Intellectual Property Law Update: Trademarks.

Intellectual Property Law Update: Trademarks.

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Intellectual Property Law Update

As you know, on August 16, 2020, the Law of Ukraine “On Amendments to Certain Legislative Acts of Ukraine on Strengthening the Protection and Enforcement of Rights to Trademarks and Industrial Designs and Combating Patent Abuse” (the “Law”) came into force, amending, in particular, the Law of Ukraine “On Protection of Rights to Trademarks and Service Marks”.

The list of these changes is quite extensive, so we focus on some key changes that will help you understand the essence of the changes and develop ways to protect your intellectual capital.

  • Finally, the law provides for the possibility of submitting documents for registration of intellectual property rights in electronic format. This form (as opposed to the paper form, which is not yet canceled) reduces the amount of application fees by 20%, which is important in the context of the rather high fees that are currently in force. DEXTRA LAW’s patent lawyers already have all the capabilities to file applications in electronic format.
  • The terms of publication in publicly available sources of information on trademark applications filed with the Trademark Office have been reduced as much as possible (within five days after the filing date).
  • It is now possible to file an opposition to an application within three months after its publication in the bulletin. Moreover, not only the owner whose rights, in his opinion, have been violated, but also any interested person may file an opposition.

This practice takes place in many countries and is called the “opposition period”, during which (in this case, within the specified three months) no examination of applications is carried out. And any opposition received during this period will certainly be taken into account during the further examination of the application for the conflicting TM.

At the same time, the person who filed such an objection will still receive a response (decision) based on the results of consideration of such an objection from the Institution. Such a response (decision) may be appealed to the Appeals Chamber (a body of the Institution), i.e., in a pre-trial procedure.

An effective tool for protecting the applicant from possible oppositions is to conduct a preliminary information search on the TMs already registered in Ukraine. Of course, DEXTRA LAW specialists will help in conducting such a search and, importantly, analyzing the results obtained regarding the identity or similarity of the identified analogues with the designation chosen for registration as a TM.

  • From now on, additional grounds for refusing to grant legal protection to the claimed designations, which are identical or similar to the extent that they can be confused, in particular, as of the date of filing the application or, if priority is claimed, as of the date of priority, are enshrined in the law:
    • commercial names known in Ukraine and owned by other persons who obtained the right to them before the date of filing an application with the Institution for the same or related goods and services;
    • trademarks used by another person in a foreign country, if the application is filed on its own behalf by an agent or representative of such person within the meaning of Article 6 septies of the Paris Convention without the permission of such person and there is no evidence to justify such filing, if such person objects.

There have been many cases of such abuses by agents/representatives of foreign companies doing business in Ukraine, which caused problems and loud and unnecessary disputes for the proper right holders. For example, when they moved their goods across the customs border of Ukraine, labeled with trademarks registered (unexpectedly for them!) in the names of other persons in Ukraine.

This innovation is fully consolidated with the relevant provision of the Paris Convention for the Protection of Industrial Property, which Ukraine joined in 1991, and ensures the fulfillment of Ukraine’s obligations in the field of European integration in terms of harmonizing the requirements of the current legislation on the protection of rights to trademarks and industrial designs with the law of the European Union.

The latest changes in this regard also provide for the possibility for a foreign person to file an opposition to the Trademark Office against the granting of protection to such trademarks. And in case of its registration, a foreign person may demand that the certificate for such trademark be invalidated or that the rights to such trademark be forcibly transferred to it and that the certificate holder reimburse such person for losses.

  • It is also important to introduce the possibility for the applicant of a TM identical or similar to a TM previously registered in the name of another person to submit a letter of consent from that person for the registration of such TM.

By the way, the right to provide such a letter of consent, with certain reservations, is now also legally recognized in cases where the applied-for TM is similar or identical to other protected objects of rights of other persons, such as industrial designs, trade names, qualified indications of the origin of goods, etc.

However, the likelihood of obtaining such consent is highly doubtful, but in each case it will certainly depend on the success of negotiations between the owner of the previously registered rights and the applicant for the identical TM.

  • The term during which no one other than the former owner of the certificate is entitled to re-register the trademark has been changed – now it is within two years (instead of the previous three) after the certificate is terminated.

The legislatively introduced exception to this rule is also positive: re-registration is possible before the expiration of this period if the owner of the certificate whose validity has been terminated agrees to re-register the trademark in the name of another person.

  • The period of continuous non-use of a trademark as a ground for early termination of a certificate by a court decision has been extended from three years to five years. The term starts from the date of publication of information on the issuance of the certificate. The five-year term is in line with the provisions of the Association Agreement between Ukraine and the European Union, the European Atomic Energy Community and their Member States.

This allows its holder to start producing goods (searching for sponsors, production facilities, etc.) or organizing the provision of services for which it was registered in a timely manner.

Summarizing the innovations, we can say the following: the implementation of effective procedures for the protection of intellectual property rights in Ukrainian legislation is a correct and timely decision, especially in the period of international trade and e-commerce development. Of course, there will be questions and difficulties, but a professional approach will ensure maximum efficiency of trademark ownership.

Tetiana Lomakovska

Intellectual property advisor

DEXTRA law&finance firm, Patent Attorney

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