Trade Marks 2023. Ukraine

The protection of trade marks in Ukraine is governed by the laws and respective secondary legislation.

The general provisions are provided by the Civil and Commercial Codes of Ukraine, while the detailed provisions are provided by the Trade Mark Law of Ukraine (“Trade Mark Law”). There are also a number of Rules and Instructions (subordinate legislation).

As Ukraine is a civil law country, rights to trade marks are based on statutory law.

Ukraine is a party to a number of international treaties in the field of trade mark protection:

• the Paris Convention for the Protection of Industrial Property (the “Paris Convention”);

• the Singapore Treaty on the Law of Trademarks;

• the Trademark Law Treaty (TLT);

• the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”);

• the EU-Ukraine Association Agreement;

• the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Agreement”) and the Madrid Protocol; and

• the Nice Agreement on the International Classification of Goods and Services, etc.

Any sign or any combination of signs may be subject to trade mark protection. Such signs may be words (including personal names), letters, numerals, figurative elements, colours, shape of products or its packaging, including three-dimensional marks, sounds, provided that such signs are capable of distinguishing the goods or services of one person from the goods or services of other persons, and are appropriate for their reproduction in the register in such a way as to enable clear and precise scope of the granted legal protection.

Collective marks may also be registered. Collective trade marks may be owned by an established association, which will be the proprietor of the mark. In this case, the application shall also be accompanied by the document that sets out the terms of use thereof and includes the list of persons entitled to use such trade mark.

Legal protection shall not be provided to trade marks 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 organisations; and

• an official control, guarantee, or testing seals, stamps.

These signs may be included as non-protected elements of a trade mark, provided that there is the consent of the relevant competent authority or the owners thereof. At the same time, using the national symbols of Ukraine, like the flag and the national coat of arms, is possible under a special law only, which still has not been adopted.

A famous trade mark may be protected in Ukraine based on Article 6bis of the Paris Convention. To be enforceable in Ukraine, a mark shall be recognised as well-known by the Chamber of Appeals of the UA PTO or the court according to the established procedure. The procedure, in particular, prescribes that such a famous mark should have acquired a particular reputation and must be known among local consumers of specific goods or services at issue.

The term of protection of a trade mark constitutes ten years calculated from the application filing date. A trade mark may be renewed for the next ten years each time upon request of the trade mark owner, provided that the renewal fee has been duly paid.

The Martial Law imposed in Ukraine in 2022 caused a legal ambiguity regarding IP rights terms. According to the Law of Ukraine “On Protection of Interests of Persons in the Sphere of Intellectual Property during Martial Law Imposed in Connection with the Armed Aggression of the Russian Federation against Ukraine”, IP rights, the validity of which expire on the day of imposition of the Martial Law in Ukraine or during the Martial Law, shall remain valid until expiry or cancellation of the Martial Law. Upon expiry or cancellation of the Martial Law, the term of validity of IP rights may be extended in the manner envisaged by the regular IP law. In view of the main purpose of the above norm, and in combination with other provisions of the said Law, it may rather be interpreted as temporary suspension of deadlines for renewal of IP rights and other prosecution terms only.

The effective Ukrainian law does not explicitly determine a certain IP exhaustion regime. At the same time, the current jurisprudence tends to apply the international trade mark exhaustion principle. However, the exhaustion system will not apply if the state of the product has changed or worsened upon the first sale. In such a case, a trade mark holder may prohibit the use of its trade mark on parallel imported products.

According to the Trade Mark Law, the use of symbols, such as ® or “TM”, is entirely optional in Ukraine. However, using the symbol ® for non-registered trade marks may entail liability according to the unfair competition legislation.

A trade mark is assigned through an assignment agreement, which must be concluded in written form and shall be subject to registration by the Ukraine Patent and Trademark Office (UA PTO).

The agreement must include:

• parties’ full names and addresses;

• subject matter;

• number(s) of the trade mark Certificate(s);

• list of goods and services (including numbers of ICGS’s classes).

For assignment recordal, at least one original assignment agreement or a notarised copy thereof is required. The UA PTO will keep this copy.

A trade mark is licensed by means of a licence agreement, which must be concluded in written form. Registration of the licence with the UA PTO is possible but not mandatory.

The licence (sub-licences) must include:

• parties’ full names and addresses;

• subject matter;

• number(s) of the trade mark certificate(s);

• list of goods and services (including numbers of ICGS’s classes);

• type of licence (exclusive, sole, non-exclusive);

• duration of the licence (it can be perpetual);

• territory; and

• quality control clause.

The assignment agreement shall be subject to registration with the UA PTO, whereas the registration of the licence is not mandatory.

Absent the recording, the assignment agreement is enforceable and binding for the parties only but may not be enforced against third parties.

Local laws provide no requirements to transfer any goodwill when assigning or licensing trade marks.

It is possible to assign an application for a trade mark during the application process, while granting a licence in respect of a pending trade mark application is not possible. The conclusion of a licence is permitted only after the trade mark is registered.

The Ukrainian trade mark system does not provide for filing of use/intent to use trade mark applications.

