On July 21, 2020, the Ukrainian parliament adopted a law on amending some legislative acts to strengthen the protection of rights to trademarks and industrial designs and to combat patent trolling.
The document improves the process of registration and protection of trademarks in accordance with the norms established in the EU.
Among other things, the novelties are:
– the possibility of office procedures and the issuance of certificates in electronic form;
– among the reasons for refusal to register is indicated misleading about the geographical origin of the good/service, and the content of information about the geographical indication or the use of the reputation of the geographical indication;
– it is possible to register TM using a geographical indication as a collective trademark;
– refusal to register a TM, if the same trademark is used abroad and there is no evidence of consent to registration in Ukraine or objections are filed from the foreign right holder. The fact of unfair registration also can be appealed after the registration of TM in Ukraine;
– in case legal dispute, affected party may demand compensation for losses, including by way of a one-time payment in the amount of 10 to 50 thousand minimum wages (for today: 47 thousand – 236 million UAH);
– there is a clear deadline for filing objections to TM registration from third parties – 3 months from the date of publication of the application information in the official Bulletin;
– the conditions for fair use of the trademark without the permission of the right holder are specified:
– the right to appeal TM registration certificate on the basis of non-use comes after 5 years, and not after 3 years, as before.
The law implements the requirements of the Ukraine-EU Association Agreement into Ukrainian legislation, as well as the provisions of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.