New Civil Code will introduce important changes to trademark rules

New rules on trademark registration and use will come into force when the new Civil Code of Ukraine takes effect on January 1 2004.

For the first time, the term 'international registration' will appear in Ukrainian legislation. According to Article 494 of the new Civil Code, international registration need not be validated by a certificate. Trademark owners will thus no longer need to prove that an international registration has the same legal effect in Ukraine as a trademark certificate. International registration is proved solely by publication in the World Intellectual Property Organization Official Bulletin.

The new Civil Code includes the following list of trademark rights holders:

• the holders of trademark certificates;
  
  
• the owners of internationally registered trademarks; and
  
  
• the owners of well-known marks acknowledged as such in accordance with established procedure. The specific procedure has not yet been set out in Ukrainian legislation, but it is hoped that the new rules will encourage the legislature to remedy this legal gap.

In addition, under Article 497 of the new Civil Code, licence holders have a new opportunity to obtain compensation from the licensor for the premature termination of property rights (i) at the initiative of the rights holder, or (ii) if a trademark becomes a commonly used sign for certain goods and services. In the latter case, compensation does not seem appropriate as it contradicts one of the major principles of civil law - an obligation to pay damages arises only in the event of guilt.

The most interesting innovation of the new code, however, is the right of prior use established in Article 500. This article provides that any person who used or prepared to use a trademark for which registration is sought before the date of submission of the application or the priority date, is entitled to continue using that mark. A prior right can be transferred to another person or company either with the whole business or the part of the business in relation to which the trademark was used. Previously, priority rights were determined on a first-to-file basis, irrespective of any prior use of the mark. However, the effects of this fundamental change will not be known until the new legislation takes effect.

Tetyana Glukhovska, Konnov & Sozanovsky, Kiev