTO no later than five days prior to the date of the issuing of a final decision on the application. Since 2015, the UA PTO has opened access to the database of trade mark applications, which have passed the stage of formal examination. Consequently, the additional options for monitoring trade mark applications for filing an opposition appeared.
6.1 What happens when a trade mark is granted registration?
After receipt of the decision on granting protection to the trade mark, an applicant should pay an official registration fee for the trade mark certificate in the amount of USD 200, as well as a publication fee, which amounts to UAH 150 for one class and UAH 100 for additional publication in colour. If, within three months after the date of receipt of the decision on the registration of a mark, the documents confirming the payment of fees for granting a certificate and for publication on granting a certificate have not been submitted to the UA PTO, the publication is not conducted and the application is considered to be withdrawn. After receiving documents confirming the payment of the official fees, the information regarding the trade mark registration is published by SIPS in the official bulletin and the trade mark certificate is granted to the applicant or its representative.
6.2 From which date following application do an applicant’s trade mark rights commence?
The rights deriving from a certificate are effective from the date of the filing of the application.
6.3 What is the term of a trade mark?
A Ukrainian trade mark certificate is valid for a period of 10 years.
6.4 How is a trade mark renewed?
A trade mark can be renewed by filing a renewal request, together with the payment of an official fee, which amounts to UAH 3,000 per class and UAH 300 per additional class. Such renewal request should be submitted to the UA PTO within the six-month period before the expiration of the registration. In the case that such a request is received by the UA PTO within six months after the expiration of the registration, renewal fees are increased by 50 per cent.
7 Registrable Transactions
7.1 Can an individual register the assignment of a trade mark?
Registration of the assignment of a trade mark is obligatory. A request of registration of the assignment can be filed with SIPS either by the assignor or the assignee, or a representative thereof acting according to the Power of Attorney. In the case that the trade mark is assigned to a non-resident of Ukraine, the request for assignment registration, with all supporting documents, shall be filed by the representative of the assignee. Along with the request, the assignment agreement, the Power of Attorney (if relevant) and a document confirming the payment of the official fee should also be submitted.
7.2 Are there different types of assignment?
Assignment is possible with respect to all goods or services covered by the trade mark registration or a part of them. The partial assignment of rights to a trade mark is registrable provided that it does not mislead the consumer as to the goods and/or services, or as to the manufacturer of the goods/provider of services. Ukrainian legislation does not provide a definition of goodwill. Similarly, the trade mark assignment is performed and registered without formal linkage to goodwill.
7.3 Can an individual register the licensing of a trade mark?
Registration of a licence is possible, but not obligatory. A request of licence registration (i.e. the form) can be filed with SIPS either by the licensor or the licensee, or a representative thereof acting according to the Power of Attorney. Along with the request, the licence agreement or notarised extract from it, the Power of Attorney (if relevant) and a document confirming the payment of the official fee should also be submitted.
7.4 Are there different types of licence?
Ukrainian legislation provides for exclusive, non-exclusive and sole licences.
7.5 Can a trade mark licensee sue for infringement?
A trade mark licensee can sue for infringement provided that it has the licensor’s consent.
7.6 Are quality control clauses necessary in a licence?
Under the Trademark Act, licence agreements shall contain a provision providing that the quality of goods or services manufactured or rendered by the licensee should not be lower than the quality of goods and services provided by the trade mark owner. Additionally, the trade mark owner is obligated to control the fulfilment of the said requirement.
According to the Civil Code of Ukraine, the licence agreement shall be concluded on conditions as agreed by the parties, with due regard for the requirements specified by the laws. The absence of a quality control clause may therefore put the licence’s validity at risk due to its non-conformity with the laws. At the same time, the lack of a quality control clause in the text of a licence agreement is not grounds for claiming the trade mark revocation.
In addition, quality control clauses are necessary in a licence in order for it to be registered with SIPS.
7.7 Can an individual register a security interest under a trade mark?
Registration of a security interest under a trade mark is possible. The security interest cannot be recorded under the trade mark on the Register but can be recorded in the State Registry of Securities of Movables.
7.8 Are there different types of security interest?
Security interests can be one of two types:
- private – created by agreement; or
- public – created by a court decision or by operation of law.
8.1 What are the grounds for revocation of a trade mark?
The Trademark Act provides for the following grounds for revocation of a trade mark by third persons:
1. A trade mark becomes commonly used for marking certain goods and services after the date of filing the trade mark application. A trade mark can be revoked on this ground by court decision only.
