UKRAINE Trends and Developments Contributed by: Oleksandr Mamunya and Oksana Padokh, Mamunya IP
proceedings for granting a claim against a particular infringer. Such recognition does not have binding effect on parties not involved in the case. • The request for recognition of a trade mark as well known cannot be a separate claim, as this recognition is not an independent remedy but rather a condition for protecting the rights of the trade mark owner – for instance, in matters for invalidating conflicting trade mark rights. In addition, referencing international treaties, the Grand Chamber ruled that, in the absence of bad faith in the registration of a trade mark by another party, the owner of a well-known trade mark may file a claim to invalidate the trade mark within the general statute of limitations (which is three years from the date when the person became aware, or could have reasonably become aware, of the infringement), but no later than five years from the date of registration. Wizz Air Hungarі Zrt v NIPO (Case No 910/13105/21, Supreme Court decision, 20 August 2024) This case gained significant attention as a land - mark case involving “monochrome” trade marks. The plaintiff’s application for a pink colour as a trade mark was rejected by the NIPO due to lack of distinctiveness. Even after appealing the deci - sion, the plaintiff failed to prove that the colour had acquired distinctiveness in Ukraine for the relevant services. In its reasoning, the Supreme Court ruled that, when a colour is submitted for trade mark reg - istration, it is essential to determine whether the colour has acquired distinctiveness in relation to the goods or services it is applied for. The key criterion for assessment is the colour’s ability to perform the primary function of a trade mark:
namely, whether the color, used as a trade mark, allows consumers to distinguish the goods or services of one provider from another without any likelihood of confusion. Consumers must clearly recognise the colour (without additional graphic or word elements) as a sign identifying specific goods or services. Therefore, to register a colour as a trade mark, convincing evidence is required of its acquired distinctiveness solely for the relevant goods or services. The highest judicial body also emphasised that acquired distinctiveness through use is allowed only under exceptional circumstances, particu - larly when the range of goods and services is very limited and the market is very specific. In other words, registering a colour as a trade mark is possible only for a very narrow range of clearly defined goods or services. Goals and Objectives for the Next Period The IP Office recently approved the “Develop - ment Strategy of the Ukrainian National Intel - lectual Property Office (NIPO) for 2024–2028” (see here ). The document outlines the mission, strategic directions, goals and objectives for the Ukrainian IP Office for the coming years. Given the martial law in Ukraine and the challenges the country faces due to the war, the IP Office has based its approach on the understanding that the national IP system is an integral part of Ukraine’s economy. The IP Office’s Strategic Plan for 2024–2028 includes nine key directions, one of which is “Quality and Effective Legal Support in the IP Sector”. To prepare Ukraine for EU accession nego - tiations, the NIPO plans to conduct a primary assessment of the implementation status of EU legal acts (EU acquis) in the field of IP. As
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