Overview of Ukraine Trademark Registration Service

Background

A new Ukrainian state, the Cossack Hetmanate, was established during the mid-17th century after an uprising against the Poles. Despite continuous Muscovite pressure, the Hetmanate managed to remain autonomous for well over 100 years. During the latter part of the 18th century, most Ukrainian ethnographic territory was absorbed by the Russian Empire. Following the collapse of czarist Russia in 1917, Ukraine was able to bring about a short-lived period of independence (1917-20), but was reconquered and brought under Soviet rule, during which two famines caused the deaths of over eight million in 1921-22 and 1932-33. World War I1 caused an estimated seven to eight million deaths. Although final independence for Ukraine was achieved in 1991 with the dissolution of the USSR, democracy remained elusive as the legacy of state control and endemic corruption stalled efforts at economic reform, privatization, and civil liberties. A peaceful mass protest called "Orange Revolution" in the closing months of 2004 forced authorities to allow an internationally monitored vote that swept into power a reformist slate under Viktor Yushchenko.

Who May Apply?

The first applicant for a mark is granted a certificate of registration. A person who produces goods or provides services may apply for registration of a trademark. Assignees may also apply. Foreign natural or legal persons may apply through an attorney registered to practice before the Ukrainian Patent Office.

What Can Be Registered?

A trademark may be registered if it is not in contravention of the public interest or principles of morality and if it is in conformity with the requirements for registration. The mark may consist of words, two or three-dimensional signs, designs and other signs, or a combination of these. Marks may be in one color or a combination of colors.

What Cannot Be Registered?

The following marks are not registrable: (1) state coats of arms, flags or emblems; (2) official State names; (3) emblems, abbreviations or full names of international organizations; (4) official controls or hallmarks; (5) seals, decorations and other marks of distinction; however, these may be used as elements in a mark if authorized; (6) marks that are not distinctive; (7) marks that are in general use or are the marks of goods and services of a specific type; (8) generally used symbols and terms; (9) indications of the types, quality, quantity, characteristics, purpose, value, or time of production or sale of the goods and services; or (10) marks that are confusing or may lead to confusion as to those responsible for the manufacture of goods or provision of services. However, items (2), (41, (5), and (6) may appear as elements of a mark as long as they are not predominant in the mark. In addition, no protection is granted to marks that: (1) are similar to other trademarks that are the subject of prior registrations or applications in Ukraine in the name of another person for the same goods or services; (2) are marks belonging to another where such marks are protected based on international agreements to which Ukraine is a member; (3) are company names that are known in Ukraine and belong to another person who obtained the right to use the mark prior to the date of an application for registration for the same goods and services; (4) are names of geographic locations that are the origin of goods, except where these names are elements in the mark that are disclaimed; (5) are industrial designs belonging to another; (6) are names of copyrightable works that are known in Ukraine, unless the authors or their successors agree to their use as trademarks; or (7) are names, surnames, pseudonyms, or portraits of persons used without their consent. Protection for well-known marks: The protection of rights to a well known mark may be effected according to Article 6bis of the Paris Convention for the Protection of Industrial Property on the basis of recognition of a mark as well known by the Board of Appeal or a court.' When determining whether the mark is well known in Ukraine, the following factors may be considered, if appropriate: 1. degree of popularity or recognition of a mark in the appropriate sector of society; 2. duration, scope and geographic area of any use of a mark; 3. duration, scope and geographic area of any promotion of a mark, including advertising or notification and presentation at fairs or exhibitions of the goods andlor services, relative to which a mark is applied; 4. duration and geographic area of any registrations and/or applications for registration of a mark provided that the mark has been used or recognized; 5. evidence of successful assertion of rights to a mark, in a particular territory in which the mark has been recognized as the well known mark by competent bodies; 6. value associated with a mark. To obtain recognition of their mark as well known, owners must pay a fee and file a petition for recognition. The decision of the Board of Appeal regarding recognition of a mark as well known in Ukraine may be appealed judicially. From the date a mark has become well known in Ukraine according to the determination of the Board of Appeal or a court, legal protection is be granted to it as though this mark had been filed for registration in Ukraine. The legal protection also covers goods and services unrelated to those for which the mark has been recognized as well known in Ukraine, if use of this mark by other persons in relation to such goods and services indicates a connection between them and the owner of the well known mark, and such use may cause damage to the owner's interests.