2. A trade mark has not been used for all or part of goods and services for three years from the publication date or any other date after the date of publication. A trade mark can be revoked on the ground of non-use by court decision only.
8.2 What is the procedure for revocation of a trade mark?
A trade mark can be revoked by third persons by filing a claim to the court against the SIPS of Ukraine and the trade mark owner.
In the course of court proceedings, in order to clarify issues that require special knowledge, the court can appoint a judicial expert.
In the case of revocation of a trade mark based on non-use, a claimant should file evidence of non-use of the trade mark within the last three years. The burden of proof of the use of trade mark lies on the trade mark owner, i.e. it is the latter that should document that the trade mark was actually used. The judge renders the decision after consideration and assessment of all evidence submitted by the parties.
Additionally, the trade mark can be revoked automatically in case of non-payment of the State fees for prolongation of its validity for another 10 years.
8.3 Who can commence revocation proceedings?
Revocation proceedings can be commenced by a person (an individual or a legal entity) that can prove that its rights or legal interests are infringed by the disputed trade mark registration (e.g. the examiner of the SIPS of Ukraine cited the subject trade mark as an obstacle for granting protection for a similar trade mark, filed by the plaintiff; the owner of the disputed trade mark sues the plaintiff for trade mark infringement, etc.).
For the purpose of revocation proceedings, proof of prior rights from the side of the plaintiff is not required.
8.4 What grounds of defence can be raised to a revocation action?
In case of revocation of a trade mark based on non-use, the owner of the disputed trade mark can provide:
- reasonable excuses for non-use, such as: circumstances that prevented the use of a trade mark regardless of the will of the trade mark owner (limitations on its importation or other requirements with respect to the goods and services established by the legislation); or possibly being misleading with regard to the manufacturer of goods or services during the use of the trade mark by the plaintiff or another person; or
- evidence that the trade mark is/was actually used, such as: customs declarations on the importation of the goods, marked with the trade mark; agreements on the supply of such goods to Ukrainian contractors; or advertising of the goods in printed media distributed in Ukraine, etc. It is necessary to prove the genuine use of the trade mark within the three subsequent years before the date of the filing of the claim with the court. Use in a form not as registered can be considered as use, provided that the form in which the trade mark is used is sufficiently similar to the registered form.
8.5 What is the route of appeal from a decision of revocation?
A decision of revocation issued by the courts of first instance can be appealed to the courts of appeal (second instance). Further, a cassation appeal can be filed against the decision of the court of appeal. The second appeal instance can revert the case for repeated consideration to the first instance court. In such a case, the second route of appeal is possible.
9.1 What are the grounds for invalidity of a trade mark?
Under the Trademark Act, a trade mark can be invalidated on the following grounds:
a) a trade mark did not meet the requirements for registrability;
b) a trade mark certificate contains elements of the image of the trade mark or a list of goods and services which were not stated in the filed trade mark application; or
c) a trade mark certificate was issued in violation of a third person’s rights when filing the application.
According to the laws of Ukraine, bad faith is not considered grounds for trade mark invalidation.
9.2 What is the procedure for invalidation of a trade mark?
A person (an individual or an entity) interested in the invalidation of a trade mark should file a statement of claim with the respective court. An action as to invalidation of a trade mark should be filed against the owner of the disputed trade mark and SIPS as co-defendant. In the court proceedings, the parties are entitled to provide evidence in support of their claims or statements of defence. In order to answer the questions – for instance, whether the disputed trade mark met the requirements for registrability on the filing date of the application – the court can involve a judicial expert who will draw the respective conclusions. After consideration and assessment of all evidence submitted by the parties, the court shall render a decision.
9.3 Who can commence invalidation proceedings?
An individual or an entity that can prove that its rights or legal interests are infringed by the disputed trade mark is entitled to file an action as to invalidation of such trade mark (e.g. in the case that a plaintiff is the owner of the trade mark which is confusingly similar to the disputed trade mark and it was registered in Ukraine earlier with respect to similar goods or services).
9.4 What grounds of defence can be raised to an invalidation action?
The owner of a disputed trade mark can assert that there are no legal grounds for invalidation of the disputed trade mark and provide relevant evidence of this. Thus, in the case that non-registrablity of a trade mark is claimed, the trade mark owner can state that the trade mark is not similar to the trade mark registered in the name of the plaintiff, or repeated research should be conducted by a judicial expert. Additionally, the owner of the disputed trade mark can file a counterclaim as to revocation of a trade mark that belongs to the plaintiff based on non-use.
