04-01-2010 (Newsletter Issue 9/10)Accession to the Singapore TreatyUkraine has recently ratified the Singapore Treaty on the Law of Trademarks.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to Ukraine, on May 24, 2010.
Legal basis is the Law on Protection of Rights to Trademarks and Service marks of December 15th, 1993, in force since July 1st, 1994, last amended April 10th, 2008.
Ukraine is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration.
Trademarks which were protected in the former Soviet Union are protected in Ukraine only, if they were transcribed within the period stipulated.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, combinations or shades of colours, threedimensional forms, the three-dimensional form of a good or its packaging, sound marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks and service marks.
The application is filed at the Patent Office (Ukrpatent).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 12 to 15 months.
Simultaneously with the registration, the trademark is published in the Official Gazette.
Any person can file grounded opposition against a trademark registration within the whole period of the application examination process but not later than 5 days before the grant decision date.
But there is no publication before granting right protection, therefore, no opposition period. Information about filed applications may be obtained only through search, which shows filed applications.
Cancelation of registered trademarks (certificates) is possible only by court.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
no opposition period
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 3 years from the registration date or has not been used continuously any other period of 3 years after its registration, any interested person can start a court proceeding for trademark cancellation on the basis of non-usage. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
The official application fee is approx. EUR 100.00 for each class. For colour trademarks there is an extra fee of EUR 50.00. Official fee for filing application to the names of several applicants pays at the rate 130%.
Official fee for Certificate issuing is EUR 160.00. Official fee for publication for each class is EUR 15.00. Additional fee for color image publication is EUR 10.00.
Trademark Licence Agreement
A trademark licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark can be licensed for either for all or some goods/or services in respect of which the mark is registered. There are exclusive, non-exclusive and sole licences. The sale of a registered trademark does not automatically terminate the licence. There are statutory provisions prescribing the terms of licensing. The licence agreement should contain quality clauses regarding the licensed goods or services and the licensor should exercise effective control over the fulfilment of these provisions.
The term of the licence shall not exceed the term of validity of the underlying trademark.
There are provisions in law for the voluntary recordal of a licensee. There is no time frame for a recordal.
A licence agreement shall contain:
1. The territory of the licence
2. The name of the trademark and the certificate or number
3. The class(es) of goods of the registered trademark(s)
4. A list of the goods/services licensed
5. The names and addresses of the licensee and the licensor as stated in the certificate
6. The duration of the licence
7. The kind of licence (exclusive, non-exclusive or sole)
8. Provisions regarding quality control
The following document is required for a recordal:
1. A power of attorney from the licensor or the licensee (if the request for recordal is filed through a representative), signed by the authorised person, the name and capacity of this person must be indicated
Three originals of the license agreement or three notarized copies of the license agreement, which must be signed by the authorized persons of both parties and sealed/stamped. Names and positions of the signatories must be indicated. In case the seal/stamp of any of the parties is not available the documents must be notarized.
The licence agreement becomes effective and enforceable against third parties from the date of execution of the licence agreement. The recordal of the licence agreement is not obligatory, but recordal is published in the Official Bulletin of the Trademark Office.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and can call upon the owner to institute infringement proceedings. A licensee may initiate the proceedings in his own name if he is an exclusive licensee. The owner of a simple (non-exclusive) licence can initiate infringement proceedings only if this is stipulated by the licence agreement. He does not need to cite the trademark owner as co-claimant in any such proceedings, unless otherwise agreed upon in the contract.
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We would like to thank the following law firms for their assistance in updating the information provided:
Mikhailyuk, Sorokolat and Partners, Kharkov, Ukraine
IPR Group, Kiev, UkraineLicensing
Mikhailyuk, Sorokolat and Partners, Kharkov, Ukraine
Mikhailyuk, Sorokolat and Partners, Kharkov, UkrainePatentica LLP
, St. Petersburg, Russian Federation