Trade and Service Marks

– Law of Ukraine on the Protection of Rights to Trademarks and Service Marks, in force since July 1, 1994, with amendments of June 16, 1999, February 6, 2001, June 25, 2003 and October 16, 2012, last amended on March 20, 2023.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), as of April 26, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, as of December 25, 1991.
– Madrid Agreement Concerning the International Registration of Marks, as of December 25, 1991.
– Trademark Law Treaty (TLT), as of December 29, 2000.
– Protocol Relating to the Madrid Agreement, as of December 29, 2000.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as of December 29, 2000.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of December 22, 2003.
– WTO’s TRIPS Agreement, since May 16, 2008.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since July 29, 2009.
– Singapore Treaty on the Law of Trademarks, since May 24, 2010.

Filing

Applicant: individuals or legal entities, associations of persons or their successors in title. 

Foreigners: enjoy the same rights as nationals; must elect a registered patent attorney. 

Service marks: protection is provided for.

Collective marks: are registrable.

Kinds of protection: such designations may be, inter alia, words, including proper names, letters, numbers, pictorial elements, colors, shape of goods or their packaging, sounds, provided that such designations are good to distinguish the goods or services of one person from goods or services of other persons, good for their entry in the Register in such a way as to enable a clear and precise scope of the legal protection provide.

The maintenance of a Register of Certificates of Ukraine for Trademarks is carried out in electronic form.

Well-known trademarks: rights to a well-known trademark shall be protected in compliance with Article 6bis of the Paris Convention and this Law on the basis of recognition of the trademark as well-known by the Chamber of Appeals or court. The trademark may be recognized as well-known regardless of its registration in Ukraine.

Not registrable: (1) 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. (2) signs that reproduce or imitate (a) state armorial bearings, flags and other state symbols (emblems); (b) full or abbreviated official names of states or international letter codes of states; (c) emblems and abbreviated or full names of international intergovernmental organizations; (d) official control, guarantee or testing seals, stamps; (e) 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. (3) signs which (a) are usually not distinctive in nature and have not obtained such a character through their use; (b) consist only of signs that are generally used in the modern language or in fair and constant trade practices on goods and services; (c) 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, 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; (d) consist exclusively of signs that are commonly used symbols and terms; (e) 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. Such signs 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 and in the event that they have acquired distinctive character as a result of their use prior to the date of application. (4) signs which (a) may mislead the public with regard to the goods or services, namely, as to their nature, quality or geographical origin; (b) may mislead the public with regard to the person manufacturing the product or rendering the service; (c) 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; (d) 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 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. (5) 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 (a) 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; (b) 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; (c) 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; (d) 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; (e) 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. Signs referred to above, except for conformity marks, 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. (6) signs that reproduce (a) 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; (b) surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine without their consent; (c) industrial designs the rights to which belong to other persons in Ukraine (may be registered if consent is given by a holder of the earlier acquired right and there is no possibility to mislead the consumers).

Classification: International Classification of Goods and Services. 

Territory covered: Ukraine.

Filing requirements for an application (to be sent to resident patent attorney):
1. Power of attorney (no legalization required);
2. Representation of the sign to be protected, 10 prints (size 8 x 8 cm); in case of a label, print not to exceed size 14 x 14 cm;
3. If colors are claimed, 10 prints in color; if black and white is claimed, 5 b & w prints;
4. For a sign containing a word, or relating to signs not comprising graphical elements: description of the sign;
5. List of goods and services;
6. Priority document (if the priority is claimed, to be filed within three months from the filing date);
7. For a sound mark: an audiotape and a description of the kind of sound (a musical composition or part of it; noises of any origin, etc.); for a musical composition: a written composition of the notes; for a light signal: a videotape and a description (sequence, wavelength, etc.);
8. For a collective mark: a list of persons who are entitled to use such a mark, and a document establishing the conditions of its use;
9. To protect a color or combination of colors, a specific indication should be made in the application and color representations of the trademark concerned should be provided along with the examples of the use of such a trademark.

