Major changes to the Ukrainian IP laws. Part 1 – Trade marks (general)

Major changes to the Ukrainian IP laws. Part 1 – Trade marks (general)

On 21 July 2020, the Ukrainian Parliament adopted the law (Law) introducing significant changes – both procedural and substantive – to the Ukrainian trade mark and design laws in order to further implement the intellectual property provisions of the EU-Ukrainian Association Agreement. In this first newsletter, we look at the main changes concerning the trade marks. This newsletter describes only part of the changes to the trade mark laws, which, based on our experience of handling trade marks related cases, we consider to be the most relevant.

Transitional period

Under a general rule stipulated by the Law, the new regulations for trade marks are in effect the next day after the official publication of the Law (i.e. as of 16 August 2020) (Effective Date). All trade mark laws and regulations which are not yet amended to comply with the Law shall remain in effect in the part that does not contradict the Law. The relevant trade mark laws and regulations are expected to be aligned with the Law within six months as of the Effective Date.

The examination of those trade mark applications in relation to which no formal examination has been completed at the Effective Date shall be conducted as the Law now stipulates. The only exception is the grounds of refusal. In particular, the Ukrainian IP Office (IPO) shall apply grounds of refusal which have been in effect at the date of filing a trade mark application.

The examination of those trade mark applications in relation to which formal examination has been completed at the Effective Date shall be conducted as the Law stipulates except for the procedure of publication of bibliographic data on trade mark applications as stipulated by the Law. When it comes to the grounds of refusal, expectedly, the IPO shall apply those grounds which have been in effect at the filing date.

Revised absolute and relative grounds of non-registrability for marks

Based on the Law, several absolute grounds of refusal have been revised:

Before the Law, a mark is not registrable if, among others, it: NOW, a mark is not registrable if, among others, it:
consists of only the designations of general meaning featuring goods and services of a certain kind

 

consists of only the designations which are of general meaning in modern language or fair and established trade practice concerning the goods and services

 

 consists of only the designations or information which are descriptive in respect of or in connection with goods and services claimed namely refers to a type, quality, composition, quantity, features, purpose, value of goods and services, place and time of production or sale the goods or services

 

consists of only the designations or information which are descriptive in respect of or in connection with goods and services claimed, describe the type, quality, composition, quantity, features, intended purpose, value of goods and services, geographical origin, place and time of production or sale of goods or provision of services, or other characteristics of goods and services

 

 is misleading or could mislead concerning product, service or person that manufactures the product or provides the service  can mislead concerning goods or services, in particular, concerning their characteristics, quality or geographical origin

 

could mislead concerning a person that manufactures a product or provides a service

Moreover, absolute grounds are supplemented with the following two new grounds:

  • reproduce the name of a plant variety registered or applied for registration in Ukraine or which is protected in Ukraine under international treaties before the date of filing a trade mark application that contains such name, and provided that the filed trade mark concerns the plant variety of identical or similar type.
  • contains geographical indications (including for spirits and alcoholic beverages), registered or applied for registration in Ukraine or which are protected in Ukraine under international treaties before the date of filing a trade mark application or before the Paris convention priority (if claimed), for identical or similar goods, provided that reputation of geographical origin is used during the trade mark use and/or the claimed mark misleads with respect particular quality, characteristics, or true origin for the goods.

Finally, the list of the relative grounds of refusal has been revised mostly to align local trade mark laws with Articles 6bis (well-known marks) and 6septies (registration in the name of the agent or representative of the proprietor) of the Paris Convention for the Protection of Industrial Property.

Letters of consent are becoming more important than ever before

The IPO has always been skeptical about letters of consent from the owner of the conflicting trade marks and other rights arguing that such letters do not resolve the conflict. Based on the changes introduced by the Law, it appears that letters of consent will have more weight in the trade mark examination process.

New paragraph 6 of Article 6 of the Trade Mark Law stipulates that in case there are qualifying relative grounds of refusal, further trade mark registration is possible if (a) owner of the prior trade mark or other rights consents to the registration; and (b) provided that consumers are not deceived.

Moreover, based on the restated version of Article 22 of the Trade Mark Law, letter of consent also can now work to neutralize the effect of the two-year priority right (grace period) for the owner of the withdrawn trade mark or trade mark which validity has expired due to unpaid renewal fee.

New trade mark application opposition procedure

A separate newsletter dedicated to the revised trade mark opposition procedure will be distributed within the next few days.

Collective trade marks

The amended Trade Mark Law now contains the definition of ‘collective trade mark’. According to the definition, any union of persons irrespective of their legal status and structure, which existence does not contradict the laws of the country where it has been incorporated, is generally eligible to be an applicant for the collective mark.

The amended trade mark law also clearly provides that regulation for use of collective mark must be added to the application for collective mark. No specific contents and formality requirements to the regulation for the use of collective mark are provided in the Law.

The application for the collective mark should also contain a list of persons which are authorized to use the trade mark. It is not clear yet how this regulation will be interpreted, i.e. whether it should be the list with specific names, or some general description of eligible trade mark users would suffice.

Recovery of statutory damages for trade mark infringement was so close but still impossible

The bill prepared for the second reading stipulated a long-awaited right to claim recovery of statutory damages for trade mark infringement. The amount of statutory damages was expected to range from 10 to 50,000 minimum statutory salaries (the current statutory minimum salary is UAH 4,723 that is about EUR 150). However, the adopted Law does not contain this provision but only a general right to claim recovery of damages if the trade mark registration has been invalidated due to the third party’s rights infringement.

 

For further information, please contact Oleg Klymchuk (oklymchuk@brandsfield.legal).

Information contained in this overview 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.