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REGISTRATION AND PROTECTION OF RIGHTS FOR TRADEMARKS IN UKRAINE

REGISTRATION AND PROTECTION OF RIGHTS FOR TRADEMARKS IN UKRAINE. Patent Attorney of Ukraine M.Sc. Daniel Benatov Intellectual Property Analyst M.Sc. Zinaida Reznytska. GENERAL PROVISIONS. Procedure type : examinational .

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REGISTRATION AND PROTECTION OF RIGHTS FOR TRADEMARKS IN UKRAINE

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  1. REGISTRATION AND PROTECTION OF RIGHTS FOR TRADEMARKS INUKRAINE • Patent Attorney of Ukraine • M.Sc. Daniel Benatov • Intellectual Property AnalystM.Sc. Zinaida Reznytska

  2. GENERAL PROVISIONS • Proceduretype:examinational. • Validity period:Certificate is valid 10 years and may be extended for undefined number of 10-year periods. • Examination authority:State Enterprise “Ukrainian Institute of Industrial Property” • Certificate issue:State Service of Intellectual Property. Dr. Emil Benatov & Partners, 2013

  3. GENERAL PROVISIONS Dr. Emil Benatov & Partners, 2013

  4. EXAMINATION • Registration procedure lasts 10-12 months. • Main steps: • determination of the filing date;- formal examination;- qualification examination;- bibliographypublication;- certificate issue. Dr. Emil Benatov & Partners, 2013

  5. OBJECTIONS BY THIRD PARTIES • Third parties have right to file their objections(oppositions) against filed applications before IPO issues final refusal or granting decision. • Meanwhile information concerning filed applications is closed and may be provided to interested parties only as a result of official paid search. • Filing oppositions is charged with official fee. Dr. Emil Benatov & Partners, 2013

  6. CLAIMING PRIORITY Applicant may claim convention priority within 6 months since the date of filing preceding application. Important:if national applicationis filed but not duly paid, it must be considered withdrawn, which enables filing same or similar application during 6 monthsand claim priority. Dr. Emil Benatov & Partners, 2013

  7. ACCELERATED PROCEDURE Applicant may accelerate examination of the application. To do that, he must claim intention to file subsequent international application.Further filing international application is not mandatory. Acceleration terms are 3 or 7 months (depends on the chosen tariff) counting from the date of payment accelerated procedure fee. Dr. Emil Benatov & Partners, 2013

  8. FEES Filing fees consist of fee for every class of ICGS and additional fee for color representation of the mark. Fees may be paid in Hryvnas, US dollars, Euro and Russian roubles. Official granting charge (i.e. fee for Certificate issue) is paid in US dollars only. Dr. Emil Benatov & Partners, 2013

  9. APPLICATION APPEAL • Applicant may file appeal against decision of examination before Board of Appeals (BA) of State Intellectual Property Service within 1 month since the decision date. • Decision of examination and/or BA may be in its turn appealed in court. • Third parties may not file appeals against examination decision before BA. Dr. Emil Benatov & Partners, 2013

  10. REGISTRATION RENEWAL Holder of national registration, if he wishes to renew it for another 10 years must pay official renewal fee not earlier than 6 months prior to expiration date. This term may be extended for next 6 months with penalty. Dr. Emil Benatov & Partners, 2013

  11. REGISTRATION RESTORATION Important:only holder of national registration, which lapsed due to unjudicial reasons, may re-register identical mark for identical G&S within 3 years counting from the lapse date. Dr. Emil Benatov & Partners, 2013

  12. WELL-KNOWN MARK Legislation doesn’t define the term of “well-known mark”. It’s agreed that well-known mark – is a mark, which became reputed in Ukraine, in relevant sector of the public as a mark of some person, which is protected according to art. 6 bis of Paris Convention. A mark can be recognized as well-known by the Boardof Appeal or court. Dr. Emil Benatov & Partners, 2013

  13. For recognition of a well-know mark one must prove: the degree of knowledge or recognition of the mark in the relevant sector of the public (evidences: history of the mark, manufacturer and its owner, results of polls); the duration, extent and geographical area of any use of the mark (evidences: data on sales values, deliveries etc.); WELL-KNOWN MARK Dr. Emil Benatov & Partners, 2013

  14. For recognition of a well-know mark one must prove: the duration and geographical area of any registrations, and/or any applications for registration, of the mark; the value associated with the mark (evidences: awards, participation in contests or ratings, sponsorship). WELL-KNOWN MARK Dr. Emil Benatov & Partners, 2013

