Maksym Koval, Esq.
The legal landscape for trademarks in Ukraine has undergone noteworthy changes with the recent amendments to the Law of Ukraine No. 3689-XII “On Protection of Rights to Marks for Goods and Services” (the “Trademark Law”).
These amendments, which came into force on August 16, 2020, have introduced several critical changes to trademark registration and their protection in Ukraine, including new unconditional grounds for refusal, updated opposition procedures, the formal recognition of consent letters, improvements in search capabilities, and other substantial revisions designed to enhance the legal framework for trademarks.
Immediately below we summarize key changes in Ukrainian trademark legislation:
1.New Grounds for Application Refusal
One of the most noteworthy changes in the new legislation is the expansion of “absolute” or inarguable grounds for refusing a trademark’s registration. The Trademark Law now explicitly prohibits the registration of marks that:
• represent a shape or design dictated solely by the product’s form/nature and which is necessary to achieve technical viability or to add considerable product value;
• reproduce the name of a plant variety that is registered or under consideration for registration in Ukraine; and,
• contain geographical indications that are registered or under consideration for registration.
These new provisions are designed to prevent the registration of trademarks that could potentially mislead consumers or unfairly restrict competition on the market.
2.Collective Trademarks
The new amendments also introduce the concept of collective trademarks. Associations and similar entities can now register collective trademarks, which may be used by associated participants to distinguish their goods and services from those of other groups.
Applications for collective trademarks must include a list of entities authorized to use the mark and a document outlining the conditions for use. This provides organizations with a new tool forbrand protection and identity.
3.Recognition of Consent Letters
Another significant change is the legal recognition of letters of consent from owners of previously registered trademarks. Such letters can now be used to overcome relative grounds for refusal during trademark registration. However, the Trademark Law also provides that consent may be disregarded if there is a risk of consumer confusion, ensuring that the public interest in preventing deceptive practices is maintained.
4.Revised Opposition Procedures
Arguably, the most significant procedural change introduced by the Trademark Law relates to the trademark opposition process:
• oppositions must be filed within three months from the date of publication of a trademark application. This early-stage opposition allows interested parties to challenge applications prior to the granting of registration; and,
• parties that file an opposition during the application stage can also challenge registration within two months of officially receiving a copy of the authority’s decision. This provides an additional layer of protection for those seeking to prevent the registration of conflicting trademarks.
In light of the above changes, trademark owners are advised to adjust their monitoring services to comply with the new opposition deadlines and fully utilize the enhanced procedural tools available.
5.Extended Period for Non-use
“Non-use” refers to the situation when a registered trademark has not been used in commerce as per the goods or services listed in the registration database for a lengthy period. The Trademark Law establishes a continuous five-year period as the duration of the non-use period in adherence to the effective EU-Ukraine Association Agreement. If a trademark is not used within this period, it becomes vulnerable to cancellation. This change eliminates previous discrepancies and sets a clear standard for trademark use in Ukraine.
6.Restriction on Reregistration Rights
The period during which a trademark owner can re-register their trademark has decreased to two years from the date of termination of previous registration. However, other parties may apply for relevant trademark registration before this period expires, provided they have the consent of the former or current owner.
7.New Grounds for Invalidating Registration
The Trademark Law also introduces grounds for invalidating a trademark registration based on the bad faith actions of agents and/or representatives, who registered a trademark in Ukraine without the consent of the rightful owner in another country. The rightful owner can seek a court ruling to invalidate registration or transfer the rights to the trademark.
8.Electronic Filing and Proceedings
To streamline the trademark application process, the Trademark Law formally introduces the option to electronically file applications and work on other related proceedings. This modernization effort is designed to improve efficiency and accessibility for applicants, making it easier to manage trademark registrations and relevant activities online.
9.Search Functionality Enhancement
A significant improvement arrived in the spring of 2023, when the NIPA made trademark applications available in search systems, including those applications that have not yet been assigned an official filing date. This update has simplified the work of intellectual property professionals, IP rights holders and interested parties by allowing them to quickly perform searches for identical or similar marks and to monitor applications that might infringe upon earlier filed or registered objects. This enhancement provides a more transparent and proactive approach to trademark monitoring and protection.
In conclusion, the recent amendments to Ukraine’s trademark legislation represent a significant advancement in the country’s intellectual property legislation. By introducing new grounds for refusal, enhancing opposition procedures and making electronic processes available, the Trademark Law provides trademark owners with stronger tools to protect their rights. Trademark owners should familiarize themselves with these updates to ensure compliance and take full advantage of the protections offered by the Trademark Law.