For a change of name or address:
1. A document confirming the legality of the change e.g. a legalized extract from the Commercial Register;
2. Power of attorney (no legalization required);
3. A document confirming payment of the fee.

Electronic filing: available.

Examination Procedure

Examination: formal: conformity with formal requirements. As soon as the examination is completed, the details of the application are published in the official electronic bulletin of the NIPO and entered in the electronic database of applications. Upon publication of the details of the application, any person may, within three months from publication, file a grounded opposition against the application or validity of the international registration in Ukraine in respect of the inconsistency of the sign contained therein with the registrability requirements. Complete (substantive): meeting the requirements of registrability, in particular distinctiveness.

Appeal: possible. An applicant may appeal to the court or the Chamber of Appeals against the NIPO's decision on the application within two months from the date of receipt of the decision. For the international registration holder, this term shall be three months from the date of sending the statement of refusal to provide legal protection to the trademark to the International Bureau of WIPO by the NIPO. A person who has filed an opposition may appeal the Office's decision to the Chamber of Appeals within two months from the date of receipt of a copy of the decision sent to such a person.

Opposition: any person may file an opposition against a pending trademark within three months from publication of the application. The results of consideration of such opposition are taken into account upon establishing a conclusion in the application. A copy of such conclusion (decision of the NIPO) is forwarded to the person who filed the opposition.

Corrections: possible at any time either on the applicant’s initiative, or at the request of the NIPO. In the latter case, the corrections shall be submitted within two months after the receipt of the official notification by the applicant. 

Amendments of application: additional materials modifying the application are accepted provided that these amendments do not extend the initially claimed scope of protection; modifications of the applied mark itself are prohibited.

Division of applications: an applicant has the right to divide an application in two or more applications (divisional applications) by allotting the list of goods and services given in this application between the divisional applications so that each of divisional applications does not comprise goods and services similar to those mentioned in the other applications.

Disclaimers: available.  

Letters of consent: in cases mentioned in the section not registrable.

Granting

Publication: the main trademark particulars are published in the “Official Gazette” if the appropriate fees for the grant of a certificate and for publication are duly paid within three months from the receipt of the decision about the registration of the trademark. The term of submission of payment may be extended by up to six months. Simultaneously, the trademark particulars are entered into the Trademark Register.

The certificate of registration is issued (in paper format only) one month after the official registration of the mark. 

Duration: ten years from the filing date.

Renewals: protection is renewable for further ten-year periods. Grace period: six months.

Exclusive rights to use the registered trademark: belong to the owner. 

Obligation to use: compulsory.

Use conditions: the use of a trademark is constituted by its applying on any goods for which it has been registered, their package, signboards related to these goods, labels, tabs, tags or any other subjects fixed to the goods, storing goods bearing the said mark for the purpose of offering for sale, offering these goods for sale, sale, importation and exportation of these goods; its use in relation to rendering or offering any service in respect of which it has been registered; its use in business papers or advertising, as well as in the Internet. The trademark shall be deemed to be used if it is used in the form of the sign as registered, as well as in the form that differs from the registered sign only in certain elements, provided that this does not deteriorate the overall distinctive character of this sign.

Non-use: if a trademark is not used in Ukraine, in whole or with respect to a part of the goods and 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 trademark has been suspended from the other date after such publication for the continuous term of five years, any person has the right to appeal to the court with a request for previous cessation of the certificate in whole or in part.

