There are two ways for recognizing the mark as well-known:
1. by the Chamber of Appeal of Ministry for Development of Economy, Trade and Agriculture;
2. by a Court.
The better and easier way is to recognize the mark as well-known by the Chamber of Appeal, and very rare trademark owners decide to pick up option with a court.
According to Ukrainian law, as well-known can be recognized:
– signs that have received legal protection on the territory of Ukraine as signs for goods and services;
– signs that have legal protection on the basis of the international registration in the territory of Ukraine;
– not registered signs.
Factors that impact well-known:
– degree of recognition of the trademark in some sector of the market;
– duration, volume and geographical area of any use of the sign;
– duration, scope and geographical area of any promotion of the sign, including advertising or publicity, and presentation on fairs or exhibitions of the goods and/or services in respect of which the sign applied;
– duration and geographical area of any registrations and/or applications for registration of a mark provided that the mark is used or is recognized;
– evidence of successful protection of rights to the mark, in particular, the territory in which the mark is recognized as well known by the competent authorities bodies;
– the value associated with the sign.
The procedure of the recognition of the mark as well-known by Chamber of Appeal of Ministry of Economy of Ukraine.
The applicant, in addition to filing the application and paying the fee, must provide the following evidence to support the existence of factors that may affect the recognition of the mark as well-known.
The intensity of using of the mark can be confirmed by information about:
– volume of sales of goods and/or services to which the mark applies;
– list of regions of Ukraine indicating the settlements where such goods and/or services were sold;
– average number of consumers of goods and/or services at the date specified in the application;
– range of consumers and their specificity depending on the nature of the goods and/or services;
– position of the manufacturer on the market in the relevant sector of the economy;
– volume of export (import) of goods to which the mark is applied;
– value of the mark according to the annual financial statements (the method of mark evaluation is determined by its owner).
The duration of the use of the sign may be confirmed by the date on which the sign was used and the continuity of use of the sign.
Advertising of the sign may be confirmed by the following information:
– ways of advertising branded products in various media, including the Internet;
– the number of consumers of such advertising;
– advertising costs, including financial documents (reports) on advertising costs.
List of documents required for the recognition of the mark as well known:
1. POS-materials;
2. History of a company, brand, mark;
3. Information about the sale of products from the early years, the range of implementation, the implementation of territory, sales volumes for the year and country. Information on export/import and the method of transportation;
4. Certificates for domains, domain list, number of website visitors (from the first period);
5. Number of employees, if possible by years (this as an argument to confirm the value of the mark);
6. Sponsorship of festivals, marathons, competitions;
7. International exhibitions;
8. Social surveys and/or research;
9. Promotions and other activities carried out by dealers and shops;
10. Advertising, video clips. Information about people/companies who produced videos and on what terms;
11. Letters of acknowledgment, diplomas, including for employees;
12. List of goods for the recognition of well-known;
13. Information on advertising expenditure (from the early years).
14. Advertising signs (it will desirable to provide the court with the photos if any);
15. Image (word or combined);
16. Information on factories where produce the goods. Documents confirming manufacturing, the contract for processing of raw materials with annexes (if any);
17. Volumes of production from the earliest date (the date of commencement of production) monthly prices;
18. The range of goods from the earliest date by years;
19. Quality certificates, other permits;
20. If we can calculate the value of the mark;
21. Information on the manufacturers of packaging for the goods. If there are any contracts, orders, layouts and other supporting documents, please provide;
22. Agreement for the development of product design;
23. Information on export/import;
24. Information on the disputes, claims, lawsuits;
25. Photos of show windows, shops;
26. Circle of customers (from ___ to ___ years);
27. Market research products;
28. Branded Stores;
29. List of registrations (trademarks, industrial designs, etc.);
The recognition of a mark in a particular circle of consumers can be confirmed by the results of a survey on the good reputation of a mark in Ukraine, conducted by a research organization specializing in the field of sociological or marketing research. The cost of such research depends on the type of goods/services.
If the mark is already recognized as well-known in other countries, the applicant may be informed of the decisions taken by the competent authorities of those countries.
If the mark is used in other countries, in particular those with long-standing economic and trade relations with Ukraine, the applicant may be provided with information on the fact of such mark using.
The applicant may also be provided with other information which, in his opinion, indicates the good reputation of his mark in Ukraine in relation to the goods and/or services produced and/or provided by him.
How the recognition is conducted by the Chamber of Appeal
The Board of the Chamber of Appeal, appointed within 10 days of the date of receipt of the application.
The application is considered in two stages.
At the preliminary examination stage, the board decides whether to accept the application for consideration. In order to comply with all requirements, applications are accepted for consideration.
During the review, the board directly examines the evidence, hears the explanation of the application, the expert’s opinion. The decision is made by a majority vote of all members of the college.
In general, it takes 2-4 months between submitting application and receiving decision.
The decision can be appealed in court. The benefit of recognizing a mark well-known in the is a uniform procedure. The disadvantage is the possibility of appeal.
The costs
The official fee for recognizing by the Chamber of Appeal is 24 000 UAH.
Professional fee depends on many factors and the scope of preparational work should be done. The most expensive part is sociological survey, if necessary.
Benefits of the well-known status:
1. The legal protection covers not only goods and services the mark is registered for, but also for heterogeneous ones.
2. The mark protected as well-known receives the protection not from the date of the decision, but from the date the applicant requested.
3. The well-known trademark has permanent validity.
Consequences of well-known status:
1. Decrease in the distinctiveness of the trademark.
2. Increasing the risk of deterioration of the company’s reputation through the use of the sign by the infringers as to the goods of bad quality.
3. Well-known trademarks are in the risk group of being more infringed, therefore require a higher level of protection.
If you have any additional questions as to recognition trademark as well-know in Ukraine, please contact us info@craneip.com