A trade mark may be subject to contributing to the charter capital of a legal entity, a subject of a pledge agreement and other obligations, as well as it may be used in other civil relations.

Exclusive rights to permit or prohibit the use of a certain mark by third parties may be acquired through the trade mark registration process only.

To register a trade mark, a person must file the respective application with the UA PTO or file an international registration designating Ukraine. Furthermore, it is possible to obtain a fully valid legal protection for a well-known trade mark in Ukraine recognised as such by the Chamber of Appeals of the UA PTO or by the court.

Legal protection shall be granted to a mark that is distinctive, does not contradict the public order, humane and moral principles, and is not subject to the refusal according to the grounds defined by the Trade mark Law.

Different types of marks, including trade dress, for example, in the form of three-dimensional marks, are registrable if they can fulfil the trade mark function of identifying the origin of the goods.

The UA PTO maintains the State Register of Trade Marks (the “State Register”) that includes all registered Ukrainian trade marks. The State Register is publicly available on the UA PTO website. The UA PTO also publishes applications filed for registration in the online Official Bulletin.

Information about registered marks and filed applications is available on the UA PTO Information System – an online unified search engine providing information about all IP objects.

Bearing in mind that the UA PTO conducts a substantive examination (including checking of prior rights), it is highly recommended to conduct a full availability trade mark search before filing a new application.

The UA PTO also maintains a register of well-known trade marks. This is not a State Register, but rather a list of trade marks recognised as well-known in Ukraine by UA PTO’s Chamber of Appeals or by the court.

The registration procedure consists of two main stages: formal and substantive examination.

At the stage of the formal examination, compliance of submitted documents with the formal requirements of the Trade Mark Law is being checked. If the application meets all the formal requirements, the substantive examination (on compliance with the registrability criteria) is then conducted.

A smooth trade mark registration normally takes up to 18-24 months. The accelerated examination (up to eight to ten months) is also available in Ukraine subject to additional official fee payment.

The rights deriving from a trade mark certificate are effective for ten years, calculated from the application filing date. A trade mark may be renewed for the next ten years each time upon request of the trade mark owner, provided that the renewal fee has been duly paid.

A renewal request and each renewal fee shall be received by the UA PTO within the last six months of the trade mark validity. The renewal fee may also be paid within six months after the expiry of the established period. In this case, the fee amount is increased by 50%. Please also see 1.5 Term of Protection.

Trade mark registration cannot be updated or refreshed as such. Furthermore, it is not possible to amend the image of the registered mark or extend the list of goods and/or services for which the mark was initially applied.

The following information and documents are required for filing a trade mark application in Ukraine:

• applicant’s data (full name and address);

• representation of the mark (in colour, if claimed);

• list of goods and/or services the trade mark is applied for; and

• Power of Attorney (POA) signed by duly authorised person.

The POA should be simply signed if the signee acts by virtue of the company charter, or the articles of association, or any other similar document. In such cases, notarisation is not required. If a legal entity uses a corporate seal or stamp, it should also be sealed/stamped. If the POA is signed by an authorised signatory, attorney-in-fact, proxy holder, etc, it should be notarised since in some specific cases the PTO may request documents confirming the authority of the signee. Legalisation is not required.

According to the local procedure, no ground for filing the application (like actual use or intention to use the applied mark) is required. Prosecution of a trade mark application filed in the name of a foreign person may be performed through the Ukrainian trade mark attorney only.

In Ukraine, a trade mark may be registered in the name of a legal entity or an individual regardless of whether it has a status of a private entrepreneur. The co-ownership of a trade mark is also permitted. In this case, there is no need to provide the UA PTO with the co-ownership agreement.

For the basic requirements of a trade mark, see 1.2 Types of Trade Marks.

In respect of some specific types of trade marks, additional data is also required, particularly:

• sound mark: recorded phonogram and musical score;

• colour mark: examples of how the applied mark will be used in respect of goods and/or services; and

• three-dimensional mark: all views of the applied mark.

Multiple-class applications are permitted in Ukraine. The official filing fee depends on the number of applied classes but not the number of selected goods/services.

There is no requirement regarding the use of the applied mark in commerce before protection is granted in Ukraine.

However, a trade mark owner is obliged to use its mark after registering. According to the Trade Mark Law, if a trade mark is not used in Ukraine, in whole or with respect to a part of the goods and/or services listed in the certificate, continuously within five years from the date of publishing the information on granting the certificate, or if the use of the trade mark has been suspended from any other date after such publication for the continuous term of five years, any person has a right to apply to the court with a request for early termination of the certificate in whole or in part.

It is possible to register in Ukraine several marks which resemble each other to some extent and differ only as to non-distinctive elements that do not affect the character of the overall mark. However, in respect of every such image, a separate application must be filed.

The UA PTO conducts a substantive examination, in the course of which the examiners check the prior rights, inter alia to:

• trade marks, including those recognised as well-known in Ukraine;

• trade names that are known in Ukraine and belong to other persons who have acquired the right to the said names before the application filing date with respect to identical or similar goods and services;

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

• industrial designs belonging to other persons in Ukraine;

• geographical indications;

• copyright; and

• surnames, first names, pseudonyms and their derivatives, portraits, and facsimiles of persons known in Ukraine without their consent.

