The mark for goods and services registered in the territory of Ukraine or registered under Madrid Agreement on international registration of trademarks, as well as a non-registered trademark acquired general notoriety among the relevant circles of consumers as a result of its active use can be recognized as a well-known trademark.

The authorized agency for acknowledgement of the trademark as well-known is the Board of Appeal of State IP Service or the Court.

The regulatory act under which the mark is recognized as well-known is the Article 6 bis of the Paris Convention for the Protection of Industrial Property and the Law of Ukraine “On protection of Rights to Marks for Goods and Services”.

Application for recognition of the trademark as well-known

The basis for recognition of the trademark as well-known is the Application filed by an interested individual or juridical person.

The official fee for filing the Application for recognition trademark as a well-known is 500 USD.

Information confirming the well-knownness of the trademark

  • the degree of the reputation and recognition of a mark in the relevant sector of consumers;
  • the duration, volume, or geographical area of any use of the mark;
  • the duration, volume, or geographical area of any propagation of the mark, including advertising, offering to public, and display at exhibitions of goods and/or services with respect to which the mark is used;
  • the duration, volume, or geographical area of any mark registration and/or applications for the registration of the mark, provided that the mark is used or recognized;
  • evidences of the successful protection of rights to the mark, in particular the territory where the mark is recognized as a well-known mark by authorized organizations;
  • the value associated with the mark.

Stages of Examination of Application

The Examination of the Application consists of the preliminary procedure and the session.

Preliminary procedure

The Application and the attachments are registered and checked for compliance with the requirements
for the Application and the attachments. In case of the Application’s compliance with the established requirements, the Applicant is notified on the acceptance of the Application for the Examination within 10 days from the date of the Board’s session.

In case of non-compliance of the Application with the requirements the Boards provisionally refuse acceptance of the Application. The Applicant has to rectify defects within one month from the date of receipt of the notification.

Session

After the preliminary procedure the date and time of session are appointed. The notification on inviting for the session is sent to the Applicant not later than 15 days before the date of session.

In case of nonappearance of the Applicant in the session he/she is obliged to inform the Board on the reasons of such nonappearance.

Upon the petition of the Applicant the session can be rescheduled. The conduction a session is possible in the absence of the Applicant on the basis of case papers.

Decision of a Board of Appeal

The trademark can’t be recognized by the Board of Appeal to be well-known in Ukraine if the Board has found the documents submitted by the Applicant to be not sufficient to confirm the well-knownness of the trade mark as of the application date.

The decision shall be approved by the majority of members of the Board.

Recordal in the State Register of well-known trademarks in Ukraine

Information about the trademark, recognized as well-known, shall be recorded in the State register of well-known trademarks in Ukraine of the State Intellectual Property Service.

Publication of the information about the well-known trademark

Information about a trademark that was recognized to be well-known upon the decision of the Board of Appeal is published in the official Bulletin “Industrial Property’.

Appeal of the decision of the Board of Appeal

The decision of the Board of Appeal on recognition of the trademark as well-known in Ukraine can be appealed in court.