UKRAINE Trends and Developments Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
regardless of who owns it, and that a change of own - ership cannot restart the statutory non-use period. Upon Dominus-K’s cassation appeal, the IP Office ini - tiated transfer of the case to the Grand Chamber to ensure uniform application of trade mark-use require - ments. The Grand Chamber confirmed that Ukrainian law does not link early cancellation to the identity of the trade mark owner. Instead, the five-year non-use period runs from the filing date or the publication of protection (including for international registrations) and continues irrespective of any subsequent assign- ments or changes in proprietorship . Allowing each new owner to restart the non-use clock would under - mine the very purpose of the non-use requirement and enable abusive transfers aimed at avoiding cancella - tion. The Court supported its reasoning by referring to the EU Trade Mark Regulation and CJEU practice ((judgment of 13 October 2021, Т-12/20), which like - wise aggregate use by all successive owners when assessing genuine use. The Grand Chamber therefore upheld the appel - late decision and confirmed early cancellation of the trade mark. The ruling provides important guidance for brand owners acquiring trade marks in Ukraine: purchasers are expected to assess non-use risks at the time of acquisition and cannot rely on ownership changes to shield marks from cancellation. Luchian Pop v PJSC Fitsai Yurii and NIPO (Case No 910/4461/23, Supreme Court decision, 17 June 2025) The Supreme Court recently clarified the conditions under which a right of prior user may arise for a trade mark, reaffirming its role as an important mechanism for protecting bona fide commercial use. The case involved a sole proprietor, Luchian Pop, who sought recognition of a prior user right over a trade mark reg - istered by another entrepreneur Fitsai Yurii, alongside invalidation of the registration and amendments to the State Register of Trade Marks. The courts of first instance, appeal and cassation dismissed the claimant’s lawsuit on the grounds that the legal mechanism of prior user rights cannot be invoked proactively by a plaintiff.
In its ruling, the Supreme Court emphasised that the right of prior user under Article 500 of the Civil Code of Ukraine is a defensive mechanism , available only to the party against whom a trade mark owner asserts its exclusive rights . In other words, it is not an inde - pendent subjective right that can be recognised at the initiative of the alleged prior user. It may only be applied when the registered owner challenges the use of the mark and the other party invokes prior use as a defence. Because the claimant attempted to obtain judicial confirmation of a prior user right in the absence of any infringement claim by the trade mark owner, the courts concluded that the legal conditions for exer - cising such a right were not met. Consequently, they rejected the claim in full. The Supreme Court also stated that the right of prior user arises when certain legal criteria are met and does not require specialised technical knowledge. The Court confirmed that such a right allows a busi - ness that has used an unregistered mark in good faith, or undertaken serious preparatory steps towards its use, to continue using the mark even after a third par - ty has registered an identical or confusingly similar mark. Evidence of bona fide use or significant pre - paratory actions is essential to establish the right; in the absence of such proof, the court cannot recognise a prior user right. This decision provides guidance for businesses oper - ating in Ukraine, reinforcing the legal protection avail - able to bona fide users and ensuring a fair balance between registered trade mark owners and parties with legitimate prior commercial use. Future Outlook and Conclusions Looking forward, Ukraine’s IP landscape is shaped by a combination of legislative modernisation, EU align - ment, digitalisation and post-war resilience: • legislative adoption – draft laws on copyright, trade marks and trade secrets are expected to be adopted by 2026–2027; • EU integration – ongoing integration into EU digital platforms (TMclass, DesignView, Common
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