Recent changes to the Ukrainian Trademark Law establish largely anticipated novelties and instruments aimed at improving the enforcement of trademark rights.
On August 16, 2020, the Law of Ukraine "On Amendments to Certain Laws of Ukraine Concerning Strengthening of Protection of Rights to Trademarks and Industrial Designs and Combating Patent Trolling" ("Law") became effective and introduced new grounds for refusal of registration, new rules for opposition procedure and other significant refinements.
Trademark owners should prepare for new opposition deadlines and consider new enforcement instruments.
The Law introduces a number of important changes, including:
New Absolute Grounds for Refusal
The Law enlarges the list of objects that shall not be registered by adding the signs:
- consisting exclusively of the shape, or another characteristic, which (1) results from the nature of the goods themselves; (2) is necessary to obtain a technical result; or (3) gives substantial value to the goods;
- reproducing registered or applied-for plant varieties;
- containing registered or applied-for geographical indications.
An association or other similar organization may now register collective trademarks which may be used by its members to distinguish their goods and services from those of non-members. In addition to standard requirements for trademark applications, a collective trademark application should also contain a list of entities allowed to use such trademark and document setting out terms of its use.
Possibility of e-prosecution, including e-filing, is now also fixed at the legislative level.
Recognition of Letters of Consent
Consent of an owner of an earlier registered trademark is now recognized by the Law as a sufficient argument for overcoming relative grounds for refusal of trademark registration. Yet, such consent may be disregarded if there is a potential risk of consumers confusion.
New Opposition Rules
The most important change introduced by the Law is significant amendments to opposition procedure, namely:
- a pre-grant opposition should be filed within a three-month period of the application's publication date;
- a novelty also stipulates a possibility to file post-grant opposition with the Appellate Chamber, however only the person who filed a pre-grant opposition is entitled to file such post-grant opposition no later than two month after receipt of the final decision on the respective trademark application;
- though the Law expended the instruments provided by the opposition procedure, trademark owners or other stakeholders are highly recommended to recalibrate their trademark monitoring services to be able to meet the new opposition deadlines and fully benefit from the new procedure.
It is expected that the above new rules would apply only to trademark applications filed after the Law's entering into force. However, further official clarifications are awaited to confirm such position.
Extended Non-Use Period
The Law eliminates the discrepancy between the old version of the Ukrainian Trademark Law and EU-Ukraine Association Agreement in respect of the duration of non-use period eligible for respective registration cancellation action. A continuous five-year period is now a unified standard in Ukraine.
Limitation to Right of Re-Registration
The period when the trademark owner may exercise its exclusive right of re-registration of trademark is shortened to two years after termination of respective certificate. However, other persons may register such trademark before the end of this period, provided that the owner of terminated certificate consents to such registration.
New Trademark Invalidation Ground
Owners of foreign trademark registrations may bring an action against their agents or representatives who registered same trademarks in Ukraine without proper authorization (acting in bad faith). One of the two options may be requested in court:
- invalidation of a trademark certificate; or
assignment of rights to such trademark.