UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
• that the trade mark is identical/similar to an earlier right by association (not only by confusion); • that the trade mark is identical/similar to a well- known trade mark, to the extent that it may cause confusion or association; and • that the application has been filed by an agent or representative in its name without the owner’s consent, if there is no evidence to justify such filing and the owner has objected thereto (Article 6 sep - ties of the Paris Convention). If a provisional refusal is issued, the applicant has two months for filing arguments in favour of the registra - tion. For international registrations, this term is three months. These deadlines may be extended for three or six months (subject to a fee). If the final refusal was issued, the applicant may appeal the decision to the Chamber of Appeals of the IP Office or to the court within two months of receiving the final decision. 4.11 The Madrid System Ukraine is a party to the Madrid Agreement and the Madrid Protocol. International registrations in Ukraine are granted the same legal protection as national applications. The IP Office neither issues local registration certificates in respect of international registrations nor maintains the national register of the international registrations protected in Ukraine. Assignments and assignment agreements regarding the international registrations (even though they des - ignate Ukraine only) may be registered through the World Intellectual Property Organization (WIPO) only. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Opposition The IP Office publishes filed applications in the online Official Bulletin after the filing date. Once published,
any person can file an opposition within three months after publication. This term is not extendable. Cancellation The legislation does not impose any statutory limita - tions or time periods within which to file claims for invalidity. The general limitation period of three years applies (see 7.1 Timeframes for Filing Infringement Lawsuits ). However, when filing claims for trade mark cancella - tion, proving certain circumstances is often linked to the use of the trade mark, which may require filing a claim after an indefinite period (for example, after the trade mark has become generic or started to mislead the public), or within a clearly defined period (the five- year non-use period). 5.2 Legal Grounds for Filing an Opposition or Cancellation Opposition An opposition may be based on absolute and relative grounds for refusal – inter alia, it may be filed: • if a mark is identical to or is misleadingly similar to marks that have been registered or applied for reg - istration for similar or related goods and services in Ukraine in the name of another person; • if a mark is misleading or capable of deceiving the public as to the goods, services or person manu - facturing the goods or providing the services; or • if a mark is identical to or is misleadingly similar to marks of third persons, where such marks are protected without registration, particularly marks recognised as well known. Each and all grounds for refusal of a trade mark appli - cation may serve as the basis for filing a trade mark invalidation action as well. Risk of dilution or exploitation of goodwill may not be a separate ground for refusal but should arise from confusing similarity of the compared marks or the misleading nature of the conflicting mark as to the goods/services or a person producing goods and/or providing services.
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