Changes to Ukrainian trademark law and practice announced

Ukraine

A number of changes to Ukrainian trademark law and practice are likely to occur in the near future. The Ministry of Ukraine is currently considering changes to the official fees charged for trademark registrations. New rules giving the Appeal Board of the Ukrainian Patent Office the authority to grant certain marks with well-known trademark status have also been announced.

The proposals under consideration by the Ministry of Ukraine include the following:

  • Official registration fees will be charged in euros.

  • The fee for registration of a mark in one international class will be in the region of €300, further registrations in additional classes will attract a fee of €150 for each class.

  • Registration of a mark in colour will attract an additional fee of €100.

  • There will be increased fees for applications in multiple names.

  • Applications filed electronically will benefit from a 10% reduction in the fee.

Another development in Ukrainian trademark law is the announcement that the Appeal Board of the Ukrainian Patent Office now has the authority to grant certain marks with well-known trademark status under the Rules of Recognizing Trademarks as Well-Known Signs in Ukraine. The rules were developed in accordance with Article 6bis of the Paris Convention for the Protection of Industrial Property.

Applicants wishing to secure well-known status for their marks will have to submit an application with supporting evidence to the Appeal Board. Applications must contain:

  • the applicant's name and address;

  • the grounds for recognizing the trademark as well-known;

  • the date from which the trademark became famous in Ukraine in the applicant's opinion; and

  • details of the current level of protection afforded to the mark in Ukraine.

Evidence submitted with the application should include:

  • a graphic representation of the mark;

  • proof of the mark's fame in Ukraine;

  • a Ukrainian trademark search report;

  • relevant extracts from the State Trademark Register; and

  • a document indicating payment of the official fee.

Appeal Board decisions can be appealed to the courts.

Tetyana Glukhovska, Konnov & Sozanovsky, Kiev

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