Global Trademark GO Ukraine - Introduction to Ukrainian Trademark Application

In August 2020, Ukraine implemented a new intellectual property law and made various modifications to trademarks to be closer to European intellectual property laws and more beneficial to trademark applicants who maintain their rights in Ukraine. The new law also stipulates the application and protection of collective trademarks, enriching the types of trademarks that can be registered. Currently, in addition to traditional word trademarks and graphic trademarks, non-traditional trademarks such as sound trademarks and collective trademarks can also be registered in Ukraine.

1. Trademark authority:

• Ukrainian Institute of Intellectual Property
• English: Ukrainian Intellectual Property Institute (UKRPATENT)
• Website: Ukrpatent
• Trademark search: DB "Information about Well-Known Marks in Ukraine" (uipv.org)

2. How to apply for trademark registration:

• electronic submission

3. Trademark registration application language:

• Ukrainian

4. Documents required for trademark registration application:

• Applicant information
• Trademark pattern
• List of goods and/or services
• The priority document and its Ukrainian translation can be submitted within 3 months from the filing date.
• The power of attorney can be submitted within 2 months from the date of application.

5. Ukrainian trademark registration application process:

• Trademark applications in Ukraine are subject to formal and substantive examination. Once the trademark application successfully passes the formal examination, it will be published in the official announcement.

6. Trademark cancellation

• If a mark has not been used for a continuous period of five years from the date of registration or any later date, the mark can be canceled by a court decision in the event of an action by a third party. The time limit for filing a lawsuit shall not be earlier than 5 years after the registration date of the disputed trademark.

7. Trademark objections

• Within three months after the trademark application is published, anyone can file an objection request against the published trademark.

8. Authorization, validity period and trademark renewal

• Authorization fees and announcement fees must be paid within 3 months from the date of issuance of the authorization decision. A Ukrainian trademark is valid for 10 years from the date of application and can be renewed indefinitely for another 10 years. Renewal application must be made within 6 months before the registration expires. Trademarks can also be renewed within 6 months of the expiry date by paying a surcharge. Expired trademarks cannot be restored.

9. Average time for trademark authorization

• If the trademark registration process goes smoothly, it will take approximately 1.5-2 years to complete the Ukrainian trademark registration.

10. Madrid registration

• The reply to the provisional refusal of international trademark registration in Ukraine should be submitted within 3 months from the date of provisional refusal. This period can be extended/reinstated within 3 or 6 months. The response language is Ukrainian. For foreign applicants, a local representative needs to be designated to submit the response.

11. Other matters needing attention

• Exceptions to trademark opposition: if the trademark has been used more than three months or earlier before the cancellation application, or has been applied for renewal, others will not be able to cancel it. However, if you started using it or applied for renewal within three months before the cancellation application, it is not an exception and others can still cancel it.
• Ukraine’s new trademark law limits the exclusive rights to trademarks, that is, on the basis of ensuring fair competition, others’ trademarks can be used reasonably.
• According to Ukraine's new trademark law, if someone else's trademark has been registered in another country, and its dealer or agent maliciously registers the same trademark in Ukraine, the owner of the foreign trademark can request that the registered trademark be invalid.
• According to Ukraine's new trademark law, if another person's trademark has been actually used abroad, domestic dealers or agents who apply to register the same trademark in Ukraine in their own name will not be approved unless the trademark user agrees. This provision extends the protection of trademark rights to overseas use.
• In practice, if a trademark registration application is rejected due to conflict with someone else's prior trademark, the applicant will often consider negotiating with the prior right holder to sign a consent form. Ukraine’s new Trademark Law clearly stipulates the adoption of a consent form, which adds more possibilities for trademark registration and better reflects the will of the trademark owner.
• The "Amendment to the Trademark Law" stipulates two forms of fair use of trademarks by third parties:
  • Descriptive fair use refers to the situation where a third party makes descriptive use of the type, quality, quantity, purpose of use, value, origin, production time of the goods/services provided, or other characteristics of another person's registered trademark.
  • Indicative fair use refers to a third party using someone else's registered trademark in commercial activities to indicate the purpose of the goods or services it provides, for example: the products/services it provides are spare parts with registered trademarks.