Trademark your product name(s) in Ukraine
A trademark is highly valuable asset. Trademarking your product name(s) in Ukraine will give you a number of benefits including:
- Grants the exclusive rights to use, permit the use, and prohibit the use of the registered trademark.
- Discourage others from using similar trademark.
- Protects against registration of confusingly similar marks.
- Provides a basis / precondition for (i) registration of your trademark in other jurisdictions; (ii) recordation of your registered trademark with the Ukrainian Customs Registry of Intellectual property; and (iii) delegation of .ua level internet domain name.
- Justifies royalty payments, especially when it comes to cross-border royalty payments.
Register a trademark before entering the market
When starting business in Ukraine, it is not unusual for foreign companies to discover that a bad-faith owner has already registered or is in the process of registering their trademarks there. Brand owners are advised to do their homework – in this case, conduct a preliminary search for any similar trademarks - before entering the Ukrainian market.
File in time
Ukraine operates on a first come, first served basis for both trademarks and domain names. There are plenty of unfortunate examples where globally well-known brands have been a day or even several hours late in claiming priority for Ukraine or have neglected to register all local domains in their name. Such situations can be avoided by prioritising trademark rights protection right from the start.
Please consult with your lawyer or click on the following link to learn more about trademark registration in Ukraine as well as to calculate a preliminary budget.
Register your unregistered trademarks
Since there is no developed concept of unregistered trademark rights in Ukraine, it is essential to register your trademark under national or international procedure. Exploitation of an unregistered trademark also increases tax risks for relevant parties.
Protection of unregistered trademarks is generally possible in Ukraine in the following manner, but this usually means a more wasteful and costly trademark battle for the brand owner:
- Executing prior user right. Prior user right generally means that the owner of that right enjoys immunity against demands of the owner of the registered trademark to cease trademark use or obtain a license. In other words, the prior user is permitted to use the registered trademark as before the filing of a trademark application by the trademark owner.
- Using an unregistered trademark for the purpose of recognizing it as well-known in Ukraine by the Appeal Board of the Ukrainian IP Office or by a competent court. For more information, please click on the following link.
- Protecting an unregistered trademark against unfair competition practices. For example, Article 4 of the Law of Ukraine “On Protection against Unfair Competition” prohibits unfair competition practice in the form of the unlawful use of name, trade (commercial) name, trademark, advertising materials, packaging and other identifiers of another undertaking that had started using such or similar identifiers (designations) in its commercial activity earlier as well as such unlawful use has caused or could cause confusion.
Trademark your brand in Ukraine
A trademark is highly valuable asset. Trademarking your brand in Ukraine will give you a number of benefits including:
- Grants the exclusive rights to use, permit the use, and prohibit the use of the registered trademark.
- Discourage others from using similar trademark.
- Protects against registration of confusingly similar marks.
- Provides a basis / precondition for (i) registration of your trademark in other jurisdictions; (ii) recordation of your registered trademark with the Ukrainian Customs Registry of Intellectual property; and (iii) delegation of .ua level internet domain name.
- Justifies royalty payments, especially when it comes to cross-border royalty payments.
Register a trademark before entering the market
When starting business in Ukraine, it is not unusual for foreign companies to discover that a bad-faith owner has already registered or is in the process of registering their trademarks there. Brand owners are advised to do their homework – in this case, conduct a preliminary search for any similar trademarks - before entering the Ukrainian market.
File in time
Ukraine operates on a first come, first served basis for both trademarks and domain names. There are plenty of unfortunate examples where globally well-known brands have been a day or even several hours late in claiming priority for Ukraine or have neglected to register all local domains in their name. Such situations can be avoided by prioritising trademark rights protection right from the start.
Please consult with your lawyer or click on the following link to learn more about trademark registration in Ukraine as well as to calculate a preliminary budget.
Ensure enforceable IP / copyright assignment in relation to designed trademark / brand
Failure to ensure enforceable copyright assignment in the design of your trademark developed by an engaged independent contractor or employee may result in massive negative implications for the brand's legal bottom line and reputation. Where an independent contractor or employee from Ukraine was engaged by foreign entity / customer for designing the brand, it is essential to ensure compliance of intellectual property / copyright assignment language with the requirements of Ukrainian law.
Ensure enforceable IP / copyright assignment in relation to designed trademark / brand
Failure to ensure enforceable copyright assignment in the design of your trademark developed by an engaged independent contractor or employee may result in massive negative implications for the brand's legal bottom line and reputation. Where an independent contractor or employee from Ukraine was engaged by foreign entity / customer for designing the brand, it is essential to ensure compliance of intellectual property / copyright assignment language with the requirements of Ukrainian law.
Renew registration of your intellectual property with the Customs Registry
Expired records make your brand(s) more vulnerable to counterfeiting and imitations. Valid records discourage counterfeiters from importing or exporting counterfeited and imitated products as well as making penetrating such products into the Ukrainian market more costly and difficult.