Rights

The exclusive right of a certificate owner to prohibit other persons fiom using the registered mark without his consent may not be applied to defeat any right which arose prior to the filing date or, if priority was claimed, prior to the date of priority of the application; (the right of "prior use").

Filing Requirements

Applications must be in Ukrainian and must contain the following: (1) a power of attorney; (2) an application for registration, containing the name and address of the applicant; (3) a print of the mark; (4) a list of goods and services for which the mark is to be used; and (5) if the mark is in color, a declaration that the mark is to be in a color or combination of colors, as well as a color print of the mark. Representation: Applicants are required to hire local trademark attorneys to file applications. However, neither residency nor a physical presence in the country is necessary to file applications for registration. A power of attorney is acceptable if signed and sealed with a corporate seal of a client.

Evaluation & Review

A filing date is granted when the following materials are received by the Patent Office: (1) a request for registration in Ukrainian; (2) information on the identity of the applicant; (3) a description of the mark; and (4) the list of goods and services on which the mark is to be used. During a period of two months after receipt of the application, the applicant may amend the application to correct errors. If no corrections are made within this period, the filing date becomes the date upon which such corrections are made. The application is examined for fulfillment of formal requirements, payment of fees, and whether the mark contains prohibited matter. If the application does not contain all formal requirements, the applicant has a period of two months within which to provide needed documents or makes necessary amendments. If the applicant fails to do so, the application is deemed abandoned. If the application fulfills the formal requirements, a substantive examination is undertaken. During the substantive examination, the Patent Office may request that the applicant file additional necessary materials. If the Patent Office determines that elements of the application are not in conformity with the law, the applicant has two months to respond to this determination by filing additional materials.

Duration

Registration is effective for 10 years from the date of filing the application and may be renewed for like periods. Renewal applications must be filed within the last year of a mark's validity. If a registration lapses, the former owner has the exclusive right to reregister it for three months following the lapse.

Use

A mark must be used within three years after its entry into the register of trademarks. If the trademark is not adequately used within this period, third parties may request that the mark be cancelled.

