Ukrainian IP System & Most Topical Issues of Trademark Protection in Ukraine

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1 Ministry of Economic Development and Trade of Ukraine Ukrainian IP System & Most Topical Issues of Trademark Protection in Ukraine Vilnius, 30 November,

2 1 Reform of IP State Administration System MEDT Appellate Chamber GOALS NIPO Ukrpatent National IP Authority of Ukraine Changes to the laws/ DCFTA Implementation Single Window for patent s granting European practice Effectiveness Transparency Effectiveness Privatization (changing ownership) High standard of Governance UACRR To be reorganized to proper NG&NPO under authors management Transparency increasing Destruction of corruption

3 Action plan of the GoU Institutional changes Two-tier system of public management of the intellectual property sphere Approximation of the national IP legislation with EU standards EU-Ukraine Agreement of Association Chapter 9 IPR New CMO System Transparency, accountability and good governance

4 2 IPR Legislation Reform EU-Ukraine Association Agreement Chapter 9 - Trademarks, Industrial Designs, Geographical Indications, Topographies of semiconductor products, Inventions, Copy Right and Related Rights Draft Laws on Amendments to Certain Legislative Acts on protection of: Inventions and utility models Trademarks Industrial design Submitted to the Parliament Geographic indications Topographies of semiconductor products Law on effective collective management of copyright and related rights adopted

5 3 Treaty membership WIPO IP Protection Treaties (Paris C., Berne C, Rome C, PLT, WCT, WPPT, TLT etc.) Global Protection System (PCT, Madrid Agreement and Protocol, Hague Agreement, Budapest Agreement) Classification (Locarno, Nice, Strasbourg, Viena Agreements) WTO TRIPS Agreement

6 4 Acts regulating trademark protection Civil Code of Ukraine The Law of Ukraine On the Protection of Rights to Marks for Goods and Services Association UA-EU Agreement

7 5 Well-known trademarks There are 2 ways of recognition of the sign as a well-known: Appellation Chamber of MEDT Court Defined procedure and evidence basis Short terms If there was an infringement a party shall initiate a court procedure to protect their rights Evidence base is not defined No unified approach in solving such cases If there was an infringement, cases can be solved in one process

8 6 What can be protected as a trademark in Ukr aine Word marks Depicting in the form of graphic compositions of any shapes Figurative marks/logos Colours and their combination Three-dimensional trademarks Combinations of the above-mentioned symbols Sound trademarks etc!? No requirement on graphical representation a mark can be registered if there is a technical possibility of putting it into the Register and publication of information regarding it s registration is it true!?

9 No requirement on graphical representation According to Examination Guidelines application for registration of following marks will not be excepted: Hologram, motion, position, smell/olfactory, taste, tactile marks Reason: the lack of legal regulation of the procedure for the preparation and conducting of examination of applications for such signs, as well as the lack of appropriate technical possibilities for the registration and disclosure of information on the specified non-traditional types of signs.

10 7 Can not be registered: A mark which contradicts with public order, morality and humanity principles; The names or the pseudonyms of persons holding communist leadership positions, the higher authorities of the USSR, the Ukrainian SSR (USSR), other Union or autonomous Soviet republics (except for cases related to the development of Ukrainian science and culture), names related to the activities of the Communist Party, the establishment of Soviet power on territory of Ukraine or in separate administrativeterritorial units, persecution of fighters for Ukrainian independence in the XX century; State symbols (emblems), official names of states, emblems, abbreviated or full names of international intergovernmental organizations, official control, warranty and sample marks, seals, awards and other honors; Other restrictions prescribed by Art. 6 of the Law of Ukraine On the Protection of Rights to Marks for Goods and Services.

11 8 Registration 1. The application is filed directly to Ukrpatent Foreign person/entities act only via professional representative (patent attorney) 2. Determination of the filing date and publication of application 3. Formal examination 4.Examination by substance 5. Filing objections to the application in respect to the unconformity of the sign (not later than 5 days prior to the date of making a decision on the application) 6. Decision on the application Appellation to Appellate Chamber on MEDT s decision on rejection for registration 2 months after the decision is received by an applicant. Requirements, documents samples and registration procedure details:

12 9 Conflicts Trademark v. Geographical Indication Trademark v. Industrial Design

13 10 IP Protection at Court General Court (Civil) Commercial Court Administrative Court General Court (Criminal) IP Supreme Court (the last steps of establishment) UDRP Procedure (accept for.ua domains)

14 11 Revocation of a Trademark Art. 18 of the Law of Ukraine On the Protection of Rights to Marks for Goods and Services If a mark is not used in Ukraine fully or with respect to a part of goods and services listed in the certificate within three years from the date of publishing the information on granting the certificate or from other date after the publication, any person has the right to appeal to the court with a declaration for fully or partially revocation (pre-term termination) of the certificate. Article 198 of UA-EU Association Agreement The Parties shall provide that a trade-mark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the relevant territory in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

15 12 Main Draft Laws Provisions 1. Defined term of non-use for revocation of trademarks. 2. Extended requirements and restrictions. 3. Post-grant oppositions for industrial designs. 4. Electronic applications. 5. Detailed procedure and requirements for collective trademarks.

16 Thank you for your attention! Anastasia Homeniuk Chief Specialist Department for Intellectual Property Ministry of Economic Development and Trade of Ukraine cell: +380 (67)