Record relevant intellectual property with the Customs Registry
Use local instruments that are available to protect your intellectual property entering Ukraine. Bad-faith trademark owners and patent trolls are getting wise to this and registering trademarks and trade designs with Customs Registry, thus preventing genuine rights holders from importing their goods into the country. Simply recording your IP rights with Customs can result in reduction in counterfeiting and imitations.
Moreover, recording with the Customs Registry enables the producers of branded goods to better control grey / parallel import / export of their goods (e.g. detect unauthorized sales channels) and combat counterfeits.
Once your intellectual property has been recorded with the Customs Registry, it allows customs authorities to suspend customs clearance of suspicious goods along with immediate notification of representative(s) of the rights holder.
Please consult with your lawyer or refer to KEY DEFINITIONS AND FAQ here to learn more about protection of your brand on the border of Ukraine.
Only share information with a confidentiality agreement and file trademark application(s) first
When entering a new market or launching new products on the market, most companies involve third parties to promote them, which involves sharing sensitive data. Experience suggests that it is wise to have a confidentiality agreement in place first, in order to mitigate the risks of such disclosure - including for products being commercialised by third parties. This is especially pertinent, given that in terms of intellectual property, Ukraine is a first to file rather than a first to use jurisdiction. Any press release (whether it is released in Ukraine or abroad) about entering the Ukrainian market or launching a new product on the Ukrainian market should come after relevant trademark applications with respect to umbrella brand and/or product names are filed under national or international procedure.
Review and be ready to justify your reason for non-use of trademark
Your trademark is vulnerable to invalidation if it has not been used in Ukraine in the last five (5) consecutive years unless there is a justifiable reason for non-use of trademark.
The Ukrainian Trademark Law stipulates the following justifiable reasons for non-use of trademark:
- There are circumstances, which impede the use of trademark and are beyond the trademark owner's control, such as import restraints or requirements on the products and services imposed by effective laws.
- The possibility exists to mislead consumers with regard to the producer of goods or the service provider when the trademark is used by a claimant or another person with respect to goods and/or services in relation to which a non-use invalidation action is brought.
This list of justifiable reasons is not exhaustive and the brand owner is free to rely on other reasons. The mere failure to offer for sale goods and/or services for which the trademark is registered would unlikely to be a valid reason.
Start using your trademark in Ukraine
Your trademark is vulnerable to invalidation if it has not been used in Ukraine during five (5) consecutive years. It is important to start the use of your trademark in Ukraine before a trademark non-use invalidation action is brought to the court.
It is not sufficient to assert that a trademark has been used, produce a catalogue, provide a market research report, delivery notes, trademark license agreement, or even sample of products bearing the trademark. The availability of evidence of merchandising the trademarked goods (i.e. availability of trademarked goods in retail) seems to be determinative to Ukrainian courts (please click on the following link to learn more about two headline-making court cases).
Be careful with the use of your trademark in a form that differs from your registered trademark
Ukrainian Trademark Law stipulates that any trademark shall be used in a registered form and for goods and/or services for which it is registered.
Ukrainian Trademark Law also provides that the use of a trademark in a form differing in some elements which generally do not alter the distinctive character of the trademark in its registered form shall still constitute use of the registered trademark.
Legal assessment of whether the distinctive character has been altered will always be dependent on the facts of your case. Significant alteration of the distinctive character of the registered trademark makes your trademark vulnerable to non-use invalidation challenges by any interested person.
The use of your registered trademark in a form that significantly differs from its registered form does not constitute the use of your registered trademark and it may be a reason for a non-use invalidation action
Significant alteration of the distinctive character of the registered trademark makes your trademark vulnerable to a non-use invalidation challenge. A non-use invalidation action can be brought to the court by any interested person. A five (5) year period after significant alternation should elapse in order for the interested person to have a justifiable reason to initiate a non-use invalidation action.
Be careful with the use of your trademark in a form that differs from your registered trademark
Ukrainian Trademark Law stipulates that any trademark shall be used in a registered form and for goods and/or services for which it is registered.
Ukrainian Trademark Law also provides that the use of a trademark in a form differing in some elements which generally do not alter the distinctive character of the trademark in its registered form shall still constitute use of the registered trademark.
Legal assessment of whether the distinctive character has been altered will always be dependent on the facts of your case. Significant alteration of the distinctive character of the registered trademark makes your trademark vulnerable to non-use invalidation challenges by any interested person.
Look after and be a watchdog for your brand
Even if Ukraine is not a part of your current global / regional expansion strategy and you do not have an official presence in Ukraine, you may be surprised at the volume of intellectual property infringements you may face in Ukraine. It is prudent to trademark your brand in Ukraine to make sure that it is not grabbed by trademark squatters.
Please consult with your lawyer or click on the following link to learn more about trademark registration in Ukraine as well as to calculate a preliminary budget.
