Trademark cancellation procedure in Ukraine.

Registered trademark could be invalidated in Ukraine

only by the court.

Invalidation Non-use cancellation

TrademarksUkrainianUnder Madrid

55532

41338

Industrial design 3 -

Invention 4 -

Utility model 18 -

Lawsuits to courtIn 2013 Ukrainian courts proceed 209 cases involving enforcement of IP rights

Plaintiff

It could be any interested person.

Firma Handlowa Raveka (Poland) VS Firshtein Gmbh (Germany)

Plaintiff - German natural personDefendant - Polish legal entity -Firma Handlowa Raveka

Trademark Certificate of Ukraine № 43797

Trademark - MOLOTOWGoods paints; varnishes; dyes; anti corrosive substances; mordantClaims - cancellation of certificateGrounds - non-use

Firma Handlowa Raveka (Poland) VS Firshtein Gmbh (Germany)

Position of plaintiff:- plaintiff is founder of Firshtein Gmbh - Firshtein Gmbh marked and use MOLOTOW - plaintiff is owner of trademark certificate 995602

Mark MOLOTOWGoods Paints, lacquers, particular with regard to aerosol cans and

to writing and drawing instruments, including bitumen varnish, paints, colorants, varnishes, primers, thinners, pigments, distemper.

Plaintiff received provisional refusal in Ukraine based on prior registration of defendant trademark.

Defendants in invalidation procedure are

Patent office of Ukraine (state service of IP)

Person who registered a trademark.

Court procedures

Procedure - 5-7 months.

Appellation process could last for 3-4 month.

Pay attention

The trademark could be invalidated during the entire time of its validity.

Trademark certificate could be invalidated as for all goods or services, as for only part of them.

In Ukraine we have special institute - court experts

What they do?- examine a sign - make conclusion concerning misleading,

lack of distinctiveness or other ground of cancellation.

What if you don't agree with this conclusion? -make a request for additional expertise.

Invalidation of TM certificate

According to article 19 of trademark law, trademark certificate could be invalidated in next cases:

- sign does not meet fulfillment registration requirements. It is the most common type of grounds;

- if trademark certificate consists of sign or list of goods of services that were not filled in application;

- if certificate was issued with infringement rights of third persons.

The sign could not be registered if:

- there are proprietary rights, such as an earlier conflicting registration or application

- the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;

- the mark is not distinctive;- the mark is misleading, deceptive or

disparaging;- the mark is functional;

- breach of copyright;- registered design rights;- rights in a personal name;- the mark is generic, i.e., the mark

consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

- the mark consists of a geographical indication;

- the mark is against public policy or principles of morality

As Ukraine is member of Paris Convention, trademark could not registered when infringed rights

under Article 6 bis of the Paris Convention (well-known mark);

rights under Article 6 ter of the Paris Convention (protection of armorial bearings, flags and other State emblems);

rights under Article 6 septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);

rights under Article 8 of the Paris Convention (trade names);

Functional character and lack distinctiveness

Landrin VS Raffaello

Expertises

Landrin VS Raffaello

First expert decision - ‘trademark is creative, alternative, not determined only be characteristics of good and constituted the exclusive combination of the form, color, contour, design, which made this trademark distinctive.’

Second expertise decision ‘trademark is not distinctive on the base that there was nothing unique in the round form of candy and light color dressing which covers the candy and that this representation of candy are common for different candy manufactures including the territory of Soviet Union.’

The final decision was issued in favor of company «Landrin». The trademark was recognized as devoid of distinctiveness.

Darnitsa VS Pharmac

Darnitsa filed a lawsuit for trademark cancellation. Grounds:

1) lack of distinctiveness.2) generic name3) trademark certificate consists of sign or list of goods

of services that were not filled in application

Plaintiff:- many people know Corvalolum as name for type of

drugs;- in many directories, guides, references books it is used

as generic name;- plaintiff filed an application to Rospatent and Rospatent

refused the ground that it is generic name;- Kyiv vitamin manufacturer in 1994 and Naturpreparat

in 1998 filed an application for the same trademark, but received refusal because of prior rights of Pharmak;

- - application was filed for one list, but in the Certificate is another list of goods.

Defendant:- about lack of distinctiveness: facts that this

trademark is in many references books means only that this trademark is well-known;

- previously in Soviet Union for during 40 years only one manufacture produced drug with this trademark;

- he registered this trademark in other countries;- concerning argument that trademark certificate

consists of sign or list of goods of services that were not filled in application he said that he has a right to amend a trademark application;

Court position:- refuse in trademark cancellation;- ‘in provided materials court understood only that Corvalolum is very famous and used

only as a trademark, but not generic name’- ‘court analyze materials and agreed with the defendants arguments that Corvalolum is

name created by workers of Kyiv Lomonosov manufacture (Pharmak is its assignor). Legend was the next: at first it was CARDIVALOL, but then they changed syllables and created Corvalolum’

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