Modification of Protection after Registration

Certificate holder's rights: exclusive right to prohibit other persons to use without his consent: (a) a sign that is identical with the registered trademark with respect to the goods and services listed in the certificate; (b) a sign that is identical with the registered trademark with respect to the goods and services related to those listed in the certificate, if such a use may result in confusion of the said sign and the trademark, in particular, if there may appear an association of such sign with the trademark. The right of a certificate holder to prohibit the other persons to use the registered mark without his consent does not apply to: (a) exercising of any right acquired before the application filing date or, if the priority was claimed, before the application priority date (right of prior user); (b) the use of the trademark for a product put into the civil circulation under this trademark by the certificate holder or with his consent, provided that the certificate holder 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 civil circulation; (c) the use of signs, in the course of trade, which are 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 the lack of signs of violation of rights of the trademark certificate holder; (d) the use of the trademark in the course of trade, in the event it is necessary to specify the purpose of the product or service, namely, as additional equipment or spare parts; (e) application of the trademark in comparative advertising exclusively for the purpose of distinguishing the goods and services in order to objectively emphasize their distinctions; (f) noncommercial use of the trademark; (g) all the forms of broadcasting the news and commenting upon the news; (h) fair use of names or addresses of the said persons. A certificate holder that carries out re-selling activity, under an agreement with the manufacturer of goods or the person rendering services, has the right to use his own trademark alongside of the trademark of the said persons as well as instead of their trademark.

Opposition: an applicant or a person who filed an opposition against an application may appeal to the court or the Chamber of Appeals against the NIPO's decision on the application within two months from the date of receipt of the Office's decision or its copy. For the international registration holder, this term shall be three months from the date of sending the statement of refusal to provide legal protection to the trademark to the International Bureau of WIPO by the NIPO. An appeal against the NIPO's decision in the Chamber of Appeals of the NIPO is accomplished by filing an opposition with respect to the decision, which shall be considered within two months from the date of receipt of the opposition, and a document confirming the payment of the respective fee. The period for consideration of the opposition may be extended, but for no more than two months. On the results of the consideration of the opposition, the Chamber of Appeals shall make a grounded decision that shall be approved by the order of the NIPO and sent to the applicant and to the person who has filed the opposition. The Chamber of Appeal's decision approved by the NIPO may be challenged before the court within two months from the date of receipt of the decision. Decisions of the Chamber of Appeals shall enter into force from the day of their approval by the order of the NIPO and shall be subject to publication in full on the website of the NIPO.

Invalidation: a certificate of registration can be declared to be invalid in full or in part only in a court.

Assignment – license: under the law, a trademark assignment agreement and a licensing agreement are considered to be valid if they were concluded in writing and signed by the parties. Each party of an agreement shall have the right to notify an indefinite circle of persons about transferring the property right to a trademark or granting a license for using a trademark. Under the Civil Code, the fact of the transfer of rights to a trademark shall be recorded in the Register.

Compulsory license: no provision.

Nullification: if the conditions for trademark registration were not met; if there are available elements in the representation of a trade or service mark or in the list of goods and services, which were not mentioned in the application; if a trademark was applied for registration with an infringement of rights of third parties. A certificate shall be ceased by court judgement: in connection with transformation of the trademark into a commonly used sign for goods and services of a certain type after the date of publishing information on granting the certificate; if following the use of the trademark by the certificate holder or by other person upon his consent, it may mislead the public, in particular, in terms of the origin, quality or geographical origin of the goods and services for which it has been registered; if a trademark is not used in Ukraine, in whole or with respect to a part of the goods and services listed in the certificate, continuously within five years from the date of publishing the information on granting the certificate.

Infringement and penalties: any encroachment on the rights of a certificate holder, including the actions that shall be agreed with the certificate holder but are carried out without his consent, as well as a preparation for such actions, is considered to be the infringement of the certificate holder rights. The use of trademarks and signs in domain names without the certificate holder consent is also considered to be the infringement of the rights. On the request of the certificate holder, the said infringement shall be terminated and the infringer is obliged to indemnify the actual damage to the certificate holder. The certificate holder may also demand to remove the illegally used trademark or sign, which is similar to it to the extent that the trademark and the sign may be confused, from the product, from its packaging, or to liquidate the manufactured reproductions of the said trademark or the sign, which is similar to it to the extent that they may be confused. The law provides for administrative (such as fines and confiscation of infringing products), civil and penal sanctions, including imposition of fines on infringers, confiscation of goods bearing the registered trademark, equipment and materials used for their manufacture, as well as destruction of such infringing goods and equipment

Right of re-registration: a former certificate owner has an exclusive right to re-register a trademark within two years after cessation of the certificate except for the cases when the holder of the ceased certificate grants consent to a third party for registration of the trademark that was applied for.