On August 16, 2020, the Law of Ukraine No. 3689-XII “On the Protection of Rights to Trademarks” was amended
The main amendments to the Law 3688-XII “On the Protection of Rights to Trademarks” are as follows:
GENERAL
- The official term “mark for goods and services” has been replaced with “trademark”.
- All official databases, including the trademark application database, the State Trademark Register and the Official Bulletin, are now conducted in electronic form.
- The notion of “collective mark” has been introduced.
EXAMINATION
- Protection shall not be granted to trademarks similar or identical to marks used by another person in a foreign country, if the application was filed by an agent or representative of such a person in the sense of Article 6septies of the Paris Convention without permission of such a person and there is no evidence supporting such filing, provided there is an opposition of such a person.
- Letters of consent from owners of prior marks are officially acceptable to overcome a refusal, provided there is no likelihood of misleading the consumer.
PUBLICATION AND OPPOSITION
- An application is published in the Bulletin within 5 (five) working days after sending the official filing receipt.
- Any person can file a motivated opposition against an application within 3 (three) months after its publication in the Bulletin (earlier it was possible to do it no later than five days before a decision upon the application issues). If such person is not satisfied with the final decision, it can file an appeal within 2 (two) months from receipt of its copy (there was no such option before).
MADRID REGISTRATIONS
International applications according to Madrid designating or extended to Ukraine are now published in the Official Bulletin twice: after the PTO receives a corresponding statement from WIPO and after it issues a decision of grant.
TRADEMARK RIGHTS
The owner is granted with the right to prohibit others from using an identical sign for homogeneous goods or services or a similar sign for the same or homogeneous goods or services if there is a likelihood of association of such an identical or similar sign with the registered trademark.
However, the exclusive right does not extend to:
- the use of a registered trademark in trade if it is necessary to refer to the purpose or the goods or service, in particular, as an additional equipment or spare parts, provided such use is carried out according to fair business practices;
- the use of a registered trademark in comparative advertisement exclusively to distinguish the goods and services in order to objectively emphasize their differences, provided such use is carried out according to fair business practices and adhering to the provisions of unfair competition legislation;
- the use of a registered trademark in comparative advertisement carried out pursuant to the advertising and unfair competition legislation, provided it does not refer to an unfair business practice.
The right of repeated registration of a trademark terminated due to voluntary cancellation or non-renewal now is two years after termination instead of the earlier three, except when the owner of the terminated registration grants consent to registration of the trademark to another applicant.
LICENSE
A requirement that a license agreement should contain, in particular, information on ways of use of the mark, territory and duration for which the use is granted, has been added.
CANCELLATION
The following grounds for cancellation have been added:
- if a trademark is not used within five years instead of the earlier three (this rule has been already applied since September 1, 2017);
- if in the result of the use of the trademark by its owner or by another person at its permission it can mislead the public, in particular, as to the origin, quality or geographic origin of the goods and services for which it is registered;
- a person who owns in a foreign country a trademark to which in Ukraine a right has been acquired by its agent or representative without its consent, is entitled to demand cancellation of such a trademark registration or its assignment in its favor, provided the agent or representative fails to justify its actions by corresponding proofs.
If a trademark registration is considered invalid by court and the latter has established that it was filed violating third parties’ rights, the court may decide to reimburse the owner of the registration of damages to the person who suffered damages by actions resulting from the registration of a trademark in violation of its rights.