The claim of bad faith is not applicable in the Ukrainian jurisdiction.
9.5 What is the route of appeal from a decision of invalidity?
An appeal against the decision of the first instance court can be filed with the court of appeal. A cassation appeal against the decision of the court of appeal is also possible. The second appeal instance can revert the case for repeated consideration to the first instance court. In such a case, the second route of appeal is possible.
10 Trade Mark Enforcement
10.1 How and before what tribunals can a trade mark be enforced against an infringer?
A trade mark can be enforced before a commercial court at the location of infringement, before a civil court at the location of the caused damages or at the location of defendant. In the case that all the parties of a dispute are legal entities or private entrepreneurs, the dispute falls under the jurisdiction of a commercial court. If at least one party of the dispute is a natural person, the dispute falls under the jurisdiction of a civil court. In order to bring a court action against an infringer, a claimant should file a statement of claim with the court among evidence of infringement.
10.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
The laws of Ukraine prescribe the voluntary pre-trial procedure. According to such a procedure, a claimant can issue a cease-and-desist letter to the infringer in order to mutually settle the matter. The recommended term for considering the demands of the cease-and-desist letter by its recipient is one month.
In the case the claim is filed to a court, the first hearing shall be set within two to four weeks after receipt of the claim, provided that the claim complies with the formal procedural requirements. The average timeframe for the proceeding in the first instance court is six to 10 months. The average timeframe for the proceeding in the appeal and second appeal instance is three to six months.
10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
Ukrainian legislation does not prescribe final injunctions – only preliminary ones.
Preliminary injunctions are applicable if the rejection of such injunctions will make further enforcement of judgment impossible or difficult and/or if there is a risk that the evidence in the case will not be preserved. In civil court proceedings, preliminary injunctions can be given by the court only on the ground of a party’s motion. In commercial court proceedings, preliminary injunctions can also be given at the initiative of the court.
10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
A party can be compelled to provide relevant documents or materials to the court on the ground of a court order. After that, the adversary party may get acquainted with the case materials. In order to obtain the court order, an interested party should prove before the court that documents or materials that are in the possession of an adversary party are necessary for resolving a dispute and should be considered by the court.
10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
Submissions and evidence should be presented in writing in both civil and commercial proceedings. The parties can give their oral explanations and arguments and request oral motions before the court. In commercial proceedings, it is not possible for witnesses to give testimony. In civil proceedings, a party can request that the court allow testimony from witnesses. In the case that testimony of witnesses is controversial, a court has the right to cross-examine such witnesses.
10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
Upon an appropriate motion of a party, infringement proceedings can be suspended until the resolution of an invalidation dispute in another court.
10.7 After what period is a claim for trade mark infringement time-barred?
The limitation period for filing a trade mark infringement claim is three years from the date on which the interested person became aware or should have been aware of an infringement. Upon the lapse of the limitation period, the claim can be considered by the court, provided that the plaintiff has sufficient grounds for not being able to submit the claim on time.
10.8 Are there criminal liabilities for trade mark infringement?
Illegal use of a trade mark can be considered a crime in Ukraine. Criminal liability occurs in the case that a trade mark infringement causes damages. The minimum amount of damages for the purpose of criminal action is prescribed by law and amounts to approx. UAH 16,000.
The laws of Ukraine prescribe the following criminal liability for trade mark infringement:
- a penalty;
- limitation of the right to hold managing positions or engage in certain types of business activities for a determined period of time.
As a matter of practice, in judgments the courts also address the issue of confiscation and destruction of the goods made with unauthorised use of the trade mark. Such goods shall be confiscated and destroyed by court order.
10.9 If so, who can pursue a criminal prosecution?
A criminal prosecution can be pursued only on the ground of a claim of a trade mark owner or its licensee, provided that the licensee has obtained the consent of the trade mark owner.
10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?
The provisions for unauthorised threats of trade mark infringement as such are not prescribed under Ukrainian legislation.
Ukrainian competition laws provide for protection against defamation and libel, while criminal legislation provides protection against any threats of causing physical or material damage.
11 Defences to Infringement
11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?
The grounds of defence can be as follows: a registered trade mark is not confusingly similar to a designation used by the defendant; goods/services for which a trade mark is registered are not similar to goods/services for which the defendant uses the designation; the trade mark owner’s rights have been exhausted; a trade mark owner has a right of prior use of the trade mark; or the use of a trade mark by the defendant is non-commercial.
