UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Anastasia Mindrul and Oksana Padokh, Mamunya IP
4.11 The Madrid System Ukraine is a party to the Madrid Agreement and the Madrid Protocol. International registrations in Ukraine are granted the same legal protection as national applica - tions. The IP Office neither issues local registra - tion certificates in respect of international regis - trations nor maintains the national register of the international registrations protected in Ukraine. Assignments and assignment agreements regarding the international registrations (even though they designate Ukraine only) may be reg - istered through the World Intellectual Property Organization (WIPO) only. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Opposition The IP Office publishes filed applications in the online Official Bulletin after the filing date. Once published, any person can file an opposition within three months after publication. This term is not extendable. However, the martial law imposed in Ukraine in 2022 caused legal ambiguity regarding IP rights terms, including timeframes for filing opposi - tions. Cancellation The legislation does not impose any statutory limitations or time periods within which to file claims for invalidity. The general limitation period of three years applies (see 7.1 Timeframes for Filing Infringement Lawsuits ).
However, when filing claims for trade mark can - cellation, proving certain circumstances is often linked to the use of the trade mark, which may require filing a claim after an indefinite period (for example, after the trade mark has become generic or started to mislead the public), or with - in a clearly defined period (the five-year non-use period). 5.2 Legal Grounds for Filing an Opposition or Cancellation Opposition An opposition may be based on absolute and relative grounds for refusal – inter alia, it may be filed: • if a mark is identical to or is misleadingly similar to marks that have been registered or applied for registration for similar or related goods and services in Ukraine in the name of another person; • if a mark is misleading or capable of deceiv - ing the public as to the goods, services or person manufacturing the goods or providing the services; or • if a mark is identical to or is misleadingly similar to marks of third persons, where such marks are protected without registration, par - ticularly marks recognised as well-known. Each and all grounds for refusal of a trade mark application may serve as the basis for filing a trade mark invalidation action as well. Risk of dilution or exploitation of goodwill may not be a separate ground for refusal but should arise from confusing similarity of the compared marks or the misleading nature of the conflict - ing mark as to the goods/services or a person producing goods and/or providing services.
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