The UA PTO accepts the letters of consent provided that, in the examiner’s opinion, there is no likelihood to mislead the consumers. Therefore, in the preparation of the response to a provisional refusal, it is not sufficient to provide the letter of consent only. It is also necessary to provide the examiner with sufficient arguments to show that no actual confusion on the market will occur.

The assignment/assignment-back procedure may also be applicable.

The opposition procedure against a filed trade mark application is envisaged in Ukraine.

The UA PTO publishes filed applications in the online Official Bulletin after the application filing date is established. After the application is published, any person has the right to file an opposition. According to the Trade Mark Law, confirmation of the opponent’s commercial interest is not requested. Though, according to the effective practice, the opponent’s reasons should be indicated in the opposition.

The opposition may be filed within three months as from the application publication date in the Official Bulletin. This term is not extendable. At the same time, the Martial Law imposed in Ukraine in 2022 caused a legal ambiguity regarding IP rights terms (please see 1.5 Term of Protection). According to the Martial Law, terms for filing oppositions are temporarily suspended and will be resumed upon cancellation or expiry of the Martial Law. However, since all the prosecution is maintained online, a reason for missing the deadline for filing the opposition should be well substantiated before the UA PTO. Therefore, brand owners are strongly recommended to adhere to the deadlines, if possible.

A response to the opposition may be filed within two months from receiving the notification of opposition from the PTO (for international trade marks, right holders may file a response within three months from the date the UA PTO sends a provisional refusal to WIPO). Nevertheless, it is the applicant’s right to respond to the opposition or not.

Oppositions and responses are considered at the stage of substantive examination when the application is assessed based on the absolute and relative grounds for refusal.

The local procedure does not provide for filing formal oppositions, notices of opposition, preliminary oppositions, etc. All oppositions must be initially well-grounded and supported by respective evidence. The POA is also required. Filing the opposition is subject to payment of the official fee.

The opposition procedure does not envisage any hearings. All communication should be conducted in writing.

After considering the application data, a responsible examiner issues a final decision on the application, a copy of which is sent to the person who filed the opposition.

The applicant may introduce different changes, amendments, or corrections into a filed application, which are subject to payment of the official fee regarding:

• the applicant’s name and address not connected to an assignment of the application;

• the representative’s name and address;

• the address for correspondence;

• the applicant’s name and address due to assignment of the application; and

• the limitation of goods and services, etc.

However, it is not possible to amend the image of the applied mark or extend the list of goods and services.

The applicant may also withdraw the application at any stage of prosecution.

It is possible to divide a trade mark application before the UA PTO issues a decision thereon.

Filing a request for dividing the initial application as well as filing the divisional application(s) are subjects to payment of the official fee.

The date of filing the divisional application shall be considered the same as the date of filing the divided application. The priority date of the divisional application shall be determined the same as the priority date of the divided application, if there is a ground for that.

Normally, the UA PTO does not check the information provided by the applicant. However, in case of any doubts in respect of the filed documents/materials, the responsible examiner may send its request, and the applicant has two months to respond.

The applicant is responsible for accuracy of information provided to the UA PTO.

The registration of a trade mark shall be granted to a mark that is inherently distinctive, does not contradict the public order, humane and moral principles, and is not subject to refusal according to the grounds defined by the Trade Mark Law.

Since the UA PTO conducts a substantive examination, a provisional/final application refusal may be based both on absolute and relative grounds for refusal.

According to recent changes to the Trade Mark Law in 2020, the list of absolute grounds for refusal was extended to cover the signs:

• consisting exclusively of the shape, or another characteristic, which:

  1. results from the nature of the goods themselves; or

  2. is necessary to obtain a technical result; or

  3. gives substantial value to the goods;

• reproducing registered or applied-for plant varieties (PV); and

• containing registered or applied-for geographical indications (GI).

Furthermore, the Trade mark Law extended relative grounds for refusal by adding the following:

• the trade mark is identical/similar to an earlier right by association (not only by confusion);

• the trade mark is identical/similar to a well-known trade mark, to the extent that it may cause confusion or association;

• the application has been filed by an agent or representative in its name without the owner’s consent if there is no evidence to justify such filing and the owner has objected thereto (Article 6septies of the Paris Convention).

If a provisional refusal is issued, the applicant has two months for filing arguments in favour of the registration. In case of international registrations, this term constitutes three months. These deadlines may be extended for three or six months, provided that the respective official fees are paid. Please also see 1.5 Term of Protection.

If the arguments filed by the applicant were not considered by a responsible examiner as convictive and sufficient, and the final refusal was issued, the applicant may appeal the decision to UA PTO’s Chamber of Appeals or to the court within two months as from the date of receiving the final decision on the application.

The final UA PTO’s refusal of the application may be appealed to UA PTO’s Chamber of Appeals or to the court within two months as from the date of its receipt.

In respect of the international registrations, the term for filing the appeal with UA PTO’s Chamber of Appeals constitutes three months as from the date of sending the statement of refusal to the WIPO.

