Trade marks in Ukraine
► What kinds of trade mark searches are available?
► Is monitoring of trade marks available?
► Who can file a trade mark application?
► Is multiple class application possible?
► Can a class heading be used in a trade mark application?
► What is required to file a trade mark application?
► What are the requirements for a power of attorney (POA)?
► What is the principle of rights creation?
► What is the extent of examination of a trade mark application?
► Does the Office accept letters of consent?
► How long does it take for a mark to be registered?
► Is a pre-registration opposition possible?
► What is the term for filing an appeal against refuse of the Office to register a mark?
► Is a post-registration opposition possible?
► What is the term for filing to a court invalidation action against a trade mark?
► What consequences may be of non-use of a mark?
► How long does trade mark registration last?
► What must be done for the renewal of trade mark registration?
► What documents and time are required for recordal of change in holder name and/or address?
► What documents and time are required for recordal of change in ownership?
► What documents and time are required for recordal of a license?
► What amendments in a license can be recorded?
► What main official fees must be paid?
What kinds of trade mark searches are available?
Search in Patent Office database covering registered and applied for registration trade marks including international registrations designating Ukraine
Data required:
- Representation of the mark
- Classes in which the search should be conducted
- Term (7 or 3 working days).
Is monitoring of trade marks available?
Yes.
Data required:
- Representation of the mark;
- Classes in which the monitoring should be conducted.
Who can file a trade mark application?
One or more legal and/or natural person(s).
Is multiple class application possible?
Yes.
Can a class heading be used in a trade mark application?
Yes, but it should be noted that class headings do not cover all goods or services in a particular class. Where an applicant intends to cover all the goods or services included in the alphabetical list of a class, or only some of those goods or services, he must demonstrate such intent by explicitly naming the goods and services of the alphabetical list his application is intended to cover.
What is required to file a trade mark application?
Filing instruction containing:
- Full name(s) and address(es) of the applicant(s);
- List of goods and/or services;
- Representation of the mark.
- Priority data (if any);
- Power of attorney.
- Certified copy of the priority document (within 3 months after filing date).
What are the requirements for a power of attorney (POA)?
The power of attorney must be simply signed. No notarization or legalization is required.
The original is required, but it is advisable to send first a scanned copy.
The power of attorney can be sent to the Patent Office after the action has already been taken by the patent attorney.
What is the principle of rights creation?
First to file.
What is the extent of examination of a trade mark application?
For formalities, absolute grounds for refusal and conflict with prior rights, mainly with prior registrations and applications.
Does the Office accept letters of consent?
Yes, but a letter of consent not always may help to overcome refusal of protection.
How long does it take for a mark to be registered?
Approximately 22-24 months.
Is a pre-registration opposition possible?
Yes. The information about national applications or international registrations is published in the e-Bulletin of the Patent Office (https://sis.ukrpatent.org/uk/bulletin/). Any third person has the right to submit to the Office a written observation explaining on which grounds the mark can not be registered. The observation must be submitted to the Office within 3 months from the date of publication in the Bulletin of information on the application or international registration This person cannot be the party to the proceedings before the Office but it receives a copy of the final decision and can appeal against it within 2 months.
What is the term for filing an appeal against refuse of the Office to register a mark?
An appeal to the Appeal Board must be filed by the applicant within two months after the date of receipt of the final refuse by applicant’s attorney.
Is a post-registration opposition possible?
No. Only a civil court may, at the request of any person providing evidence of a legitimate interest, declare a registration invalid on the grounds that it fails to meet one of the conditions specified in the Trade mark law.
What is the term for filing to a court invalidation action against a trade mark?
3-year period commencing from the date when the plaintiff learned / could learn about the registration of the mark, which in some cases may not coincide with the date of registration of the mark.
What consequences may be of non-use of a mark?
The rights of the proprietor of the mark will be declared to be revoked on claim to a Court if, within a continuous period of 5 years, the mark has not been put to genuine use in Ukraine in connection with the goods or services in respect of which it is registered. Burden of proof of non-use lays on a plaintiff.
How long does trade mark registration last?
10 years starting on the application date and subsequent terms every 10 years subject to filing renewal requests.
What must be done for the renewal of trade mark registration?
Within 6 months before expiration date of trade mark registration a request for renewal must be filed.
Documents required: only power of attorney simply signed by the holder of registration (original).
The renewal request may be filed within 6 months after due date with a 50% fine.
When the name and/or address of the holder of the registration was/were changed during 10 years term and this change was not recorded, the request for recordal of the change must be filed prior to filing the renewal request.
What documents and time are required for recordal of change in holder name and/or address?
- Certified copy of a document evidencing the change;
- Power of attorney with new name and/or address simply signed by the holder
(original).
Time: 1,5-2 months
What documents and time are required for recordal of change in ownership?
Where the change in ownership results from a contract,
One of the following:
- Original contract or notary certified copy thereof;
- Deed of assignment signed by the assignor and by the assignee.
- Power of attorney signed by the assignee.
Time: 2,5-3 months.
Where the change in ownership results from merger, succession, operation of law or a court decision
- Certified copy of a document evidencing the change;
- Power of attorney signed by the new owner.
Time: 2-3 months.
Office requires furnishing of translation into Ukrainian of contract or other documents evidencing change in ownership;
Recordal of change in ownership is mandatory.
What documents and time are required for recordal of a license?
- One of the following:
a) Original license agreement;
b) Notary certified extract from license agreement containing
- name and address of the licensor;
- name and address of the licensee;
- registration number of the mark;
- goods and/or services for which the license is granted;
- kind of license (exclusive license, non-exclusive license, or sole license);
- where applicable, that the license concerns only the part of the territory covered by the registration, together with an explicit indication of that part of the territory;
- time duration of the license;
- quality control clauses;
- where applicable, the clauses concerning the right of the licensee to grant sub-licenses.
- Power of attorney signed by the licensor or by the licensee;
Time: 2,5-3 months.
Office requires furnishing of translation into Ukrainian of license agreement or extract of it.
Recordal of license is not mandatory.
What amendments in a license can be recorded?
Amendments concerning:
- name and address of the licensor;
- name and address of the licensee
- goods and/or services for which the license is granted;
- kind of license;
- territory;
- time duration;
Amendments can be recorded only in a registered license.
Request for recordal of amendment concerning extension of time duration must be filed not later then 2 months before expiration of license agreement.
What must be done to overcome provisional refusal of protection concerning international registration of a mark?
Within 3 months from the refusal date (Date á laquelle le refuse a été prononcé) a response to refusal must be filed. To file response we need only power of attorney (original). It may be submitted later.
What main official fees must be paid?
Fees are defined in hryvna (UAH) – official currency of Ukraine. Registration fee for non-residents is defined in USD. Main fees are presented in the table below. Fees in USD presented in the column three of the table (excluding registration fee), are defined approximately at the rate: 28 UAH = 1 USD.
| Item | UAH | USD |
| Filing fee
a) in one class b) in each further class c) additionally when the mark in colour |
3200 3200 800 |
114 114 29 |
| Publication fee
a) for one class b) for each further class c) additionally when the mark in colour |
600 600 200 |
21 21 7 |
| Registration fee | 200 | |
| Renewal fee
a) in one class b) in each further class |
12000 1200 |
429 43 |
Other official fees and our professional fees are presented in our Schedule of fees which we will send to you on request to mog@innotec.ua
