REPUBLIC OF UKRAINE "On the Protection of Rights in Trade and Service Marks" With changes and additions introduced by the Law of Ukraine
of June 16, 1999 No. 751-XIV The present Law regulates relations arising in connection with receiving and use of the property right to trade and service marks (hereinafter referred to as the "marks") in Ukraine. TABLE OF CONTENTS Chapter I GENERAL PROVISIONS Art. 1.Definitions Art. 2.Office Art. 3. International Agreements Art. 4. Rights of Foreign and Other Persons Chapter II LEGAL PROTECTION OF MARKS Art. 5. Conditions for Provision of Legal Protection Art. 6. Grounds for Refusal to Provide Legal Protection Chapter III PROCEDURE OF OBTAINING OF A CERTIFICATE Art. 7. Application Art. 8. Filing Date of Application Art. 9. Priority Art. 10. Examination of Application Art. 11. Revocation of Application Art. 12. Publication on Issue of a Certificate Art. 13. Registration of Mark Art. 14. Issue of Certificate Art. 15. Appeal against the Decision on Application Chapter IV RIGHTS AND OBLIGATIONS DERIVING FROM THE CERTIFICATE Art. 16. Rights Deriving from Certificate Art. 17. Obligations Deriving from Certificate Chapter V TERMINATION AND INVALIDATION OF CERTIFICATE Art. 18. Termination of Certificate Art. 19. Invalidation of Certificate Chapter VI PROTECTION OF RIGHTS Art. 20. Infringement of Rights of the Owner of Certificate Art. 21. Judicial Disputes Art. 22. Right of Re-registration Chapter VII FINAL PROVISIONS Art. 23. Fees Art. 24. Registration of Mark in Foreign States Chapter I GENERAL PROVISIONS Definitions Art. 1. For the purposes of the present Law the below-mentioned is used in the following meaning: Office - State Committee of Ukraine on Intellectual Property (Derzhpatent Ukrainy - State Patent Office of Ukraine); person - natural or legal person; mark - designation, by which goods and services of one person differ from other persons' goods and services of the same kind; certificate - certificate of Ukraine for a trade and service mark; registered mark - mark, for which a certificate is issued; application - set of documents necessary for issue of a certificate; applicant - person, which filed an application; priority of application (priority) - precedence in filing of application; priority date - filing date of application to the Office or to the appropriate authority of member state of the Paris Ñonvention for the Protection of Industrial Property, which priority is claimed; register - State Register of the Certificates of Ukraine for Trade and Service Marks. Office Art. 2. 1. The Office ensures implementation of the state policy in the sphere of legal protection of marks in Ukraine, admits applications for consideration, conducts examination and state registration of marks, publishes official information, issues certificates, as well as executes other duties according to the "Regulations on the State Committee of Ukraine on Intellectual Property" that are approved by the Cabinet of Ministers of Ukraine. 2. On a contractual basis the Office can render services concerning information and documentation to any person in accordance with the procedure established by the Office. 3. Financing of the Office's activities is conducted at the expense of the state budget funds. International Agreements Art. 3. 1. If any international agreement of Ukraine establishes other rules than those stipulated by the legislation of Ukraine on marks, the rules of the international agreement are applied. Rights of Foreign and Other Persons Art. 4. 1. Foreign persons and stateless persons have equal rights with the persons of Ukraine stipulated by the present Law according to international agreements of Ukraine or on the basis of reciprocity principle. 2. Foreign and other persons, which reside or have constant residence outside of the borders of Ukraine, realize their rights in relations with the Office through representatives registered according to the "Regulations on Intellectual Property Representatives" that are approved by the Cabinet of Ministers of Ukraine. Chapter II LEGAL PROTECTION OF MARKS Conditions for Provision of Legal Protection Art. 5. 1. Legal protection is provided to a mark that is not contrary to public interests, principles of humanity and morals, and to which the grounds for refusal of provision of legal protection, established by the present Law, are not applied. 2. Verbal, graphic, three-dimensional and other designations or combinations thereof made in any color or combination of colors can be the object of a mark. 3. The property right to the mark is authenticated by a certificate. The duration of certificate is 10 years from the filing date of application to the Office, and is renewed by the Office each time for 10 years through the petition of the owner of certificate filed during the last year of the duration of certificate. The procedure of renewal of a certificate is established by the Office.The duration of certificate is terminated ahead of schedule under the conditions set forth in Article 18 of the present Law. 4. The extent of provided legal protection is defined by the depiction of mark and list of goods and services indicated in a certificate. 5. Any person, association of persons or their assignees have the right to obtain a certificate in the order established by the present Law. 6. The right to obtain a certificate has an applicant, whose application has the earlier filing date, or, if a priority is claimed, the earlier date of priority, provided that indicated application is not considered revoked, and is neither revoked nor refused. Grounds for Refusal to Provide Legal Protection Art. 6. 1. According to the present Law, the legal protection can not be provided to designations, which represent: state emblems, flags and emblems; official names of the states; emblems, abbreviated or full names of international inter-governmental organizations; official countermarks, guarantee marks, and marks of assay, seals; awards and other insignia. Such designations can be included in a mark as unprotected elements by the consent of the appropriate competent authority or their owners. 2. According to the present Law, the legal protection can not be provided either to designations, which: lack the distinctiveness;
are commonly used as designations of goods and services of a certain kind;
indicate kind, quality, quantity, characteristics, function, value of goods and services, as well as place and time of production or sale of goods, or rendering of services;
are deceptive or delusive with regard to the goods and services or persons producing the goods or granting services;
are well-known symbols and terms.
