UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Anastasia Mindrul and Oksana Padokh, Mamunya IP
4.6 Consideration of Prior Rights in Registration The IP Office conducts a substantive examina - tion to check the prior rights, for, inter alia: • trade marks, including those recognised as well known in Ukraine; • trade names that are known in Ukraine and belong to other persons who have acquired the right to said names before the application filing date with respect to identical or similar goods and services; • conformity marks (certification marks) reg - istered in accordance with the established procedure; • industrial designs belonging to other persons in Ukraine; • geographical indications; • copyright; and • surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of per - sons known in Ukraine without their consent. 4.7 Revocation, Change, Amendment or Correction of an Application The applicant may introduce different changes, amendments or corrections into a filed applica - tion (which are subject to payment of the official fee) regarding: • the applicant’s name and address not con - nected to an assignment of the application; • the representative’s name and address; • the address for correspondence; • the applicant’s name and address due to assignment of the application; and • the limitation of goods and services, etc. It is not possible to amend the image of the applied mark or to extend the list of goods and services.
No grounds for filing the application are required (such as actual use or intention to use the applied mark). Prosecution of a trade mark application filed in the name of a foreign person may be performed through a Ukrainian trade mark attorney only. A trade mark may be registered in the name of a legal entity or an individual regardless of whether it has the status of a private entrepreneur. Co- ownership is also permitted. In this case, there is no need to provide the IP Office with the co- ownership agreement. Multiple-class applications are permitted in Ukraine. The official filing fee depends on the number of applied classes but not on the num - ber of selected goods/services. The filing fees for trade mark applications depend on a number of circumstances, such as the pres - ence/absence of colour, the quantity of classes of the ICGS and the quantity of applicants. 4.5 Use in Commerce Prior to Registration There is no requirement regarding the use of the applied mark in commerce before protection is granted in Ukraine. However, a trade mark owner is obliged to use its mark after registering. If a trade mark is not used in Ukraine for a continuous five years from the publication of the registration, or if such use has been suspended for the same term from any other date following the publication, any person can apply to the court for non-use cancellation of the trade mark, either fully or partially.
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