11.2 What grounds of defence can be raised in addition to non-infringement?
In addition to non-infringement, a defendant can raise the following defences:
- expiration of the limitation period;
- the absence of infringed rights or legitimate interest of the claimant;
- the right to prior use;
- non-commercial use of the mark;
- use of the mark expressly in news and broadcasts;
- conscientious use of the names or addresses; or
- use of the goods that were introduced into the commercial turnover by the trade mark owner or upon his consent, if the trade mark owner has no grounds to prohibit such use with regard to further selling of the goods, etc.
12.1 What remedies are available for trade mark infringement?
The following remedies are available for trade mark infringement:
- ceasing any use of a trade mark and/or of marks confusingly similar to the protected trade mark;
- reimbursement of damages caused by trade mark infringement;
- removal from the goods of the trade mark or of a mark confusingly similar to the protected trade mark; or
- destruction of the counterfeit goods.
12.2 Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?
In both civil and commercial proceedings, legal expenses are recoverable (court fees, expert expenses, translation expenses and attorneys’ fees).
In civil proceedings, the amount of recoverable attorneys’ fees is limited by the law.
In commercial proceedings, the recoverable attorneys’ fees are not limited. However, in practice the court rarely recovers attorneys’ fees in full.
The behaviour of the parties in the trial does not affect the recoverability of costs or their proportion. The fact of establishment of the winning party is essential here.
13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
A first instance judgment can be appealed to the court of appeal on the ground of infringement of material/procedural law by the first instance court and on the ground of the wrong estimation of the merits of the case. An appeal judgment can be appealed to the court of cassation (second appeal), but only on the ground of infringement of material/procedural law.
13.2 In what circumstances can new evidence be added at the appeal stage?
New evidence can be added at the appeal stage if the filing of such evidence to the first instance court was impossible due to a reasonable excuse (e.g. an interested party was not aware or could not have been aware of new evidence, a first instance court illegally refused to consider evidence, etc.).
14 Border Control Measures
14.1 What is the mechanism for seizing or preventing the importation of infringing goods or services and if so how quickly are such measures resolved?
The control of the importation of infringing goods is carried out by the Customs Registry of Intellectual Property objects (hereafter the “Customs Registry”).
Upon entry of the trade mark in the Customs Registry, customs officers control imports and export of the goods bearing the subject trade mark. Upon revealing any suspected goods, customs officers suspend the shipment for 10 working days and notify the rights owner thereof.
Upon receipt of such a notification, within the specified 10-day period the rights owner is entitled to obtain detailed information on the suspended goods, inspect them and take samples in order to determine whether the goods are original or counterfeit.
In the case that the suspended goods prove to be counterfeit, the rights owner is entitled to take the following legal actions:
- initiate court action on the ground of infringement of their rights to the trade mark;
- initiate criminal or administrative action against the importing or exporting company;
- initiate the destruction of the infringing goods on the border, subject to the consent of the importing or exporting company, and provided that the rights owner is ready to bear the related expenses; or
- initiate the procedure of removal of the subject trade mark from the infringing goods and/or their packaging, on the border, subject to the consent of the importing or exporting company, and provided that the rights owner is ready to bear the related expenses.
If no action is taken by the rights owner within the specified 10-day period, the suspended shipment is released.
The specified 10-day period can be extended for another 10 working days upon solicitation of the rights owner, provided that there are sufficient grounds for such an extension.
In the case that the goods cleared at the border bear the mark which is similar to the protected trade mark, the customs services can suspend the shipment upon their own initiative and inform the trade mark owner accordingly. This procedure applies in cases where the mark applied on the goods is confusingly similar to the registered trade mark.
Ukrainian legislation does not provide for a mechanism for preventing the importation of infringing services.
15 Other Related Rights
15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?
Trade marks recognised as well-known by the Appeal Chamber of SIPS or by the courts of Ukraine enjoy legal protection in Ukraine.
In certain cases, the owner of an unregistered trade mark that is used in Ukraine can protect his rights on the grounds of the laws on unfair competition.
15.2 To what extent does a company name offer protection from use by a third party?
According to the laws of Ukraine, legal protection is granted to company names that allow consumers to differentiate one manufacturer from another, and are not misleading as to the real business activities of the companies.
Company names enjoy legal protection from the moment of their first use in Ukraine. There are no requirements as to mandatory registration of company names.