The designations indicated in Paragraphs 2, 3, 4, 6 of this item can be included in a mark as unprotected elements, if they don't occupy the predominant position in depiction of a mark. 3. The designations can not be registered as marks, if they are identical or confusingly similar to: marks earlier registered or filed for registration in Ukraine in the name of other person for goods and services of the same kind;
marks of other persons, if these marks are protected without registration on the basis of international agreements, whose party is Ukraine;
trade names known in Ukraine, whose owners are other persons, which had gained the right to them before the filing date of application to the Office for goods and services of the same kind;
names of places of origin, except for cases, if they are included in a mark as unprotected elements and registered in the name of persons, which have the right to use such names;
certification marks registered in accordance with established procedure. 4. According to the present Law, can not be registered as a mark such designation, which was used bona fide before January 1, 1992 by two or more legal persons for designation of goods of the same kind. (Article 6 is complemented by Item 4 according to the Law of Ukraine of 16.06.99 No. 751-XIV, in connection with this Item 4 should be considered as Item 5.) 5. The designations are not registered as marks, if they imitate: industrial designs, rights to which are owned by other persons in Ukraine;
titles of known in Ukraine scientific, literary and art works or quotations and characters from them, art works and fragments from them without consent of the copyright owners or their assignees;
surnames, names, pseudonyms and derivatives thereof, portraits and facsimile of the persons known in Ukraine without their consent. Chapter III PROCEDURE OF OBTAINING OF A CERTIFICATE Application Art. 7. 1. Any person wishing to obtain a certificate files an application to the Office. 2. On the instructions of applicant the application can be filed through the intellectual property representative or other authorized person. 3. The application should be applied to one mark. 4. The application should be executed in Ukrainian and should comprise: request for registration of a mark;
depiction of filed designation;
list of goods and services, for which the applicant requests to register a mark, grouped according to the International Classification of Goods and Services for the Purposes of Trademark Registration. 5. It is necessary to indicate an applicant (applicants) and its address in request for registration of a mark. 6. If an applicant requests protection of color or combination of colors as a distinctive sign of the mark, it is obliged: to declare this and indicate in request the color or combination of colors, whose protection it requests;
to file the color depictions of indicated mark in the application. The amount of copies of such depictions is established by the Office. 7. Other requirements to the documents of application are defined by the Office. 8. The fee is collected for the filing of application. The document on payment of the fee should be received by the Office together with the application or within two months from the filing date of application. Filing Date of Application Art. 8. 1. The filing date of application is a date of receiving of materials by the Office, which comprise at least: request in optional form for registration of a mark set forth in Ukrainian;
information on the applicant and its address set forth in Ukrainian;
part, which outwardly resembles the designation that could be a mark;
information on the list of goods or services, for which the mark is filed. 2. If the Office considers that at the moment of receiving the materials of application don't meet the requirements of Item 1 of this article, it informs an applicant about this. Two months from the date of receiving of the Office's notice by the applicant are given for alteration of materials. If inadequacy will be eliminated within this term, the filing date of application will be a date of receiving of altered materials by the Office. Otherwise an application is considered not filed, and the notice about this is sent to the applicant. 3. The Office sends to the applicant a decision on definition of the filing date of application after receiving of the document on payment of application fee according to Item 8 of Article 7 of the present Law. In case of failure to meet the requirements of Item 8 of Article 7 of the present Law the indicated decision is not sent, and an application is considered revoked. Priority Art. 9. 