At the same time, the Martial Law imposed in Ukraine in 2022 caused a legal ambiguity regarding IP rights terms (please see 1.5 Term of Protection). A reason for missing a deadline for filing an appeal with UA PTO’s Chamber of Appeals or the court should be well substantiated. Therefore, brand owners are strongly recommended to adhere to the deadlines, if possible.

An appeal against the UA PTO’s decision on the application filed with the Chamber of Appeals shall be considered within two months as from receipt of the appeal and the respective fee, within the scope of the reasons presented in the appeal and provided in the course of the appeal consideration. The period for consideration of the appeal may be extended for no more than two months, provided that the relevant request is submitted and the respective fee is paid.

Upon consideration of the appeal the Chamber of Appeals shall take a grounded decision.

The decision may be challenged by the applicant through the court within two months from the date of its receipt.

Ukraine is a party to the Madrid Agreement and the Madrid Protocol.

Legal protection granted to the international registration in Ukraine is the same as it is granted to national applications. The UA PTO neither issues local registration certificates in respect of international registrations nor maintains the national register of the international registrations protected in Ukraine.

Assignments and assignment agreements regarding the international registrations (even though they designate Ukraine only) may be registered through the World Intellectual Property Organization (WIPO) only.

The UA PTO publishes filed applications in the online Official Bulletin after the application filing date is established. After the application is published, any person has a right to file an opposition.

The opposition may be filed with the UA PTO within three months as from the application publication date. This term is not extendable. Please see 4.5 Consideration of Third-Party Rights in Registration.

An opposition may be based on both absolute and relative grounds for refusal, inter alia, it may be filed:

• if a mark is identical to or misleadingly similar to marks that have been registered or applied for registration for similar or related goods and services in Ukraine in the name of another person;

• if a mark is misleading or capable of deceiving the public as to the goods, services, or person manufacturing the goods or providing services; or

• if a mark is identical to or misleadingly similar to marks of third persons, where such marks are protected without registration under international treaties to which Ukraine is a party, particularly marks recognised as well-known under the provisions of Article 6bis of the Paris Convention.

Each and all grounds for refusal of a trade mark application may serve as the basis for filing a trade mark invalidation action as well.

Risk of dilution or exploitation of goodwill may not be a separate ground for refusal but should arise from confusing similarity of the compared marks or misleading nature of the conflicting mark as to the goods/services or a person actually producing goods and/or providing services.

Foreigners, stateless persons, foreign legal entities, and other persons having the place of permanent residence or permanent location outside Ukraine have a right to file an opposition through Ukrainian trade mark attorneys only. Ukrainian individuals or legal entities may act without involving trademark attorneys.

The official fee for filing an opposition is UAH2,000. The agent’s fee is normally calculated on the hourly basis and depends on the complexity of the matter, the necessity to collect respective evidence, prepare Ukrainian translation, etc. The opposition procedure does not envisage any compensation of the opponent’s expenses.

Although possession of the earlier trade mark application or registration is a strong argument, the opponent does not necessarily need to own a registered trade mark since other valid prior rights can be invoked.

The opposition may be filed within three months as from publication date of the application. This term is not extendable. For a description of the opposition procedure, see 4.5 Consideration of Third-Party Rights in Registration.

Within two months after receipt of the final decision on the respective trade mark application, a post-grant opposition may be filed with the Chamber of Appeals only by a person who filed a pre-grant opposition.

The period for consideration of the opposition constitutes two months as from receipt thereof along with respective payment receipt by the Chamber of Appeals and may be extended for no more than two months, provided that the relevant request is submitted and the respective fee is paid.

The UA PTO’s final decision on the application may also be appealed to the court.

In case of post-grant opposition procedure or the court procedure, the grounds for filing the appeal against UA PTO’s final decision on the application are the same.

If the opposition is filed, a copy thereof shall be sent to the applicant, and it has the right to respond to the opposition within 15 days as from the date of receipt of the notification on commencement of the opposition procedure.

The opposition procedure includes filing written materials and conducting oral hearings, the number of which depends on the complexity of the case. Both the opponent and the applicant are parties to the proceedings.

Upon consideration of the opposition the Chamber of Appeals shall take a grounded decision. The decision may be challenged by the applicant or opponent through the court within two months as from the date of receipt thereof.

The post-grant opposition procedure provides interested persons an additional instance where they may protect their rights. This procedure is less time and cost consuming in comparison with the court procedure.

General Limitation Period

Under the laws of Ukraine, the general limitation period constitutes three years unless a special limitation period is established. The limitation period commences from the day when a person learned or could have learned about violation of its rights or about a person who violated those rights.

Peculiarities of the Trade Mark Revocation/Cancellation Proceedings

In trade mark revocation/cancellation proceedings, the limitation period used to be calculated from the date of the trade mark publication. However, according to the jurisprudence of the Supreme Court in recent years, the commencement of the limitation period in trade mark revocation/cancellation proceedings should not be associated with the publication date by default, but may be associated with a date when certain conflict on the market based on the trade mark occurred.

At the same time, non-use cancellation actions may be initiated only after a five-year term from the trade mark publication date.

