Recent changes to the Ukrainian Trademark Law establish largely anticipated novelties and instruments aimed at improving the enforcement of trademark rights.<\/p>\n
On August 16, 2020, the Law of Ukraine “On Amendments to Certain Laws of Ukraine Concerning Strengthening of Protection of Rights to Trademarks and Industrial Designs and Combating Patent Trolling” (“Law<\/strong>“) became effective and introduced new grounds for refusal of registration, new rules for opposition procedure and other significant refinements.<\/p>\n Trademark owners should prepare for new opposition deadlines and consider new enforcement instruments.<\/p>\n Key takeaways<\/strong><\/p>\n The Law introduces a number of important changes, including:<\/p>\n New Absolute Grounds for Refusal<\/strong><\/p>\n The Law enlarges the list of objects that shall not be registered by adding the signs:<\/p>\n Collective Trademarks<\/strong><\/p>\n An association or other similar organization may now register collective trademarks<\/strong> which may be used by its members to distinguish their goods and services from those of non-members. In addition to standard requirements for trademark applications, a collective trademark application should also contain a list of entities <\/strong>allowed to use such trademark and document setting out terms of its use<\/strong>.<\/p>\n E-Prosecution<\/strong><\/p>\n Possibility of e-prosecution<\/strong>, including e-filing, is now also fixed at the legislative level.<\/p>\n Recognition of Letters of Consent<\/strong><\/p>\n Consent of an owner of an earlier registered trademark is now recognized by the Law as a sufficient argument <\/strong>for overcoming relative grounds for refusal of trademark registration. Yet, such consent may be disregarded if there is a potential risk of consumers confusion.<\/p>\n New Opposition Rules<\/strong><\/p>\n The most important change introduced by the Law is significant amendments to opposition procedure, namely:<\/p>\n It is expected that the above new rules would apply only to trademark applications filed after the Law’s entering into force. However, further official clarifications are awaited to confirm such position.<\/p>\n Extended Non-Use Period<\/strong><\/p>\n The Law eliminates the discrepancy between the old version of the Ukrainian Trademark Law and EU-Ukraine Association Agreement in respect of the duration of non-use period eligible for respective registration cancellation action. A continuous five-year period <\/strong>is now a unified standard in Ukraine.<\/p>\n Limitation to Right of Re-Registration<\/strong><\/p>\n The period when the trademark owner may exercise its exclusive right of re-registration of trademark is shortened to two years<\/strong> after termination of respective certificate. However, other persons may register such trademark before the end of this period, provided that the owner of terminated certificate consents to such registration.<\/p>\n New Trademark Invalidation Ground<\/strong><\/p>\n Owners of foreign trademark registrations may bring an action against their agents or representatives who registered same trademarks in Ukraine without proper authorization (acting in bad faith<\/strong>). One of the two options may be requested in court:<\/p>\n Contacts<\/strong><\/p>\n Ruslan Drobyazko<\/a><\/strong>\u00a0\n
\n
\n
\nPartner Baker McKenzie<\/p>\n