UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Anastasia Mindrul and Oksana Padokh, Mamunya IP
Revocation/Cancellation A revocation (invalidation) trade mark action may be filed in the following cases: • non-compliance of the registered trade mark with the conditions for granting legal protec - tion (mentioned in 4.10 Refusal of Registra- tion ); • presence in the certificate of trade mark elements or a list of goods and services not included in the submitted application; and • issuance of the certificate as a result of sub - mitting an application that violates the rights of other parties. A trade mark declared invalid is considered as not having taken effect from the date following the filing date of the application. Consequently, the IP Office makes the necessary amendments to the relevant trade mark register and publishes this information in its Official Bulletin. A trade mark cancellation action may be filed if: • the trade mark becomes a generic term for a particular type of goods/services after the date of publication of the information about the issuance of the certificate; • due to the use of the trade mark by its certificate holder or by another person with their permission, it may mislead the public, particularly regarding the origin, quality or geographical origin of the goods/services for which it was registered; or • the trade mark has not been used continu - ously in Ukraine for five years from the date of publication of the information about the issuance of the trade mark certificate, or if its use has been suspended for another reason after that publication for a continuous period of five years.
A trade mark is cancelled from the date of the court decision thereon. The IP Office then makes the necessary amendments to the trade mark register and publishes this information in its Offi - cial Bulletin. The re-examination procedure is not carried out by the IP Office in the aforementioned cases; the court independently determines the grounds for invalidity or cancellation. Copyright legislation does not provide specific requirements for the revocation or cancella - tion of copyright. It follows from the case law that, based on a claim seeking to establish the absence of authorship of a work, parties may also assert a claim for the invalidation of a cer - tificate regarding the registration of copyright. 5.3 Ability to File an Opposition or Revocation/Cancellation Foreigners, stateless persons, foreign legal enti - ties and other persons having a place of perma - nent residence or permanent location outside Ukraine have a right to file an opposition through Ukrainian trade mark attorneys only. Ukrainian individuals or legal entities may act without involving trade mark attorneys. The official fee for filing an opposition is UAH2,000. The agent’s fee is normally calculat - ed on an hourly basis and depends on the com - plexity of the matter, the necessity of collecting respective evidence and preparing a Ukrainian translation, etc. The opposition procedure does not envisage any compensation for the oppo - nent’s expenses. Although possession of the earlier trade mark application or registration is a strong argument, the opponent does not necessarily need to own
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