Domain Names

Governance: Ukranian domain policy regulates the registration and rights in domain names. Providers register domain names according to Chapter 2 of the domain rules. Establishment of domains: Domains may be delegated as public or private. Public domains are registered in the.UA domain by registrars under the supervision of an administrator and according to a public domain policy. Requests for the registration of a name in a public domain are processed by the administrator on a "first-come-first-served" basis, except as otherwise provided for by the policy of a specific public domain. The public domain policy may establish "a simultaneity period", i.e. the time interval from the moment of receipt of the first request for a domain name, during which all subsequent requests for this domain name are regarded as received simultaneously with the first one.' Selection of domains: The domain name of a public domain should be chosen in such a way that its second-level component (before the "." character but not including it). is distinguishing and is presented by letters of the Latin alphabet, numerals and/or the "-" character. The second-level component of a public domain's domain name must: -be a generally accepted designation of a certain kind of goods, services or phenomena or a certain kind of human activity,* or - be a generally accepted term or designation of another kind from among those that may not obtain legal protection pursuant to Art. 6 C1.2 of the Law of Ukraine "On Protection of Rights to Trademarks and Service Marksn,3 or - represent a Latin transliteration of the term or designation specified in C1. 2.6.1.1.: 2.6.1.2. of the present Policy written in Ukrainian or Russ~an.~ Delegation of public domains: The delegation of a new public domain in the .UA Domain or changes to the policy of an existing public domain may be accomplished through the following procedure? 1. Persons interested in the delegation of a new public domain or in changing the policy of an existing public domain must submit a proposal to the .UA Domain Administrator. The initiation of a new public domain requires that the proposal define the target community of the proposed domain, define its administration and identify requested administrator of the domain. 2. The .UA Domain Administrator at its discretion will reach a decision on the delegation of a new public domain in the .UA Domain or on changes to the policy of an existing public domain, granting or refusing such request. 3. If a favorable decision on the above-mentioned issues is taken by the .UA Domain Administrator, the .UA Domain Administrator and the administrator of a public domain (a new or existing one respectively) will conclude (or re-conclude) an agreement between them. The present policy and the policy of the corresponding public domain will become integral addenda to the said agreement. The moment at which the said agreement is concluded will be the moment when a new public domain policy (or changes to an existing public domain policy) comes into force. Domain name registrations: When creating domain registrations for registrants, registrars must create a record of such registrant in the registration database and check the availability of the domain name in accordance with the requirements of the Domain Policy.' The registrar creates and sends the registrant's request to the administrator of the corresponding public domain name pursuant to the requirements of C1. 4.21 of the present Policy. The administrator within the period of time established by the public domain policy will reach one of the following decisions: - domain name registration, or - refusal of domain name registration, or - suspension of the request's processing. The administrator informs the administrative and technical contacts of the results of the request via electronic mail.' The submission of a request for delegation (registration) of a domain name in a public domain means that the registrant independently and at hisher own free will and discretion identifies himselfierself as a member of the community, in the interests of which this public domain is administered. The public domain administrator is not entitled to make hisher own judgment as to whether the registrant's convictions are trustworthy, except when the public domain policy necessitates documentary confirmation of the registrant's membership in a certain community.' Refusal of domain name requests: Domain name requests may be refused by the public domain administrator if: - The request's syntax or contents do not comply with the requirements set by C1. 4.21 of the present policy. -The domain name has already been delegated to another registrant. -Under the effective Internet standards the domain name is syntactically incorrect. -The request has been received from the person other than the registrar. The registrar is not able to provide documentary evidence of certain facts concerning the registrant in cases when the public domain policy sets forth such a requirement.' Suspension of domain name requests: The public domain administrator will suspend the request's processing in the following cases:1° -a domain dispute has arisen with regard to this request and until the resolution of the domain dispute according to C1. 5.2 of the present policy. - a request for delegation of an identical domain name, which has been received earlier, is being checked for its compliance with the public domain policy and until completion of the check. - a request for changes to domain name record is received from the registrar which does not service the mentioned domain name (for example, due to the registrant's wish to conclude a contract on servicing of the mentioned domain name with such a registrar) and until the public domain administrator receives confirmation of the consent of the previous registrar which serviced the mentioned domain name, to making the indicated changes to the record about this domain name, but for the period not exceeding five calendar days. If within five calendar days for which the request's processing is suspended, the previous registrar which serviced the domain name fails to give an answer to the public domain administrator's inquiry, either by way of consent to changes to the record about this domain name or by objection to such actions, the public domain administrator will decide on changes to the record about the domain name. Revocation of domain name requests: The public domain administrator will decide on revocation of private domain name delegations in a public domain and cancellation of the domain name exclusively in the following cases:'' -request of the registrant expressed in writing and sent to the registrar and/or the administrator of the corresponding public domain; - cancellation of the corresponding contract between the registrant and the registrar or expiration of the term of validity of such a contract, if this contract provides for revocation of delegation; - termination of the period of delegation; - by decision of court. Correction of technical errors: In case of reiterated and repeated technical errors that make the use of a domain name impossible andlor impede the normal operation of the domain name system on the whole, the administrator will replace all the IN-class records for the corresponding domain with the IN TXT records, in which the reason for such a substitution will be explained. At the same time records in the registration database will stay unchanged and the registrar and the registrant will be notified of the changes made and the reasons for such changes. The IN-class records will be restored within three days after correction of the technical errors and notification of the administrator thereof.12 Revocation: In cases governed by C1. 2.14.2, C1. 2.14.3, C1. 2.15 of the present policy, the public domain administrator will decide on the revocation of private domain name delegations in a pu

Enforcement

The Law of Ukraine On Protection Against Unfair Competition, adopted on May 7, 1996, defines unfair competition as actions that conflict with rules, commercial and other good faith customs in entrepreneurial activity. Article 4 of this Law provides that, "[tlhe use without permission of another person's face or name, a firm name, signs for goods and services, selling aids, packaging of commodities, or the names of literary, artistic works or magazines is illegal."