UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
A licence for a trade mark or copyright may be issued for the full term of protection of the respective object but may not exceed this term. Trade mark applications cannot be licensed. 6.3 Registration or Recording of an Assignment or Licence The assignment agreement regarding a trade mark must be registered with the IP Office, while registration of the copyright assignment is not mandatory. Registration of a licence is not mandatory for trade marks and copyright. The assignment agreement relating to trade marks will become effective for third parties, including courts and governmental authorities, from the date of its reg - istration by the IP Office. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits The general limitation period is three years unless a special limitation period is established. This period commences from the day when the person learned or could have learned about the infringement of their rights or about the person infringing those rights. A special limitation period is not envisaged for trade mark or copyright infringement actions. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Legal Claims For trade mark protection, such claims may include: • prohibition of unauthorised use of a trade mark; • removal from goods/packaging of unlawfully used trade marks, and destruction of manufactured images of a trade mark or confusingly similar des - ignations; and • declaration of invalidity of a trade mark certificate. For copyright protection, claims may include:
In Ukraine, only a registered trade mark may be assigned. If a trade mark application is under exami - nation, it is possible to assign the right to obtain the certificate (assignment of the application). The assign - ment agreements for a registered mark and for an application are subject to mandatory registration by the IP Office. A copyright may be assigned for an actually created (existing) work. The copyright and trade mark assignment agreements must be concluded in writing. Partial assignments of trade marks or copyrights are permitted. A mark may be partially assigned provided that no similar goods and services remain in the trade mark registration subject to partial assignment. The proprietary rights to the work may be transferred (alienated) to another person based on the law or legal transaction entirely (for all methods of using the work worldwide) or partially (for specific methods of using the work worldwide or for all or specific methods of using the work in certain countries). The rights to a trade mark and copyright can be inher - ited. 6.2 Licensing Requirements or Restrictions Licences may be issued only in respect of registered trade marks or actually created works. The registration of licences is not mandatory and may be performed upon the request of one of the inter - ested parties. Trade mark and copyright licences must be concluded in writing. It is possible to issue different types of licences, including exclusive, non-exclusive and sole licences.
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