UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
Revocation/Cancellation A revocation (invalidation) trade mark action may be filed in the following cases: • non-compliance of the registered trade mark with the conditions for granting legal protection (men - tioned in 4.10 Refusal of Registration ); • presence in the certificate of trade mark elements or a list of goods and services not included in the submitted application; and • issuance of the certificate as a result of submit - ting an application that violates the rights of other parties. A trade mark declared invalid is considered as not having taken effect from the date following the filing date of the application. Consequently, the IP Office makes the necessary amendments to the relevant trade mark register and publishes this information in its Official Bulletin. A trade mark cancellation action may be filed if: • the trade mark becomes a generic term for a particular type of goods/services after the date of publication of the information about the issuance of the certificate; • due to the use of the trade mark by its certificate holder or by another person with their permission, it may mislead the public, particularly regarding the origin, quality or geographical origin of the goods/ services for which it was registered; or • the trade mark has not been used continuously in Ukraine for five years from the date of publication of the information about the issuance of the trade mark certificate, or if its use has been suspended for another reason after that publication for a con - tinuous period of five years. A trade mark is cancelled from the date of the court decision thereon. The IP Office then makes the nec - essary amendments to the trade mark register and publishes this information in its Official Bulletin. The re-examination procedure is not carried out by the IP Office in the aforementioned cases; the court independently determines the grounds for invalidity or cancellation.
Copyright legislation does not provide specific requirements for the revocation or cancellation of copyright. It follows from the case law that, based on a claim seeking to establish the absence of author - ship of a work, parties may also assert a claim for the invalidation of a certificate regarding the registration of copyright. 5.3 Ability to File an Opposition or Revocation/Cancellation Foreigners, stateless persons, foreign legal entities and other persons having a place of permanent resi - dence or permanent location outside Ukraine have a right to file an opposition through Ukrainian trade mark attorneys only. Ukrainian individuals or legal entities may act without involving trade mark attorneys. The official fee for filing an opposition is UAH2,000. The agent’s fee is normally calculated on an hourly basis and depends on the complexity of the matter, the necessity of collecting respective evidence and preparing a Ukrainian translation, etc. The opposition procedure does not envisage any compensation for the opponent’s expenses. Although possession of the earlier trade mark applica - tion or registration is a strong argument, the opponent does not necessarily need to own a registered trade mark, since other valid prior rights can be invoked. A revocation/cancellation proceeding may be initiated by an individual or legal entity who considers their rights or legitimate interests to have been infringed, unrecognised or disputed due to the existence of another trade mark or copyright. According to case law, the plaintiff must demonstrate at least their legal or commercial interest in taking such actions. 5.4 Opposition or Revocation/Cancellation Procedure The opposition may be filed within three months from the publication date. This term is not extendable. For a description of the opposition procedure, see 5.2 Legal Grounds for Filing an Opposition or Cancellation . Revocation/cancellation actions can only be brought before the civil and commercial courts.
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