  15. WELL-KNOWN MARK Well-known mark obtains same scope of protection as national Ukrainian trademark registration with effect from the date when the mark has become well-known in Ukraine. This date is determined by Appeal Board or court. Important:legal protection also extends to goods and services, dissimilar to those for which the mark has gained its reputation in Ukraine, in case if the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and that his interests are likely to be damaged by such use. Dr. Emil Benatov & Partners, 2013

  16. REGISTRATION OF ASSIGNMENTS Registration of trademark assignments before State Service of Intellectual Property is mandatory. Registration of license agreements is optional and depends only on parties’ will. Dr. Emil Benatov & Partners, 2013

  17. LITIGATION • Main types of cases: • 1. Invalidation of national registration which: • doesn’t match conditions of protection; • has new figurative elements or goods and services positions compared to application materials; • was filed with violation of third party’s rights. Dr. Emil Benatov & Partners, 2013

  18. LITIGATION Important:partially or entirely invalidated registration lapses from the application date. Dr. Emil Benatov & Partners, 2013

  19. LITIGATION 2. Non-use cancellation of national registration If the mark hasn’t been used in Ukraine, either in whole or for some registered goods and services, for three years counting from publication date or from any date after publication, then any person may apply for previous cessation of this registration (in whole or in part). Dr. Emil Benatov & Partners, 2013

  20. LITIGATION Important: presenting of non-use evidences is partly plaintiff’s responsibility. Dr. Emil Benatov & Partners, 2013

  21. LITIGATION 3. Appeal against decisions of examination and Appeal Board of SSIP. Appeals against decisions of examination and Appeal Board are handled in Kyiv Administrative Court. Dr. Emil Benatov & Partners, 2013

  22. LITIGATION 4. Recognition of well-know marks in Ukraine. Cases concerning recognition of well-know marks in Ukraine are held in Commercial or Civil Courts. Other types of cases are usually held in Regular Court or Kyiv Commercial Court, Court of Solomenskyj district in Kyiv or at the defendant’s – TM holder’s - location (residence). Dr. Emil Benatov & Partners, 2013

  23. LITIGATION • There exist: • - 3 administrative court instances; • - 3 commercial court instances; • 3 regular court instances. • Supreme Court as 4th instance considers cases only under exceptional circumstances. • Average time of considering the case in 1 instance - 1-2 years. In other instances it usually takes 2-6 months. Dr. Emil Benatov & Partners, 2013

  24. CUSTOMS REGISTER • The holder of national or valid in Ukraine international registration may record his mark in Customs Register. • Request consideration term: 1 month. • Official charge:none. • Record term: 1 year; term may be extended for undefined number of one-year periods, while the registration is valid. Dr. Emil Benatov & Partners, 2013

  25. CUSTOMS REGISTER Record in Customs Register enables: - stop import of counterfeit goods to Ukraine; - stop export of counterfeit goods from Ukraine. Dr. Emil Benatov & Partners, 2013

  26. SEARCH ENGINES • Capability of search engines in Ukraine is quite limited. • There’re several open TM databases on UIIP official web portal: • registered TM (without key words search, number of classes or holder’s name search); Dr. Emil Benatov & Partners, 2013

  27. SEARCH ENGINES • not valid TM (without key words search); • well-known TM search (database doesn’t contain all court decisions); • The most complete search may be conducted by means of database “E-version of the gazette “Industrial property””, but it starts from № 4 of 2006. Dr. Emil Benatov & Partners, 2013

  28. SEARCH ENGINES Important:there’s no information about applications in open databases. It’s only available for a fee. Dr. Emil Benatov & Partners, 2013

  29. SEARCH ENGINES Dr. Emil Benatov & Partners, 2013

  30. BALTIC APPLICANTS’ ACTIVITY IN UKRAINE Dr. Emil Benatov & Partners, 2013

  31. BALTIC APPLICANTS’ ACTIVITY IN UKRAINE Dr. Emil Benatov & Partners, 2013

  32. BALTIC APPLICANTS’ ACTIVITY IN UKRAINE Dr. Emil Benatov & Partners, 2013

  33. BALTIC APPLICANTS’ ACTIVITY IN UKRAINE Dr. Emil Benatov & Partners, 2013

  34. BALTIC APPLICANTS’ ACTIVITY IN UKRAINE Dr. Emil Benatov & Partners, 2013

  35. BALTIC APPLICANTS’ ACTIVITY IN UKRAINE Dr. Emil Benatov & Partners, 2013

  36. OUR BUREAU Year of foundation: 1993 Offices: In Sofia (Bulgaria)www.emilbenatov.come-mail: benatov@einet.bg In Kyiv (Ukraine)www.benatov.kiev.uae-mail: daniel@benatov.kiev.ua Dr. Emil Benatov & Partners, 2013

  37. THANK YOU FOR ATTENTION! Dr. Emil Benatov & Partners, 2013

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