A company name is protected irrespective of whether it is protected as a trade mark (or its element) or not.
According to the Civil Code of Ukraine, the owner of the company name enjoys the following proprietary intellectual property rights:
1) the right to use the company name;
2) the right to prohibit the unauthorised use of their company name by other persons; and
3) other proprietary intellectual property rights as specified by the laws.
Any person who is using another person’s company name should cease from such use upon request of the rights owner and compensate any damages caused by such unauthorised use.
Foreign company names enjoy the same legal protection as local ones, on the ground of the Paris Convention.
15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?
According to the laws of Ukraine, intellectual property objects, such as original book titles and film titles, should be protected as copyrighted works or parts of copyrighted works.
At the same time, registration of book and film titles as trade marks is possible, subject to requirements established by Ukrainian legislation.
16 Domain Names
16.1 Who can own a domain name?
Any person (natural or legal) can become the owner of any domain name, except for the top-level country code domains with the “.ua” extension.
The top-level country code domain “.ua” can be registered only by the following persons:
- the owner of a trade mark registration valid in Ukraine, the word element of which entirely corresponds to the applied domain name; or
- the holder of a licence for the use of the trade mark, the word element of which entirely corresponds to the applied domain name. In this case, the right to register the domain name by the licensee should be provided (or otherwise the licence should be exclusive), and a licence agreement should be registered with SIPS.
16.2 How is a domain name registered?
A domain name is registered online, via the domain registrar, subject to the payment of fees. It is registered on a “first come, first served” basis.
16.3 What protection does a domain name afford per se?
Once registered, a domain name can be used by its owner within the allocation period, with the possibility of further renewal.
The owner can release the domain name at any time, transfer the rights to the domain to other persons or change their registrar.
In the case that the registered domain name is identical or confusingly similar to another person’s trade mark, the owner of the trade mark can invoke legal action on the ground of infringement of their intellectual property rights.
17 Current Developments
17.1 What have been the significant developments in relation to trade marks in the last year?
Within the framework of implementation of the EU-Ukraine Association Agreement, the Cabinet of Ministers of Ukraine has issued a Decree “On approval of the action plan on realisation of the Conception of reform of the State system of intellectual property protection in Ukraine” No. 632-ð as of August 23, 2016. According to the Action Plan, the actions and terms of reform of the State system of intellectual property protection have been established, such as:
- liquidation of the State Intellectual Property Service of Ukraine and imposition of function of the State Intellectual Property of Ukraine to the Ministry of Economic Development and Trade of Ukraine;
- elaboration of the draft law on introduction of changes to some legislative acts of Ukraine regarding the improvement of the State administration of intellectual property (a creation of the national authority for intellectual property);
- approval of the regulation on the national authority for intellectual property;
- improvement of the national legislation and its harmonisation with the EU legislation: elaboration of the draft laws in respect of the improvement of IP rights protection for trade marks, geographical indications, etc.; and
- elaboration of the draft law on the introduction of changes to some legislative acts of Ukraine regarding the strengthening of liability for violations in the sphere of intellectual property and protection of these rights, etc.
17.2 Please list three important judgments in the trade marks and brands sphere that have issued within the last 18 months.
One of the most important judgments in the trade marks and brands sphere was a Ruling of the Higher Economic Court of Ukraine on December 1, 2015 in case No. 39/124: open joint stock company (“OJSC”) “Ingosstrakh” (Russian Federation) v. public joint stock company (“PJSC”) “Ingosstrakh” (Ukraine) (an insurance company) on invalidation of the Ingosstrakh series of trade marks on the ground that they are similar, to a grade of confusion, to a plaintiff’s company name, and can be misleading as to the person providing the related services.
Unlike the previously established practice, the judgment in question confirmed that the fact of actual use of a company name within the Ukrainian territory is not necessary in order to confirm the fame of such a company name among Ukrainian consumers.
For instance, the court established: “[T]he issue of company name awareness is the issue of right, but not of the fact, and shall be decided by court … based on article 8 of the Paris Convention ‘A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trade mark’.”
