UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
5.7 Combining Revocation/Cancellation and Infringement The current legislation does not contain any prohi - bitions or restrictions as to filing actions involving revocation/cancellation and infringement being heard together. According to procedural law, a statement of claim may combine several claims that are related by their grounds or the evidence presented, including both pri - mary and ancillary claims (those whose satisfaction depends on the satisfaction of primary claims). The court may join multiple cases into a single pro - ceeding if a claim is filed by: • the same plaintiff against the same defendant; • the same plaintiff against different defendants; and • different plaintiffs against the same defendant. A claim for revocation/cancellation and infringement may be filed within one proceeding, or different claims may be filed with one court and subsequently joined into one proceeding. However, claims that fall under different types of court procedures cannot be joined into a single proceeding. For more details, contact a local attorney. 5.8 Measures to Address Fraud National legislation does not provide for a specific procedure for terminating trade marks or copyrights that were filed fraudulently and for special liability for such actions. However, at the registration stage, an opposition may be filed in cases where the mark may be misleading as to the person producing the goods or providing the services, if filed for registration on its own behalf by an agent or representative of the person using a mark in a foreign country, etc. Upon consideration of such opposition, the trade mark may be refused. The registered trade mark may be declared invalid if the filed application violates the rights of other parties.
Partial revocation/cancellation is possible. If the grounds for revocation/cancellation of the trade mark certificate apply to certain goods or services, the cer - tificate shall only be terminated partially. 5.5 Legal Remedies Against the Decision of the Trade Mark Office A post-grant opposition can be filed with the Chamber of Appeals within two months of receiving the final decision, but only by a person who filed a pre-grant opposition. The period for consideration of the opposition is two months from receipt thereof, along with a respective payment receipt by the Chamber of Appeals, and may be extended for no more than two months, provided that the relevant request is submitted and the respec - tive fee is paid. The IP Office’s final decision on the application may also be appealed to the court. The grounds for appealing the IP Office’s final deci - sion are the same in both post-grant opposition and court procedures. If the opposition is filed, a copy thereof is sent to the applicant, who has 15 days to respond, from the noti - fication date. The opposition procedure includes filing written mate - rials and conducting oral hearings, the number of which depends on the complexity of the case. Both the opponent and the applicant are parties to the pro - ceedings. A grounded decision of the Chamber of Appeals may be challenged by the applicant or opponent through the court within two months from the date of receipt thereof. 5.6 Amendment in Revocation/Cancellation Proceedings The general requirements of procedural law apply. After filing a statement of claim but before the consid - eration of the case on merits, the subject or grounds of the claim may be amended, and the amount of the claim may be increased or decreased.
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