Recognition of well-known trademarks in Ukraine

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

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 a trademark as well-known

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

Information confirming the well-knownness of a trademark

These include documents which can confirm:

• The degree of the reputation and recognition of a mark among 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, promotions to the public, and display at exhibitions of goods and/or services of the applied mark;
• The duration, volume, or geographical area of 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 the Application

The Examination of the Application consists of a preliminary procedure followed by a session.

Preliminary procedure

The Application and attachments are registered and checked for compliance with the requirements for the Application.

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 ten (10) days from the date of the Board’s session.

In case of non-compliance of the Application with the requirements, the Board provisionally refuses acceptance of the Application. The Applicant has to rectify defects within one (1) month from the date of receipt of this notification.

Session

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

In case of non-appearance of the Applicant at the session, he/she is obliged to inform the Board on the reasons for such non-appearance.

Upon the petition of the Applicant the session can be rescheduled. It is possible to conduct the session in the absence of the applicant, on the basis of case papers.

Decision of a Board of Appeal

The trademark cannot 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 insufficient in confirming 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 on the trademark being 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 on the well-known trademark

Information on the trademark which has been recognized as 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 a trademark as well-known in Ukraine can be appealed in court.