1. The applicant has right of priority of the precedent application for the same mark within six months from the filing date of the precedent application to the Office or to the appropriate authority of member state of the Paris Convention for the Protection of Industrial Property, if the priority was not claimed for the precedent application. 2. The priority of a mark, which had been used in the exhibit demonstrated at the official or officially recognized international exhibitions conducted on the territory of member state of the Paris Convention for the Protection of Industrial Property, can be defined by the date of opening of the exhibition, if an application was received by the Office within six months from the stated date. 3. The applicant wishing to take advantage of the right of priority, within three months from the date of application to the Office files a request on priority with reference to the filing date and number of the precedent application, and its copy with Ukrainian translation or document confirming demonstration of the stated mark at the exhibition, if these application or demonstration were respectively filed or conducted in member state of the Paris Convention for the Protection of Industrial Property. The stated materials can be altered within the limits of this term. If these materials are filed untimely, the right of priority of the application is considered lost, and the notice about this is sent to the applicant. Examination of Application Art. 10. 1. The examination of application is made by the Office according to the present Law and rules established on the basis hereof. 2. The applicant has the right to participate personally or through the representative, on its own initiative or by the invitation of the Office, in consideration of issues, which have arisen during examination. The procedure of participation of the applicant or its representative in consideration of the stated questions is defined by the Office. 3. The applicant has the right to amend and clarify the application on its own initiative. The amendments and clarifications are not taken into account, if they have been received by the Office after the date of receiving by the applicant of the decision on registration of a mark or refusal of the application. 4. If the applicant presents additional materials, it is found out during examination, whether they go beyond the scope of the substance of designation and the list of goods and services indicated in the filed application.
The additional materials go beyond the scope of the substance of designation indicated in the filed application, if they comprise the signs that should be included in designation, which is filed as a mark.
Additional materials in the part, which goes beyond the scope of the substance of designation or supplements the list of goods and services indicated in the filed application, are not taken into account during consideration of the application and can be executed by the applicant as an independent application. 5. After definition of the filing date of application and in the presence of document on payment of the application fee, the Office examines application according to the formal signs: application is examined for compliance with requirements of Article 7 of the present Law;
document on payment of the application fee is examined for compliance with the established requirements. 6. If the application does not comply with the requirements of Article 7 of the present Law or document on payment of the application fee - with the established requirements, the Office notifies the applicant about this. Two months from the date of receiving of the Office's notice by the applicant are given for alteration of materials. If inadequacies were not eliminated within this term and the applicant did not file the motivated petition for its continuation, the Office should send to the applicant the decision on refusal of the application. 7. If the application complies with the requirements of Article 7 of the present Law and the document on payment of the application fee is executed correctly, the Office conducts examination of the application according to its substance, during which the compliance of the filed designation with conditions of provision of legal protection is examined. 8. During examination of the application according to its substance the Office has the right to demand additional materials from the applicant, without which the examination is impossible. The applicant has the right within a month from the date of receiving of the Office's demand to request the copies of materials, which are opposed to the application, from the Office.
The additional materials should be presented by the applicant within two months from the date of receiving of demand or copies of materials, which are opposed to the application.
