UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
4.2 Trade Mark Register The IP Office maintains the State Register of Trade Marks (the “State Register”), which includes all reg - istered Ukrainian trade marks. The State Register is publicly available on the IP Office’s website, which also publishes applications filed for registration in the online Official Bulletin. Information about registered marks and filed applica - tions is available on the IP Office Information System, an online unified search engine providing information about all IP objects. Bearing in mind that the IP Office conducts a substan - tive examination (including checking of prior rights), it is highly recommended to conduct a full availability trade mark search before filing a new application. The IP Office also maintains a register of well-known trade marks. This is not a State Register, but rather a list of trade marks recognised as well known in Ukraine by the Chamber of Appeals of the IP Office or by the court. 4.3 Term of Registration The term of protection of a trade mark is ten years calculated from the application filing date. A trade mark may be renewed for the next ten years each time upon request of the trade mark owner, provided that the renewal fee has been duly paid. Late pay - ment is possible within six months after the trade mark expiry date (subject to an extra fee). For more details, contact a local attorney. 4.4 Application Requirements The following information and documents are required for filing a trade mark application in Ukraine: • applicant’s data (full name and address); • representation of the mark (in colour, if claimed); • list of goods and/or services the trade mark is applied for; and • power of attorney (POA) signed by a duly author - ised person. The POA should be simply signed, and in some cases may be the subject of notarisation. Legalisation is not required. For more details, contact a local attorney.
In respect of certain specific types of trade marks, additional data is also required, particularly as follows: • sound mark – recorded phonogram and musical score; • colour mark – examples of how the applied mark will be used in respect of goods and/or services; and • three-dimensional mark – all views of the applied mark. No grounds for filing the application are required (such as actual use or intention to use the applied mark). Prosecution of a trade mark application filed in the name of a foreign person may be performed through a Ukrainian trade mark attorney only. A trade mark may be registered in the name of a legal entity or an individual regardless of whether it has the status of a private entrepreneur. Co-ownership is also permitted. In this case, there is no need to provide the IP Office with the co-ownership agreement. Multiple-class applications are permitted in Ukraine. The official filing fee depends on the number of applied classes but not on the number of selected goods/services. The filing fees for trade mark applications depend on a number of circumstances, such as the presence/ absence of colour, the quantity of classes of the ICGS and the quantity of applicants. 4.5 Use in Commerce Prior to Registration There is no requirement regarding the use of the applied mark in commerce before protection is grant - ed in Ukraine. However, a trade mark owner is obliged to use its mark after registering. If a trade mark is not used in Ukraine for a continuous five years from the publication of the registration, or if such use has been suspended for the same term from any other date following the publica - tion, any person can apply to the court for non-use cancellation of the trade mark, either fully or partially.
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