INTELLECTUAL LAW

INTELLECTUAL RIGHT

Trademarks

Patents and Utility Models

Designs

Copyright

Domain names

Other IP objects

Protection in courts of IP

Trademarks

What trademarks can be registered in Ukraine?

  1. The legal protection is provided to a trademark that is not contrary to public order and generally accepted principles of morality, requirements of the Law of Ukraine On Condemnation of the Communist and National-Socialist (Nazi) Totalitarian Regimes in Ukraine and Prohibition of Propaganda of Their Symbols and is not subject to grounds for refusal of legal protection defined by this Law.
  2. Any sign or any combination of signs may be the subject of a trademark. Such signs may be, in particular, words, including personal names, letters, numerals, figurative elements, colors, the shape of products or their packaging, sounds, provided that such signs are suitable to distinguish the goods or services of one person from the goods or services of other persons, are appropriate for their reproduction in the Register in such a way as to enable clear and precise scope of the granted legal protection. The names or pseudonyms of persons who held administrative posts in the Communist Party (the position of a Secretary for the District Committee and above), in the highest agencies of the state power and administration of the USSR, the Ukrainian Soviet Socialist Republic (Ukrainian Socialist Soviet Republic), other union or autonomous Soviet republics (except the cases related to the development of the Ukrainian science and culture), who worked in the Soviet state security agencies, the names of the USSR, the Ukrainian Soviet Socialist Republic (Ukrainian Socialist Soviet Republic), other Soviet Union republics and their derivatives, names connected with the activities of the Communist Party, the establishment of the Soviet power in the territory of Ukraine or in the separate administrative and territorial units, persecution of the participants in the struggle for independence of Ukraine in the XX century can not be the subject of a trademark.
  3. The acquisition of the right to a trademark shall be certified by a trademark certificate. The validity period of a certificate is ten years from the date of filing an application to the NIPO and may be extended by the NIPO at the request of the certificate holder every ten years, provided that the respective fee is paid under the procedure of Article 18(2) of this Law. The procedure for extending the validity period of the certificate shall be determined by the central executive body ensuring the state policy formation and implementation in the intellectual property sphere. The certificate validity shall be terminated before the expiry of the specified validity period under conditions prescribed in Article 18 of this Law. The acquisition of rights to a trademark, which has the international registration or which is recognized to be well known in Ukraine, shall not be required to be certified with a relevant certificate.
  4. The scope of the granted legal protection is defined by the reproduction of a trademark and by the list of goods and services, which are recorded in the Register, and is certified by the certificate that shall contain a copy of the reproduction of the trademark recorded in the Register and the list of goods and services.
  5. Any person, associations of persons, or their successors shall have the right to obtain a certificate in accordance with the procedure determined by this Law.
  6. An applicant whose application has the earlier date of filing to the NIPO or, if the application priority has been claimed, the applicant whose application has the earlier date of priority shall have the right to obtain a certificate, provided that the application is not considered withdrawn, was not withdrawn, or the NIPO did not take a decision to refuse a trademark registration where the possibilities to appeal such a decision are exhausted.

Grounds for Refusal of Legal Protection

  1. According to this Law, legal protection shall not be granted for signs that represent or imitate:

- state armorial bearings, flags, and other state symbols (emblems);

- full or abbreviated official names of states or international two-letter codes of states;

- emblems and abbreviated or full names of international intergovernmental organizations;

 - official control, guarantee or testing seals, stamps;

- decorations and other honorable distinctions.

The said signs may be included as non-protected elements of a trademark, provided that there is the consent of the relevant authorized body or the owners thereof. The authorized body for granting permission to use the official name and international two-letter code of the Ukrainian state in a trademark shall be a collegial body established by the NIPO.

  1. According to this Law, the legal protection shall also not be provided for signs which:

- are usually not distinctive in nature and have not obtained such a character through their use;

- consist only of signs that are generally used in the modern language or in fair and constant trade practices on goods and services;

- 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, the 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;

- may mislead the public with regard to the goods or services, namely, as to their nature, quality or geographical origin; - 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;

- 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;

- 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;

- 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 - prior to the date of priority for the same or related goods, if when using the sign applied for the 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 of this clause may be included in a trademark as non-protected elements in the event that these signs are not dominative in the image of the trademark. The signs referred to in paragraphs two, three, four, seven, and eight of this clause may be granted legal protection in the event that they have acquired a distinctive character as a result of their use prior to the date of application.

  1. 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:

- 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;

- 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;

- 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;

- 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;

- conformity marks (certification marks) registered in accordance with the established procedure;

- 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.

  1. Signs shall not be registered as trademarks if they reproduce: - industrial designs the rights to which belong to other persons in Ukraine; - 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 successors in title; - surnames, first names, pseudonyms, and their derivatives, portraits, and facsimiles of persons known in Ukraine without their consent.
  2. Signs that contradict the requirements of Article 5(2) of this Law and the Law of Ukraine On Condemnation of the Communist and National-Socialist (Nazi) Totalitarian Regimes in Ukraine and Prohibition of Propaganda of Their Symbols shall not be granted legal protection and shall not be registered as trademarks.
  3. Signs referred to in paragraphs two to five and seven of Article 6(3) and paragraph two of Article 6(4) may be registered as trademarks, if consent is given by a certificate holder of the earlier registered trademark or the holder of the other earlier acquired right and there is no possibility to mislead the consumers.