The Supreme Court of Ukraine confirmed that non-use of a registered trademark for five years without valid reasons may lead to early termination of the trademark certificate. The case concerned a claim brought by DANJAQ, LLC against the owner of a combined trademark and the Ukrainian IP Office. The claimant argued that the disputed sign had not been used for a long period in relation to services in Nice Classes 35 and 45, for which it had been registered.
The defendant objected to the claim and stated that the trademark had been used through websites, business correspondence and other communications. He also argued that further business activity became impossible because of Russia’s military aggression and the occupation of Mariupol. However, the lower courts concluded that the defendant had not proved genuine use of the mark for the specific services for which protection had been granted. The Supreme Court agreed with these conclusions.
The Court emphasised that a trademark should not exist merely as a formal entry in the register or as a tool for blocking other market participants. If a mark is not used in Ukraine continuously for five years, a person with a legitimate interest may request early termination of its protection. Such an interest may arise, for example, where a person intends to register a similar or identical sign but is blocked by an earlier registered mark that is no longer active in practice.
The judgment is important for brand-protection practice because it again confirms that a trademark owner must not only register the sign, but also genuinely use it in commercial activity. The burden of proving use lies with the owner of the certificate. The use must relate to the specific goods or services for which protection was granted. Formal actions, such as registering a domain name, creating a website or exchanging correspondence without proof of actual provision of services, are not sufficient evidence.
The Supreme Court also noted that martial law or force majeure is not automatically a valid reason for non-use of a trademark. Such circumstances must be assessed together with other evidence. For businesses, this means that simply registering a trademark and keeping it in the register is not enough. If a mark is not used, other applicants may have a chance to clear the market of such “dead” registrations.