If the applicant doesn't file the materials demanded by the Office or motivated petition for extension of term at a stated time, the application is considered revoked. 9. The procedure defined by Item 4 of this article is applied to the additional materials in the part, which goes beyond the scope of the substance of designation indicated in the filed application. 10. If examination of the application according to its substance defines that the designation comply with conditions of provision of legal protection, the Office sends to the applicant the decision on registration of a mark. Otherwise, the decision on refusal of the application is sent to the applicant. 11. The applicant has the right to learn all materials indicated in the demand or decision of the Office. The Office sends within a month the copies of materials requested by the applicant. 12. The periods stipulated by this article (except for those defined in Item 8) missed by the applicant can be resumed by the Office in the presence of the reasonable excuses. The petition for resumption of period should be received by the Office within six months from the date of expiry of the missed period. Revocation of Application Art. 11. The applicant has the right to revoke an application at any time till the date of receiving of the decision on registration of a mark. Publication on Issue of a Certificate Art. 12. 1. By virtue of the decision on registration of a mark and in the presence of the document on payment of fee for issue of a certificate the Office publishes information, which is defined by the Office, on issue of a certificate in its official gazette. If within three months from the date of receiving of the decision on issue of a certificate by the applicant the Office have not received the document on payment of fee for issue of a certificate, the information is not published and the application is considered revoked. 2. After publication of information on issue of a certificate any person has the right to learn the materials of application in the order defined by the Office. Registration of Mark Art. 13. 1. Simultaneously with the publication of information on issue of a certificate the Office conducts the state registration of a mark by entering the appropriate information into the Register. The form of the Register and proñedure of its keeping are determined by the Office. 2. After entering of information into the Register any person has the right to learn this information in the order determined by the Office. Issue of Certificate Art. 14. 1. The issue of a certificate is executed by the Office within a month after the state registration of a mark. The certificate is issued to the person, which has the right to receive it. If several persons have the right to receive a certificate, they will receive one certificate. 2. The form of certificate and contents of information indicated therein are defined by the Office. 3. The Office corrects obvious mistakes in the issued certificate on demand of its owner with the subsequent announcement in the official gazette. Appeal against the Decision on Application Art. 15. The applicant can appeal against any decision of the Office on application in the Appellate Council of the Office (hereinafter referred to as the "Appellate Council") within three months from the date of receiving of the Office's decision or copies of the demanded materials. The objection against the Office's decision on application should be considered by the Appellate Council within four months from the date of its receiving within the limits of motives set forth in objection. The applicant can judicially appeal against any decision of the Appellate Council within six months from the date of receiving of the decision. Chapter IV RIGHTS AND OBLIGATIONS DERIVING FROM THE CERTIFICATE Rights Deriving from Certificate Art. 16. 1. The rights deriving from a certificate are effective from the filing date of application under the condition of payment of the appropriate fee. 2. The certificate gives its owner an exclusive right to use and to dispose of the mark at its own discretion. Mutual relations during the use of a mark, certificate for which is owned by the several persons, are defined by agreement among them. Failing such agreement, each owner of the certificate can use and dispose of the mark at its own discretion but none of them has the right to give a permission (to grant a license) to use a mark or to assign the property right to a mark to other person without the consent of other owners of a certificate. The use of a mark shall be constituted by its application on goods and upon rendering services, for which it has been registered, on the packaging of goods, in advertising, in printed matter, on signboards upon showing of exhibits at the exhibitions and fairs held in Ukraine, in prospectuses, in invoices, in balances and in other documentation related to introduction of the mentioned goods and services into economic turnover. 3. A certificate gives its owner the right to prohibit the other persons to use the registered mark without its permission except for cases, if the use of a mark is not considered as infringement of the rights of the owner of a certificate according to the present Law. Bona fide use of the designation by other persons, which had started before January 1, 1992, is not considered an infringement of rights of the owner of a certificate, obtained before coming into effect of Item 4 of Article 6 of the present Law. (Item 3 of Article 16 is complemented by the second paragraph according to the law of Ukraine of 16.06.99 No. 751-XIV) 4. On the basis of an agreement the owner of a certificate can assign the property right to a mark to any person, which becomes the assignee of the owner of a certificate. The assignment of property right to a mark is not permitted, if it can result in deception of the consumer with regard to goods and services or a person producing the goods or granting services. 5. The owner of a certificate has the right to give a permission (to grant a license) to any person to use of a mark on the basis of the license agreement. The license agreement should contain a condition that the quality of goods and services produced or rendered under the license agreement should not be lower than the quality of goods and services of the owner of a certificate, and that the latter should control the execution of this condition. 