The judgment was soon followed by a similar Ruling by the Kiev Economic Court on August 10, 2016 in case No. 910/11005/16: PJSC “SBERBANK of RUSSIA” v. PJSC “State Savings Bank of Ukraine”. Here the registration of the trade mark “ÑÁÅÐÁÀÍÊ” (in Cyrillic; in English – SBERBANK) was invalidated on the ground that the mark was confusingly similar to the plaintiff’s company name, and could be misleading as to the person providing the services marked with the disputed trade mark. The court concluded that the similarity of the trade mark ÑÁÅÐÁÀÍÊ to the company name of the plaintiff, which had earlier obtained legal protection pursuant to Article 8 of the Paris Convention, evidenced that the registration of the disputed trade mark was in violation of the plaintiff’s rights to a company (trade) name and that the registered mark was not in conformity with the terms of legal protection.
Another judgment that should be mentioned is the Ruling of the Higher Economic Court of Ukraine of October 20, 2015 in case No. 904/2029/15: Kaeser Kompressoren SE (Germany) v. KOPRYH, LLC (Ukraine) on unlawful use of the trade mark “Kaeser” during the sale of the legally acquired goods of Kaeser Kompressoren SE via its website. The issue of dispute was to establish at which stage the rights of the trade mark owner are considered exhausted as a matter of the Ukrainian laws: after the first time of entry of the goods on the market (in any country) or after they enter the market on the territory of Ukraine.
The Law of Ukraine “On the Protection of Rights to Marks for Goods and Services” does not clearly establish which principle of exhaustion of rights shall apply – national or international.
Thus, in the noted decision, the court provided an interpretation of the Ukrainian laws and established that it is the international exhaustion principle that shall apply in Ukraine.
Such a decision and profound legal interpretation given by the judges may help avoid ambiguity in the national legislation and help in determining whether “grey market” imports shall be considered an infringement of trade mark rights.
The noted judgment has already been followed by a number of other judgments by the same court (for instance, the Ruling of the Higher Economic Court of Ukraine of April 12, 2016 in case No. 918/1141/15: Kaeser Kompressoren SE v. private entrepreneur).
17.3 Are there any significant developments expected in the next year?
Currently, the implementation in Ukraine of the respective provisions of the EU-Ukraine Association Agreement and harmonisation of Ukrainian IP laws with the directives (in particular DIRECTIVE 2004/48/EC) and Regulations of the EU Council is underway, including both institutional reform and organisational changes; inter alia, changes regarding trade mark protection.
Among the recent documents of legislative reform in the IP sphere are the draft Law of Ukraine “On introduction of changes to some legislative acts of Ukraine regarding improvement of legal protection of intellectual (industrial) property” and the draft Law of Ukraine “On introduction of changes to some legislative acts of Ukraine regarding strengthening liability and protection of rights in the sphere of intellectual property” published on the website of the Ministry of Economic Development and Trade of Ukraine, introducing changes to several significant legislative acts.
In particular, the draft Law of Ukraine “On introduction of changes to some legislative acts of Ukraine regarding improvement of legal protection of intellectual (industrial) property” introduces changes regarding requirements for granting legal protection to trade marks.
Among the suggested changes are amendments of requirements related to trade mark registrability, and others.
The draft law of Ukraine “On introduction of changes to some legislative acts of Ukraine regarding strengthening of liability and protection of rights in the sphere of intellectual property” provides for the new increased amounts of fines according to Article 51-2 of the Code of Ukraine on Administrative Violations, which prescribes that “unlawful use of the intellectual property object (trade mark etc.) entails a fine from UAH 850 to UAH 6,800” (approx. from USD 31 to USD 252), with the confiscation and destruction of unlawfully produced goods, equipment and materials used for their production.
The same draft law also supplements Article 229 of the Criminal Code of Ukraine with the introduction of such penalties as non-custodial corrective labour for up to two years and imprisonment for up to five years for unlawful use of a trade mark, etc.
17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
Recent case law has addressed the issue of the legality of the use of a trade mark by a grey market dealer selling the goods marked with it.
While the use of a trade mark in a domain name by a grey market goods dealer is considered unlawful, the issue of scope of the permitted use of the trade mark in website content remains under discussion.
In the recent Ruling of the Higher Economic Court of Ukraine of April 12, 2016 on case No. 918/1141/15, the court established the following: the defendant, a grey market dealer, legally acquired the goods manufactured by the plaintiff company and therefore has a right to dispose of them. On his website, the defendant indicated the trade mark of the plaintiff. Since such an indication was an indication of a trade mark of the manufacturer, for identification of the goods of such manufacturer, consequently this shall not be regarded as an infringement of the rights of the trade mark owner.
Therefore, the use of the trade mark on the grey market dealer’s website where it is applied for the purpose of identification of the goods and indicates the manufacturer, shall not be considered as trade mark infringement.