Invalidation of a Trade Mark Certificate

A trade mark certificate may be invalidated in whole or in part by the court in the following cases:

• a registered trade mark does not meet requirements for granting legal protection (invalidation is possible based on absolute or relative grounds for refusal to grant protection set forth by the Trade Mark Law of Ukraine);

• a trade mark certificate contains elements of the trade mark image and/or the list of goods and services that were not present in the application; and/or

• a trade mark certificate was granted based on an application infringing other persons’ rights.

  Cancellation Proceedings

  A trade mark certificate shall be cancelled by court judgment:

  • if a registered trade mark has become a commonly used sign for goods and services of a certain type;

  • if a use of a trade mark by the certificate holder or by another person upon consent of the certificate holder may mislead the public, in particular, in terms of the origin, quality or geographical origin of the goods and/or services for which it has been registered; or

  • if a trade mark has not been used in Ukraine within five consecutive years, and there are no good reasons for the non-use, it becomes vulnerable to early termination in court. Any person may initiate a non-use cancellation action. Initially, the burden of proof lies upon the claimant, and a well-substantiated statement of claim has to be submitted along with the evidence of the trade mark’s non-use in Ukraine. After that, the burden of proof shifts to the defendant to rebut the claimant’s arguments.

A revocation or cancellation proceeding may be initiated by any person having a legitimate interest, such as conflicting trade mark owners or third parties with a legitimate interest to invalidate/cancel a conflicting trade mark registration. The trade mark office is not authorised to commence revocation or cancellation proceeding ex officio.

According to the local laws, the revocation/cancellation actions in Ukraine may only be brought before the courts.

The revocation/cancellation disputes between individuals or individuals and legal entities fall under the jurisdiction of civil courts. The disputes between legal entities should be considered by commercial courts.

Partial revocation/cancellation is possible in Ukraine. It is normally applied to revoke/cancel the registration with regard to certain goods/services out of a larger scope of goods/services covered by the registration. For example, partial cancellation is possible concerning certain goods and/or services for which the mark is not used in Ukraine.

Amendment of the trade mark registration may not be claimed within revocation/cancellation proceedings. However, a defendant may renounce the disputed mark in part of certain goods and/or services, which may lead to amicable settlement of the court dispute.

According to the effective Ukrainian law, a statement of claim may contain several claims only when such claims are connected by cause of action or by evidence, or may be considered as main and derivative claims.

Based on this, the court may consider invalidation of trade mark certificate and termination of trade mark infringement either jointly or separately. The respective jurisprudence is not unified, and judges have significant discretion in this respect.

There are no special procedures to revoke or cancel marks filed fraudulently in Ukraine. Therefore, the claimant should rely on the available remedies and reasons for revocation/cancellation of a mark described in 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding.

The general limitation period constitutes three years unless a special limitation period is established. This period commences from the day when the person learnt or could have learnt about the violation of its rights, or the person who violated those rights. A special limitation period is not envisaged for trade mark infringement actions. Therefore, the general limitation period applies to trade mark infringement actions and constitutes three years.

According to the effective law, trade mark infringement shall be terminated at the trade mark owner’s request, and the infringer is obliged to reimburse damages to the trade mark owner.

A trade mark owner may also demand to remove the illegally used trade mark or confusingly similar sign from the product or its packaging, as well as to destroy the images of the said mark or sign. An unauthorised use of marks and/or confusingly similar signs in domain names is also considered an infringement.

An injunction (preliminary injunction) against the infringer may be sought by the trade mark owner as well.

The court actions to pursue the infringement are available regarding registered trade marks and unregistered trade marks recognised as well-known in Ukraine.

Rights to unregistered marks may be protected by filing a respective complaint with the Antimonopoly Committee of Ukraine based on the Law on Protection from Unfair Competition.

The necessary parties to an action for trade mark infringement include a trade mark owner (plaintiff) and an infringer (defendant). A licensee (exclusive/non-exclusive) is entitled to demand termination of the trade mark infringement and/or damages provided that the respective consent has been granted by the trade mark owner.

Third parties can join the proceedings on the side of either plaintiff or defendant if the court decision may affect their rights or obligations with respect to either party.

It is impossible to take a court action against trade mark infringement before the mark is registered. At the same time, such action may be initiated based on a well-known mark.

The legal system of Ukraine does not permit collective actions for trade mark proceedings. However, when infringement relates to a collective or co-owned trade mark, its owners may file the statement of claim as co-plaintiffs.

There are no prerequisites to initiating a lawsuit against a trade mark infringer in Ukraine. However, preliminary injunctions and infringement actions are available only for the registered trade marks or marks recognised as well-known in Ukraine.

It is also a general practice that a trade mark owner sends a cease-and-desist letter to the infringer before filing a claim. In that case, the statement of claim should include information about previous attempts to resolve the dispute out of court.

At the same time, as a measure of securing legal costs, the court, taking into account the specific circumstances of the case, has the right to oblige the plaintiff to deposit a sum of money to the court’s deposit account to ensure a possible reimbursement of the future litigation costs of the defendant. Such security for litigation costs is applied if the claim looks knowingly unreasonable or otherwise an abuse of the right to claim.