6. The agreement on assignment of property right to a mark and the license agreement are considered valid, if they are executed in writing and signed by the parties. The mentioned agreements become effective with regard to any other person only after their registration in The Office. 7. The owner of a certificate has the right to apply near the mark a precautionary marking, which indicates that this mark is registered in Ukraine. 8. The owner of a certificate, which is engaged in agency activities, on the basis of an agreement with manufacturer of goods or person, which renders services, has the right to use its own mark near the mark of the mentioned persons as well as instead of their mark. Obligations Deriving from Certificate Art. 17. The owner of a certificate is obliged to use bona fide the exclusive right deriving from the certificate. If a mark is not used in Ukraine or is used insufficiently within a period of three years from the date of publication of the information on issue of a certificate or the date of stopping of use of a certificate, any person may request a court (arbitration court) to prematurely terminate the effect of the certificate. When deciding this matter, a court (arbitration court) can take into account the evidence presented by the owner of a certificate that the mark was not used for the reasons independent of the owner. Chapter V TERMINATION AND INVALIDATION OF CERTIFICATE Termination of Certificate Art. 18. 1. The owner of a certificate can at any time renounce it entirely or partially on the basis of request submitted to the Office. The indicated renouncement becomes effective from the date of publication of information about it in the official gazette of the Office. 2. A certificate is terminated in case of default of payment of the fee for renewal of its duration. The document on payment of the fee for each renewal of duration of a certificate should be received by the Office till the end of the current period of duration of a certificate under the condition of payment of the fee within two last months of that period. The fee for renewal of duration of a certificate can be paid and the document on its payment can be received by the Office within six months after the specified period. In this case the amount of the mentioned fee is increased by 50 per cent. A certificate is terminated since the first day of the period of duration, for which the fee is not paid. 3. A certificate is terminated according to the court (arbitration court) decision because of the transformation of a mark into designation, which became commonly used as a designation of goods and services of certain kind after the filing date of application. Invalidation of Certificate Art. 19. 1. A certificate can be invalidated entirely or partially in case of:
inadequacy of a registered mark to the conditions of provision of legal protection;
presence in a certificate of elements of depiction of a mark and list of goods and services, which were absent in the filed application. 2. Any person can file an objection to issue of a certificate to the Appellate Council within six months from the date of publication of information on issue of a certificate. The objection should be considered by the Appellate Council within six months from the date of its receiving. The owner of a certificate should be acquainted with the objection. The Appellate Council considers objection within the limits of motives set forth therein. A person, which filed objection, as well as the owner of a certificate can participate in consideration of the objection. The decision of Appellate Council can be appealed judicially. If the objection to issue of a certificate had not been received by the Appellate Council at a stated time, the certificate can be invalidated only judicially. An invalidated certificate or any part thereof are considered invalid from the filing date of application. Chapter VI PROTECTION OF RIGHTS Infringement of Rights of the Owner of Certificate Art. 20. 1. Any invasion on the rights of the owner of a certificate stipulated by Article 16 of the present Law is considered as infringement of rights of the owner of a certificate, which results in responsibility according to the current legislation of Ukraine. 2. On demand of the owner of a certificate such infringement should be stopped, and the infringer is obliged to indemnify the owner of a certificate for losses. The owner of a certificate can also demand the removal of the illegally used confusingly similar mark or designation from goods and their packaging or elimination of the produced depictions of confusingly similar mark or designation. The person, which acquired the license, can demand the restoration of infringed rights of the owner of a certificate as well, if other is not stipulated by the license agreement. Judicial Disputes Art. 21. 1. The disputes related to application of the present Law, are decided by court, arbitration or reference tribunal in the order established by the current legislation of Ukraine. 2. The courts according to their competency consider the disputes concerning: definition of the owner of a certificate;
conclusion and execution of the license agreements;
infringement of the property rights of the owner of a certificate.
The courts also consider other disputes related to the protection of rights given by the present Law. Right of Re-registration Art. 22. Nobody else except of the former owner of a certificate has the right of re-registration of a mark within three years after expiry of a certificate according to Article 18 of the present Law. Chapter VII FINAL PROVISIONS Fees Art. 23. The fees are paid for filing and issue of the certificate, renewal of its duration, etc. The list of fees, their amounts, term and order of payment are defined by the Cabinet of Ministers of Ukraine. The funds received from fees and for rendered services are used by the Office for development of the state system of intellectual property protection. The Office publishes annual reports on expenditure of the mentioned funds. Registration of Mark in Foreign States Art. 24. 1. Any person has the right to register a mark in foreign states. 2. During registration of a mark in foreign states the application is filed through the Office according to the Madrid Agreement on International Registration of Marks . 3. The applicant or other person by consent of the applicant bears the expenses concerned with the registration of a mark in foreign states. President of Ukraine L. KRAVCHUK
Kyiv, December 15, 1993 No. 3689-XII | 
