In one of our previous newsletters, we described sweeping amendments to the Ukrainian Trade Mark Law, including the new trade mark opposition procedure. The amendments took effect on 16 August 2020 (Effective Date). Since an appreciable number of trade mark applications (≈19k) has been filed before the Effective Date, the transitional provisions of the adopted Law are also aimed at regulating their further examination by the IP Office (IPO). However, despite the transitional provisions, the IPO has an absolutely different view on applying the amended Trade Mark Law in terms of the opposition deadline for those trade mark applications the filing dates for which have been established before the Effective Date.
Transitional provisions in brief
When it comes to the trade mark applications for which formal examination has been completed by the Effective Date, the transitional provisions of the Law expressly stipulate that such trade mark applications should further be examined in accordance with the Law, save for the procedure for publication of bibliographic data on trade mark applications, as stipulated by the Law.
However, there is far less certainty when it comes to those trade mark applications for which no formal examination has been completed at the Effective Date. According to the transitional provisions of the Law, such trade mark applications should be examined in accordance with the Law and no relevant exemption has been made. Consequently, it was expected that bibliographic data on such trade mark applications should also be published in the official IP bulletin.
However, the IPO’s practice seems to differ from what is prescribed by the transitional provisions.
Implementation and interpretation by the IP Office
On 31 August, the IP Office announced that all trade mark applications the filing dates for which are established after the Effective Date will be published at https://sis.ukrpatent.org/uk/bulletin/. Starting from 18 August, the IPO adds daily a new folder for applications filed on such date, which contains bibliographic data of trade mark applications. By way of illustration, the folder named “18.08.2020” contains only trade mark applications for which the filing dates have been established on 18 August 2020. The IPO follows the same approach to later date folders. A non-extendable three months opposition deadline is applicable to all trade mark applications published.
When it comes to those trade mark applications for which the filing dates have been established before the Effective Date (Earlier Applications) and despite the transitional provisions described above, the IPO holds the view that ALL such applications can be opposed by an interested party during the entire examination period but no later than 5 days before the IPO’s final decision on its registrability (Long Opposition Deadline). In this regard, the IPO holds that provisions of Article 10 of the revised Trade Mark Law prevail the transitional provisions and for this reason publishes only the trade mark applications for which the filing dates were and will be established after the Effective Date (i.e. after 16 August 2020).
As the IPO does not suggest a comprehensive interpretation of the laws nor address clear bottlenecks, it may trigger the situation when an interested party would argue that the opposition deadline is missed, even when due to the IPO’s omission/unofficial position. On a larger scale, it may also give grounds for challenging the IPO’s decisions on a particular trade mark application. We have requested written explanations from the IPO and will share its response with our readers when we receive it.
Further actions for affected rights holders
Considering the above interpretation and approach by the IPO, in case a rights holder considers opposing one of the Earlier Applications, it is advisable, as a matter of precaution, to file the opposition within three months from the Effective Date, i.e. by 16 November 2020.
In case any Earlier Application is discovered after 16 November 2020, it is advisable to file the opposition within three months from the discovery date.
Though with some risks, but as a last resort the affected rights holder can also rely on the Long Opposition Deadline.
For further information, please contact Oleg Klymchuk (firstname.lastname@example.org).
Information contained in this newsletter is for general information purposes only, does not constitute legal or other professional advice, and should not be relied upon as a substitute for specific professional advice tailored to particular circumstances.
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