Formal Requirements

A statement of claim for trade mark infringement must indicate the names and contact details of the parties to a dispute, the content, and the cause of action. Moreover, along with the statement of claim, the plaintiff must provide evidence substantiating the claims as well as information on the applied measures for pre-trial settlement of the dispute and the measures taken to secure the evidence and claims, if such measures have been taken.

Additional details include preliminary (approximate) calculation of the amount of litigation costs expected by the plaintiff; formal confirmation of the plaintiff that it has not filed another claim(s) against the same defendant(s) with the same subject and on the same grounds. There are no special provisions for lawsuits in trade mark proceedings that differ from non-intellectual property proceedings.

The defendant may file a counter-claim in response to the plaintiff’s claims.

Additional Arguments

As a rule, the plaintiff is obliged to provide all available evidence along with the statement of claim. The plaintiff may indicate evidence that cannot be filed along with the statement of claim for good reasons and provide such evidence before consideration of the case on the merits is commenced.

Jurisdiction

Trade mark disputes, including infringement proceedings, between individuals or individuals and legal entities, fall under the jurisdiction of civil courts. Disputes between legal entities should be heard by commercial courts. The said rules relate to first, second and third instances.

Usually, attorneys represent the parties in trade mark litigation. However, a party to a dispute may participate in the proceedings in person (self-representation).

Costs before Filing a Lawsuit

Such costs usually involve test purchase of the infringing products, evidence notarisation and translation, postal services for sending cease-and-desist letters, and an IP expert report (if necessary). The court fees for filing the statement of claim and a preliminary injunction request are normally incurred before filing a lawsuit as well.

The trade mark office decisions have no direct effect on infringement actions. Nevertheless, the court may take such decisions into account when delivering the final decision on the merits of the case.

An alleged infringer may not initiate declaratory judgment proceedings. At the same time, the defendant is entitled to file a motion to oblige the plaintiff to deposit a sum of money to the court’s deposit account to ensure possible reimbursement of the future litigation costs of the defendant.

The court may also oblige the plaintiff, who filed the preliminary injunction request, to compensate possible losses of the defendant that may be caused by the injunction.

The plaintiff may file an injunction request for suspension of customs clearance of allegedly counterfeited goods. There are no other special procedures, remedies or statutes addressing counterfeit marks.

There are no special procedural provisions for trade mark proceedings in Ukraine. Currently, trade mark proceedings are considered by civil and commercial courts (until the High Intellectual Property Court is finally established in Ukraine).

Trade mark litigation cases are usually assigned to the judges having the necessary level of experience in IP disputes. The parties do not influence the judge selection, which is made automatically by the court case distribution system.

A presiding judge or a party may request for IP expert opinion in the cases where specific knowledge is required.

In trade mark infringement cases it is necessary to establish that the defendant has actually used the trade mark in a manner prescribed by the law. Such use shall not be purely descriptive and shall not fall under the category of good-faith use.

The following aspects must be taken into account when determining whether the use of a sign constitutes trade mark infringement:

• degree of distinctiveness of the earlier trade mark registration;

• the level of recognition of the earlier trade mark registration by the consumers;

• degree of similarity between the conflicting marks or their identity; and

• degree of similarity of the goods and/or services covered by the conflicting marks.

A trade mark dilution by blurring or tarnishment, causing damage to a trade mark, may be used as additional substantiation of trade mark infringement, especially when conflicting marks are confusingly similar. The same relates to cybersquatting. It is worth mentioning that the said claims are usually applied in cases related to well-known marks.

Only an owner of a registered trade mark holds exclusive rights to use or prohibit use of the mark, including through the court. Unregistered trade marks may be protected if recognised as well-known in Ukraine by the court or the Chamber of Appeals of the UA PTO.

Exclusive right of a trade mark owner to prohibit unauthorised use of the registered trade mark does not apply to:

• exercising of any right acquired before the application filing date or, if the priority was claimed, before the application priority date (including the prior use right);

• use of the trade mark for a product put into the turnover under the trade mark by the owner or upon its consent, provided that the owner has no essential reasons to prohibit such use in connection with the following sale of the product, in particular in case of change or deterioration of the product after putting it into the turnover;

• use of mark related to the type, quality, quantity, purpose, value, geographical origin, time of production of goods or provision of services or other specifications of goods or services, provided there is no violation of rights of the trade mark owner;

• use of the trade mark during trade, in the event it is necessary to specify the purpose of the product or service, namely, as additional equipment or spare parts, subject to the fact that the trade mark is used in such a way according to fair business practice (descriptive use);

• application of the trade mark in comparative advertising exclusively to distinguish the goods and services in order to objectively emphasise its distinctions subject to the fact that such a trade mark is applied according to fair business practice and in compliance with the Law on Protection from Unfair Competition;

• non-commercial use of the trade mark;

• all forms of broadcasting the news and commenting on the news;

• fair use of names or addresses of other persons; and/or

• use of the trade mark in comparative advertising, carried out in accordance with the laws on advertising, protection against unfair competition and is not related to unfair business practices.

