Language requirement for trademarks in advertising condemned

Business and legal circles in Ukraine have roundly condemned as "vague" and "unlawful" a new rule introduced by amendments to the Advertising Act. The amendments provide that all trademarks used in advertising in Ukraine must appear in the Ukrainian language.

Article 6 of the act provides:

"Registered trademarks and logos can be used in their original language. In such cases the foreign trademark must also be dubbed into Ukrainian. The trademarks and logos of Ukrainian companies can be used only in Ukrainian."

The new position runs contrary to Article 6quinquies of the Paris Convention for the Protection of Industrial Property. It further conflicts with the Ukrainian Trademark Act, which provides that any sign or combination of signs may be used as a trademark.

In addition, there is no definition of the terms 'logo' and 'dubbed' in the Advertising Act. Their exact meaning is thus unclear. Is there any difference between a logo and a trademark? In theory, a logo is a kind of trademark. Moreover, the term 'logo' is not a recognized legal term in Ukraine and no other act makes reference to it.

The term 'dubbed' is similarly unclear. Does it require that the trademark be translated or transliterated?

These omissions could cause serious problems for trademark owners, especially given that the financial penalties that will be imposed for violations of the Advertising Act are likely to be four to five times the cost of the relevant advertising.

Despite the criticism voiced against the provisions of Article 6, no suggested amendments to this article have yet been filed.

Tetyana Glukhovska, Konnov & Sozanovsky, Kiev