UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
4.6 Consideration of Prior Rights in Registration The IP Office conducts a substantive examination to check the prior rights, for, inter alia: • trade marks, including those recognised as well known in Ukraine; • trade names that are known in Ukraine and belong to other persons who have acquired the right to said names before the application filing date with respect to identical or similar goods and services; • conformity marks (certification marks) registered in accordance with the established procedure; • industrial designs belonging to other persons in Ukraine; • geographical indications; • copyright; and • surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine without their consent. 4.7 Revocation, Change, Amendment or Correction of an Application The applicant may introduce different changes, amendments or corrections into a filed application (which are subject to payment of the official fee) regarding: • the applicant’s name and address not connected to an assignment of the application; • the representative’s name and address; • the address for correspondence; • the applicant’s name and address due to assign - ment of the application; and • the limitation of goods and services, etc. It is not possible to amend the image of the applied mark or to extend the list of goods and services. The applicant may also withdraw the application at any stage of prosecution. 4.8 Dividing a Trade Mark Application It is possible to divide a trade mark application before the IP Office issues a decision thereon.
Filing a request for dividing the initial application and filing the divisional application(s) are subject to pay - ment of the official fee. The date of filing the divisional application shall be considered the same as the date of filing the divided application. The priority date of the divisional applica - tion shall be determined the same as the priority date of the divided application, if there are grounds for that. 4.9 Incorrect Information in an Application Normally, the IP Office does not check the information provided by the applicant. However, in case of any doubts in respect of the filed documents/materials, the responsible examiner may send its request, and the applicant has two months to respond. The applicant is responsible for accuracy of informa - The registration of a trade mark shall be granted to a mark that is inherently distinctive, does not contradict public order or moral principles, and is not subject to refusal according to the grounds defined by the Trade Mark Law. Since the IP Office conducts a substantive examina - tion, a provisional/final refusal may be based both on absolute and relative grounds. The list of absolute grounds for refusal is broad and (among others) covers signs: • contradicting public order or moral principles; • inherently devoid of distinctiveness; • consisting exclusively of the shape, or another characteristic, which results from the nature of the goods themselves, is necessary to obtain a techni - cal result or gives substantial value to the goods; • reproducing registered or applied-for plant varieties (PVs); and • containing registered or applied-for geographical indications (GIs). Furthermore, the Trade Mark Law extended relative grounds for refusal by adding the following: tion provided to the IP Office. 4.10 Refusal of Registration
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