Moreover, a counter-claim may be filed as a defensive strategy to invalidate an earlier registered trade mark or cancel its effect due to non-use.

At the request by a party to a dispute the court may secure evidence if there is a reason to believe that certain pieces of evidence can be lost, or the collection or presentation of relevant pieces of evidence can subsequently become impossible or difficult.

Available methods for securing evidence by the court are as follows:

• interrogation of witnesses;

• request for expert opinion;

• discovery and/or examination of evidence;

• prohibition to perform certain actions regarding evidence; and

• obligation to perform certain actions regarding evidence.

In appropriate cases, the court may apply other methods for securing evidence. An application for securing evidence may be filed with the court either before or after filing a statement of claim.

Both survey reports and expert reports are frequently presented by the parties to prove the likelihood of confusion or demonstrate the level of recognition of the marks by consumers. As a rule, such evidence is admitted by the courts and considered along with other pieces of evidence when deciding trade mark case on the merits. Expert reports must be drafted in strict compliance with the relevant procedural laws.

A trade mark infringement may be enforced through both administrative and criminal channels.

The criminal proceedings may result in different amounts of fines and may be commenced at the trade mark owner’s/licensee’s request only given the infringement caused significant damages to the suffering party. Thus, criminal proceedings against a trade mark infringement in Ukraine may be initiated where a specific threshold of damages is met. Further, the relevant process includes different pre-trial and trial stages, such as seizures and/or expert examination of the infringing products, witness examination and court proceedings on the merits of the case.

As a rule, commencement of administrative proceedings is based on the trade mark owner’s/licensee’s complaint filed with the law-enforcement bodies, as well. The administrative channel is normally used to prosecute minor IP rights offences.

The typical costs for bringing an infringement action to a conclusion in the first instance include court fees, professional fees and, normally, the costs for preparation of the expert report(s). The overall cost depends on the circumstances of each particular case.

Preliminary injunctions are available either before filing a claim or at any stage of the case consideration if failure to take such measures may significantly complicate or make it impossible to enforce the court decision, or restore the violated or disputed rights or interests of the plaintiff.

In trade mark cancellation disputes, the courts may apply the following preliminary injunctions against a defendant who holds a disputed trade mark:

• prohibiting transfer of rights to a disputed trade mark;

• prohibiting to abandon a disputed trade mark; and

• prohibiting to grant third persons a right to use a disputed trade mark (including based on a licence agreement).

In court cases related to customs seizures, a preliminary injunction normally relates to temporary suspension of customs clearance of the imported or exported goods.

A defendant may use various defences and, inter alia, it may file an objection against an injunction request stating that the requested injunctive measures are not commensurate and/or repeat the claims on the merits of the case, which is not allowed according to the law.

Furthermore, a defendant may ask the court to oblige the plaintiff, who filed the injunction request, to secure compensation for possible losses of the defendant that the injunction may cause (counter-collateral). Counter-collateral is usually carried out by depositing funds into the court’s deposit account in the amount determined by the court.

According to the law, a trade mark infringement shall be terminated at the trade mark owner’s request, and the infringer is obliged to indemnify damages to the trade mark owner.

The court may decide on the impoundment and destruction of infringing products.

The court may also decide on the impoundment and destruction of materials and tools used to manufacture infringing products.

Initially, the plaintiff is responsible for paying the court fees for the commencement of the court proceedings. As a rule, the losing party is required to reimburse the respective court fees to the prevailing party.

As regards the attorneys’ fees and other litigation expenses, it may be subject to reimbursement by the losing party only based on the court ruling regarding the distribution of the litigation expenses.

In case of abuse by a party or its representative of procedural rights or if the dispute arose out of bad faith actions of the party, the court may charge such party with litigation fees in whole or in part, regardless of the outcome of the dispute.

A trade mark owner may not seek relief on the merits of the trade mark infringement case without notice to the defendant that should be made according to the procedural laws of Ukraine. As a rule, the court sends a writ of summons or a subpoena to the defendant. However, a preliminary injunction may be taken by the court ex parte and without prior notification of the defendant.

At the same time, an infringer would not be notified of a seizure of the counterfeited products within criminal proceedings.

The prevailing defendant may request the court to oblige the plaintiff to reimburse attorney’s fees and other litigation expenses. Moreover, the defendant, replaced by another defendant during the court proceedings, has the right to file a motion for compensation of the court expenses incurred as a result of the unreasonable actions of the plaintiff.

The effective Ukrainian law provides for customs seizure of counterfeits. A trade mark should be recorded with the Customs IP Registry of Ukraine to facilitate the customs officials in identifying possible counterfeits at the customs borders.

In case of identification of the infringing products, the customs officials shall immediately inform a representative of the trade mark’s owner of temporary suspension of the customs clearance of such goods. The suspension period is ten business days and may be extended for ten additional business days upon a reasonable request. During the suspension period, the following defensive actions may be taken:

• court action that includes (i) an application for preliminary injunction aimed at suspension of customs clearance of the infringing goods and (ii) a statement of claim for infringement of IP rights at the customs border; and

• a request to the Customs Authorities for destruction of counterfeits or removal of infringing marks from the products and/or packaging.

