The present Article provides the description and specific features of the procedure of cancelation of the registered trademarks on the ground of non-use in Ukraine, as well as highlights the practical aspects of the consideration of the non-use cases by Courts, which the professionals of the IPR Group learned through the years of extensive practice.
According to the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”, in case trademark is not used in Ukraine fully or with respect to a part of goods and/or services listed in the certificate within three years from the date of publishing the information on granting the certificate or from the other date after the publication, any person has the right to revert to the court with a declaration for fully or partially pre-term termination of the certificate validity.
It also should be mentioned that on September 01, 2017, the EU-Ukraine Association Agreement comes into full force in Ukraine. According to the Article 197 of the Association Agreement, if, within five years from the date of completion of the registration procedure, the owner has not put a trademark to genuine use in connection with the goods or services in respect of which it is registered in the relevant territory, or if such use has been suspended during an uninterrupted period of five years, the trade-mark shall be subject to the sanctions provided for in this Sub-section, unless there are proper reasons for non-use.
Therefore, the national legislation determines the non-use period other than the one specified in the Association Agreement. With the aim to bring the national legislation in compliance with the Association Agreement, the Ministry of Economic Development and Trade of Ukraine prepared the draft Law of Ukraine “On Amendments to the certain legislative acts of Ukraine regarding the improvement of legal protection of the intellectual property” (registration number № 5699 dated 23.01.2017), which prescribes that the registered trademark could be canceled in Ukraine in case of non-use within the five years period. Currently, the subject Law is under consideration by the Supreme Council of Ukraine.
There are several situations, when the third party may need to apply for a cancelation of the registered trademark on the ground of non-use. Most commonly, the cancelation action is filed because the registered trademark causes an obstacle to registration of the third party’s trademark. The non-use cancelation is also the way to defend from bad faith trademarks (trademarks which are registered with the aim to prevent the registration of the trademark by the real owner).
Therefore, if three years (further five years, after the adoption of the Law of Ukraine “On Amendments to the certain legislative acts of Ukraine regarding the improvement of legal protection of the intellectual property”) from the date of publishing the information on granting the certificate or from the other date after the publication expired, third party may request the pre-term termination of the certificate validity. The trademark is cancelled on the ground of non-use in Ukraine through court proceeding.
In case of filing the non-use cancelation lawsuit, the plaintiff should provide the following documents:
It also should be noted that, in case of filing the cancelation lawsuit on the ground of non-use, the plaintiff should justify the violation of his rights, for instance provide a copy of the refusal decision, confirming that the trademark, which is the subject to the non-use cancelation, causes an obstacle for registration of any of the plaintiff’s marks in Ukraine.
The outcome of non-use cancellation proceeding depends on the evidences of use the defendant would be able to provide. We would like to note that the evidences of use are not required by the trademark owner at the time of filing the application for the trademark or at the time of renewal. Only, if the third party filed the lawsuit with the aim to cancel the trademark due to the non-use, the owner of the mark will be required to provide relevant evidences.
However, along with filing the lawsuit, the plaintiff should also provide its own argumentation in favor of non-use of the mark, which is the subject of the cancelation. For this purpose, the appropriate requests as to the use of the mark should be filed to the government and non-government authorities in Ukraine.
The list of authorities, to which requests could be filed, depends on the class of goods and/or services, for which the trademark is registered. For example, if the trademark is registered for pharmaceuticals of 05 class of the Nice classification, the following requests could be submitted:
– request to the Ministry of Health of Ukraine, in order to find out whether the medicinal product under the subject trademark has been registered in Ukraine;
– request to the UPTO in order to reveal whether any license agreement was registered for the subject mark in Ukraine. However, it should be noted that the state registration of license agreements is not compulsory in Ukraine;
– request to the Association of Article Numbering “GS1 Ukraine”, in order to reveal whether any barcodes were assigned to the goods under the subject mark;
– request to the Ministry of Economic Development and Trade of Ukraine with the aim to check whether any Certificates of Conformity were issued for the goods under the subject mark, etc.
In some circumstances, there may be a justifiable reason why the mark cannot be used. For example, if the mark is to be used in relation to a pharmaceutical product and approval for the pharmaceutical has been sought in good time from the appropriate regulatory authority, but has not yet been granted, this may be accepted as a valid reason for non-use. However if product bearing the mark simply was not available on the market, this would not be a valid reason.
According to the Ukrainian Law “On the Protection of Rights to Marks for Goods and Services”, the following shall be considered to be the use of a mark:
– applying the mark on any goods for which the mark is registered, the package containing the goods, the signboard connected with the goods, a label, tab, tag or another item attached to the goods;
– storing such a goods with the mentioned application of the mark for the following offering for selling;
– offering the goods for selling, selling, import (coming-in) and export (coming-out);
– using the mark while offering or rendering any service for which the mark is registered;
– using the mark in business documentation or in advertising, and in the Internet network, including the use of the mark in domain names.
