UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
such a way as to enable clear and precise scope of the granted legal protection. Collective marks may also be registered in the name of an established association. In this case, the appli - cation should also be accompanied by the document that sets out the terms of use thereof and that includes the list of persons entitled to use such trade mark. Designations reproducing surnames, names, pseudo - nyms and derivatives thereof, as well as portraits and facsimiles of well-known individuals in Ukraine, are not registerable as trade marks without their consent. Additionally, according to the established practice of the National Office for Intellectual Property and Inno - vations (the “IP Office”), trade marks reproducing very widespread surnames may be refused as devoid of initial distinctiveness. Meanwhile, the exclusive right of the certificate holder to prohibit other persons from using the registered trade mark without their consent does not extend to the bona fide use by third parties of their own names (including surnames). Trade mark protection may be granted to industrial designs if they meet the requirements for trade mark protection (three-dimensional marks, for example). Regarding statutory trade marks, legal protection shall not be provided in Ukraine to trade marks that repre - sent or imitate: • state armorial bearings, flags and other state sym - bols (emblems); • full or abbreviated official names of states or inter - national two-letter codes of states; • emblems and abbreviated or full names of interna- tional intergovernmental organisations; and • an official control or guarantee, or testing seals or stamps. These signs may be included as non-protected ele - ments of a trade mark, provided that there is the con - sent of the relevant competent authority or the owners thereof. Using the national symbols of Ukraine, such as the flag and the national coat of arms, is possi -
ble under a special law only, which has not yet been adopted. Ukraine does not grant protection to marks that are famous outside the jurisdiction but that are not yet in use within Ukraine. However, if a third party files such a mark for registration in its name, it is possible to oppose the application based on non-compliance with public order, akin to the filing of trade marks in bad faith. 2.2 Essential Elements of Trade Mark Protection Trade mark protection may be granted to a designa - tion that is inherently distinctive or that has acquired distinctiveness through its use before the application filing date. The Trade Mark Law or secondary legislation does not specify particular requirements for or evidence of acquired distinctiveness. This question is considered on a case-by-case basis. A pre-use requirement is not applicable in Ukraine. 2.3 Trade Mark Rights According to the Civil Code of Ukraine, trade mark rights include: • right to use a trade mark; • exclusive right to authorise the use of a trade mark; • exclusive right to prevent unauthorised use of a trade mark, including prohibiting such use; and • other property rights established by law. The Trade Mark Law provides that the certificate grants its owner the exclusive right to prohibit other persons from using, without their consent and unless otherwise provided by this Law: • a designation identical to the registered trade mark concerning the goods and services listed in the certificate; • a designation identical to the registered trade mark concerning goods and services related to those listed in the certificate, if such use may lead to confusion between this designation and the trade
624 CHAMBERS.COM
Powered by FlippingBook