UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Anastasia Mindrul and Oksana Padokh, Mamunya IP
The applicant may also withdraw the application at any stage of prosecution. 4.8 Dividing a Trade Mark Application It is possible to divide a trade mark application before the IP Office issues a decision thereon. Filing a request for dividing the initial application and filing the divisional application(s) are subject to payment of the official fee. The date of filing the divisional application shall be considered the same as the date of filing the divided application. The priority date of the divi - sional application shall be determined the same as the priority date of the divided application, if there are grounds for that. 4.9 Incorrect Information in an Application Normally, the IP Office does not check the infor - mation provided by the applicant. However, in case of any doubts in respect of the filed docu - ments/materials, the responsible examiner may send its request, and the applicant has two months to respond. The applicant is responsible for accuracy of information provided to the IP Office. 4.10 Refusal of Registration The registration of a trade mark shall be granted to a mark that is inherently distinctive, does not contradict public order or moral principles, and is not subject to refusal according to the grounds defined by the Trade Mark Law. Since the IP Office conducts a substantive examination, a provisional/final refusal may be based both on absolute and relative grounds.
The list of absolute grounds for refusal is broad and (among others) covers signs: • contradicting public order or moral principles; • inherently devoid of distinctiveness; • consisting exclusively of the shape, or another characteristic, which results from the nature of the goods themselves, is necessary to obtain a technical result or gives substan - tial value to the goods; • reproducing registered or applied-for plant varieties (PVs); and • containing registered or applied-for geo - graphical indications (GIs). Furthermore, the Trade Mark Law extended rela - tive grounds for refusal by adding the following: • that the trade mark is identical/similar to an earlier right by association (not only by confu - sion); • that the trade mark is identical/similar to a well-known trade mark, to the extent that it may cause confusion or association; and • that the application has been filed by an agent or representative in its name without the owner’s consent, if there is no evidence to justify such filing and the owner has objected thereto (Article 6 septies of the Paris Conven - tion). If a provisional refusal is issued, the applicant has two months for filing arguments in favour of the registration. For international registrations, this term is three months. These deadlines may be extended for three or six months (subject to a fee). If the final refusal was issued, the applicant may appeal the decision to the Chamber of Appeals of the IP Office or to the court within two months of receiving the final decision.
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