A trademark should be used in the form it was registered. However, use of a trademark with alterations is allowed, as long as these alterations do not influence its distinctive character.
The use of a third party’s trademark with the consent of its proprietor, as well as use of a collective trademark by someone, who has this right, is also considered to constitute genuine use of the trademark. Thus, the use of the trademark by a licensee or distributor shall be sufficient for proving the use of the mark.
An important issue, as to the process of cancellation of trademark on ground of non-use in Ukraine, is the assignment of rights for the trademark, which is the subject to the cancelation, from one person to another. The Ukrainian Law “On the Protection of Rights to Marks for Goods and Services” determines that if the trademark is not used within 3-year period (further 5-year period) from the publication date or from any other date after such publication, the mark is vulnerable to non-use cancelation.
There is no direct reference in the above-mentioned Law to the fact that the recordal of assignment for the trademark should be considered as the use of the mark. Therefore, the assignment of rights for the mark means no use of the trademark and the new owner had to check by himself whether trademark is in risk of cancellation on the ground of non-use or not.
However, in our practice of court representation of clients, there was a case on cancelation of the mark on the ground of non-use, which took place in the Court of the first instance, further in the Appeal Court and the High Specialized Court of Ukraine, which showed that judges might have different points of view as to the matter of assignment of rights for the trademark.
The Wolvering Outdoors Inc. filed the lawsuit for partial cancelation of TM MERREL M Certificate № 46089 in 2015 in Ukraine, due to the non-use of the mark (date of publication of the mark – 17.01.2005). The Court of the 1st instance, as well as the Appeal Court, resolved that the subject trademark should be partially cancelled, since there was no prove of its use from publication date, in spite of the fact that the rights on the trademark were assigned in 2013.
However, the High Specialized Court of Ukraine later resolved that since the information about assignment of rights was published in 2013, therefore, the 3-year period should be counted from this year and not from the date of publication (17.01.2005), resuming that the new owner shouldn’t be responsible for non-use of trademark by previous holder, while the cancelation lawsuit was filed in 2015 (only two years from the date of recordal of assignment of rights).
The High Specialized Court of Ukraine resolved to cancel the decision of the Appeal Court and again forwarded the case for consideration to the Court of the 1st instance. The 1st instance Court issued the decision based on the conclusion of the High Specialized Court, according to which the 3-year grace period should be counted from the date of recordal of the assignment of the rights for the trademark.
The subject decision was further contested in the Appeal Court, which didn’t agree with the position of the High Specialized Court and resolved to partially canceled TM MERREL M Certificate № 46089 in Ukraine on the ground of non-use, in spite of the fact of assignment of right for the subject mark
In our opinion, the decision, issued by the High Specialized Court of Ukraine, for this particular case, is contrary to the law and court practice. Moreover, it provides the possibilities for manipulation of this provision of the Law by the trademark owners and leads to impossibility of cancellation of the mark on the ground of non-use. Therefore, the recordal of assignment for the trademark should not be considered as the use of the mark.
The analysis of court practice showed that the assignment of rights for the mark should be considered as a sort of management of the rights to the mark, but not the use of the mark.
The initial purpose of registering a trademark by the person in the good faith is to protect the trademark in respect of goods and/or services for which the trademark is used or going to be used. However, it should be noted that keeping a trademark secure is not only a matter of registering and renewing the mark, it is also a matter of fair use of the mark with the aim to avoid the risk of non-use cancelation of the mark and timely launch the goods/services under the mark into the market.
We hope that provided overview of the trademark non-use cancellation system in Ukraine, as well as the specific features of the judicial practice of courts, will help IP practitioners and individual/corporate applicants to deal with non-use cancellation cases forcefully, thus protect the rights for the trademarks more effectively.
© 2018 All rights reserved.
Mrs. Alyona Chernoknyzhnaya,
Trademark Counsel for the IPR GROUP
Alyona became a part of the IPR Group in December of 2013 and has since been advising clients on a wide range of trademark-related issues, prepared hundreds of trademark applications, renewal petitions, drafted oppositions, numerous responses to office actions, handling ownership changes with regards to trademarks, as well as advising on trademark infringement matters in all countries of the CIS region. Alyona also has an expertise in drafting and recordal of assignment and license agreements.
As Trademark Counsel of IPR GROUP, Alyona provides advice and assistance to clients in various aspects of trademark and copyright law. Her expertise includes also fighting on infringements of IP rights on the Internet and of domain names caused by the use of trademark or manufacturer’s website content without prior consent.