Look after and be a watchdog for your brand
Even if Ukraine is not a part of your current global / regional expansion strategy and you do not have an official presence in Ukraine, you may be surprised at the volume of intellectual property infringements you may face in Ukraine. It is prudent to trademark your brand in Ukraine to make sure that it is not grabbed by trademark squatters.
Please consult with your lawyer or click on the following link to learn more about trademark registration in Ukraine as well as to calculate a preliminary budget.
Look after and be a watchdog for your brand
Even if Ukraine is not a part of your current global / regional expansion strategy and you do not have an official presence in Ukraine, you may be surprised at the volume of intellectual property infringements you may face in Ukraine. It is prudent to trademark your brand in Ukraine to make sure that it is not grabbed by trademark squatters.
Please consult with your lawyer or click on the following link to learn more about trademark registration in Ukraine as well as to calculate a preliminary budget.
Your distributor / agent may not be your best IP counsellor
Although a company may believe that its non-affiliated distributor / agent is the only person it can trust locally and the best person to advise it on how to protect its intellectual property, past experience suggests that this is not the case. Registering trademarks and other IP rights in the name of such a distributor / agent or even assigning IP rights to it is fraught with legal risk. Always ensure that the IP portfolio is yours and is in your name.
Your distributor / agent may not be your best IP counsellor
Although a company may believe that its non-affiliated distributor / agent is the only person it can trust locally and the best person to advise it on how to protect its intellectual property, past experience suggests that this is not the case. Registering trademarks and other IP rights in the name of such a distributor / agent or even assigning IP rights to it is fraught with legal risk. Always ensure that the IP portfolio is yours and is in your name.
Your distributor / agent may not be your best IP counsellor
Although a company may believe that its non-affiliated distributor / agent is the only person it can trust locally and the best person to advise it on how to protect its intellectual property, past experience suggests that this is not the case. Registering trademarks and other IP rights in the name of such a distributor / agent or even assigning IP rights to it is fraught with legal risk. Always ensure that the IP portfolio is yours and is in your name.
Localise and customise IP strategies
Boilerplate brand protection strategies often prove ineffective and may contribute to large-scale parasitic copying and protracted battles with counterfeiters. Strictly enforce your brand guidelines internally and externally (e.g. in relation to local advertising and media companies) to make sure that the brand is used consistently and there is nothing to cause you to lose protection.
It is also essential for brand owners to develop customized strategies for each particular jurisdiction / case in order to take effective action against infringement and counterfeiting.
Localise and customise IP strategies
Boilerplate brand protection strategies often prove ineffective and may contribute to large-scale parasitic copying and protracted battles with counterfeiters. Strictly enforce your brand guidelines internally and externally (e.g. in relation to local advertising and media companies) to make sure that the brand is used consistently and there is nothing to cause you to lose protection.
It is also essential for brand owners to develop customized strategies for each particular jurisdiction / case in order to take effective action against infringement and counterfeiting.
Always ensure that domain names in the .ua zone which incorporate your brand are yours
It is more time and cost efficient to ensure delegation of the main domain names of .ua zone which incorporate your brand either to you or your trusted entity / individual than to make claims to unlawful use through pre-court or court procedures. Where there is a brand that is famous on the relevant market, the main domain names in the .ua zone (.com.ua, .net.ua, .kiev.ua, .in.ua) are often grabbed by third parties to operate websites for sale of "grey" or counterfeited goods.
Delegation of .ua level domain name (e.g. ) requires prior registration of your trademark in Ukraine under national or international procedure. Delegation of the .ua level domain name to a person other than the trademark owner will require a trademark license in writing.
Always ensure that domain names in the .ua zone which incorporate your brand are yours
It is more time and cost efficient to ensure delegation of the main domain names of .ua zone which incorporate your brand either to you or your trusted entity / individual than to make claims to unlawful use through pre-court or court procedures. Where there is a brand that is famous on the relevant market, the main domain names in the .ua zone (.com.ua, .net.ua, .kiev.ua, .in.ua) are often grabbed by third parties to operate websites for sale of "grey" or counterfeited goods.
Delegation of .ua level domain name (e.g. ) requires prior registration of your trademark in Ukraine under national or international procedure. Delegation of the .ua level domain name to a person other than the trademark owner will require a trademark license in writing.
Always ensure that domain names in the .ua zone which incorporate your brand are yours
It is more time and cost efficient to ensure delegation of the main domain names of .ua zone which incorporate your brand either to you or your trusted entity / individual than to make claims to unlawful use through pre-court or court procedures. Where there is a brand that is famous on the relevant market, the main domain names in the .ua zone (.com.ua, .net.ua, .kiev.ua, .in.ua) are often grabbed by third parties to operate websites for sale of "grey" or counterfeited goods.
Delegation of .ua level domain name (e.g. ) requires prior registration of your trademark in Ukraine under national or international procedure. Delegation of the .ua level domain name to a person other than the trademark owner will require a trademark license in writing.
