Ukraine Upgrades Its Trademarks And Design Laws

The Ukrainian parliament adopted legislative amendments to strengthen protection of rights to trademarks and industrial designs.

The adopted changes will significantly expand the IP owners’ ability to counter “bad faith” registrations of trademarks and industrial designs.

In particular, the trademark law is supplemented with the following significant points:

• The grounds for refusal of trademark registration are clarified.
• Registration of a trademark similar to the earlier registered marks of third parties becomes possible if the applicant submits a letter of consent from such third parties and there is no possibility of misleading the consumers.
• The procedure of registration of collective trademark is clarified.
• A new procedure for filing oppositions to registration of trademarks is established. In particular, it determines clear deadline for filing an opposition (within three months from the date of publication of an application). Moreover, it provides for the possibility of administrative appealing against the decisions issued by the Patent Office as a result of consideration of the submitted oppositions.
• The provision of international law regarding invalidation of “agents” marks is implemented into the Ukrainian Trademark Law.
• The possibility of a one-time monetary recovery for unlawful use of a trademark is envisioned in court proceedings.

The following key changes are made to the industrial design law:

• Additional criterion for the protection of an industrial design (originality) is introduced.
• The term during which an industrial design is not considered to be disclosed is extended to 12 months (earlier the said period was 6
• The validity term of design rights will be 25 years.
• Legal protection for unregistered designs is introduced.
• An administrative procedure for invalidation of industrial design rights at the Appeal Chamber of the Patent Office is established.
• The possibility of a one-time monetary recovery for unlawful use of a design is envisaged in court proceedings.

On July 31, 2020, the Law covering the said legislative changes was sent to the President of Ukraine for signing.