In some cases, obtaining samples of the counterfeit products and preparing the expert report may be necessary.

According to the applicable customs provisions, customs seizures should not apply to original goods; ie, goods that have been manufactured upon consent of the right-holder or goods manufactured by a person authorised by the right-holder. In other words, customs officials should not suspend parallel imported original goods.

There are no different remedies for different types of trade marks.

Defendant’s Admission of a Claim

A defendant may admit the claim at every stage of the proceedings. Such admission should not be contrary to the law or violate the rights or interests of other parties to a dispute.

Settlement Agreement

The parties may settle the case at any stage of the proceedings (including the appeal or cassation stages) by entering into a settlement agreement. A settlement agreement should be approved by the court. The terms of the settlement agreement should not be contrary to the law or violate the rights or interests of other parties to a dispute.

Mediation

Mediation takes place through a mediator who helps the parties to settle the dispute amicably at any stage of the court proceedings. The outcome of the mediation process should not be contrary to the law or violate the rights or interests of other parties to a dispute.

Settlement Conferences with Participation of a Judge

The parties to a dispute may settle the case within the settlement conferences under the supervision of a presiding judge. During closed conferences, the judge has the right to draw attention of the parties to jurisprudence in similar disputes and offer possible ways to resolve the dispute amicably.

ADR is possible, but not a common way of settling trade mark cases in Ukraine. However, the Law of Ukraine on Mediation became effective in Ukraine in December 2021, and mediation is expected to become a more popular way of settling disputes in the future.

At the same time, the trade mark owners very often revert to the WIPO or other authorised ADR institutions to resolve domain name disputes.

Other court proceedings, such as parallel revocation or cancellation proceedings, may influence current proceedings. For example, the court may stay infringement proceedings based on the defendant’s motion until the parallel revocation court case is resolved. However, such a course of action remains at the judge’s discretion.

The general rule is that the appeal must be filed within 30 days (20 days for commercial courts) after the day on which the judgment is handed down. This time limit may be renewed if the appellant convinces the appellate court that the delay was due to a compelling reason.

The appeal proceedings normally last from four to 12 months before its decision is issued.

There are no special provisions concerning the appellate procedure for trade mark proceedings. General provisions of the procedural law are applied to trade mark proceedings.

The appellate court reviews the case based on the evidence already available in the case file and additionally submitted evidence that may be accepted thereby due to good reasons for failure to file it with the first instance court. The aim of appeal proceedings is to verify the legality and validity of the first instance court decision.

The appellate review may concern both legal and factual issues but is limited to the appellant’s claims. However, if the appellate court finds substantial violation of procedural law or incorrect application of substantive law, the court may exceed the arguments and claims filed by the appellant.

Trade marks may also be protected by copyright in parallel (eg, in case of a logo or a slogan), provided that the respective copyright protection requirements (eg, originality) are met. Earlier created copyright might constitute ground for refusal of a trade mark application, and ground for revocation of a trade mark registration.

Surnames, names of persons, pseudonyms, portraits and facsimiles of famous people in Ukraine are eligible for trade mark protection upon their consent.

In accordance with the law, the scope of trade mark laws based on copyright or related rights is not limited.

A trade mark can be protected by design law if the mark (logo) meets the requirements for design protection (ie, individual character and novelty).

Celebrities may seek protection, inter alia, for their own names by means of trade mark registrations. See 12.1 Copyright and Related Rights.

According to the Law on Protection from Unfair Competition, any act that contravenes business rules and honest commercial practices, including, inter alia, acts susceptible of creating confusion with competitors and their products/services, as well as unauthorised use of a trade mark or a similar designation, should be considered an act of unfair competition which is subject to consideration by the Antimonopoly Committee of Ukraine.

The most recent developments in the Trade Mark Law of Ukraine occurred at the end of 2020. To summarise, the amendment to the Trade Mark Law is certainly a positive development as it provides a deadline for filing oppositions against trade mark applications, introduces collective trade marks, implements Article 6septies of the Paris Convention, etc.

Registration of .UA domain names (second-level domain names) may be done only on the basis of respective registered trade marks (national registrations or international registrations covering Ukraine) by the trade mark holders or their licensees.

According to the effective law, advertising materials and advertising itself may not violate any third parties’ rights. Thus, before launching advertising campaigns, distributors of advertising (eg, TV channels) normally try to eliminate the risks of any third-party claims for IP infringement.

Practically, sometimes TV channels request from advertisers a trade mark application with exact advertising images to somehow avoid IP claims from any third parties. In most cases, trade mark application is used for the above purpose only, and applicants are not interested in obtaining the respective trade mark registration at all. Therefore, most of such trade mark applications lapse due to non-payment of registration fees at the end of substantive examinations in the UA PTO.

Furthermore, according to the Advertising Law of Ukraine, it is prohibited to use any advertising of sponsor in a TV programme, except for name and trade mark of the sponsor. For that reason, sponsors often circumvent the law by filing trade mark applications for the whole storyboard of a particular video. This allows sponsors to comply with the law and mitigate risks related to sponsorship activity. In most cases, such trade mark applications are further withdrawn.

Chambers and Partners