This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.
Being granted the status of a well-known mark is one of the most effective measures against trademark infringement in Ukraine.
Registered trademarks usually only protect against the use of similar signs for similar products, although wellknown trademarks enjoy broader protection against use for non-similar products. In order to profit from this extended protection, trademark owners have to prove the reputation of their mark.
Rising number of well-known marks
The number of marks officially recognised as well-known in Ukraine continues to increase significantly. At the end of 2009 the number approached 40, including 13 marks renowned worldwide. The popularity of obtaining well-known status among Ukrainian and foreign trademark owners has many explanations. The most obvious one is the desire to have the most comprehensive protection of a trademark on the Ukrainian market.
Another explanation is that the Ukrainian laws provide for a relatively easy, clear and straightforward procedure for recognition of a mark as well-known. Moreover, the wellknown status is frequently considered as the last available remedy to protect against the unfair exploitation of trademarks and to provide their owners with the exclusive right of use of a particular well-known mark in Ukraine.
Advantages of a well-known mark
What advantages does an officially recognised wellknown mark enjoy over a "regular" trademark registered in Ukraine?
Based on the Trademark Law1 , recognition of a mark as well-known may apply retroactively. This means that a well-known mark may be granted protection at some date in the past when it became well-known (e.g. prior to the date when a mark was filed for registration in Ukraine). This also means that no registration as a trademark is required in order to obtain the well-known status.
The biggest advantage of a well-known mark lies in its broad scope of protection. A well-known mark is granted protection which covers "goods and services which are not similar to those for which a mark is recognised as well-known". This, however, is subject to the conditions that use of a well-known mark by a third party must lead to a mental connection between such third party and the owner of a well-known mark, and may potentially impact the interests of the owner.
Official recognition of a well-known mark
Recognition of a mark as well-known may be done through administrative procedures or in court, most importantly in infringement proceedings. Almost all marks officially recognised as well-known in Ukraine obtained this status through administrative procedures, which are more convenient because of clearer rules and timing.
The administrative procedure for recognising a mark as well-known is conducted by the Appeal Chamber of the State Department of Intellectual Property of Ukraine (the Appeal Chamber). The Appeal Chamber may consider the following criteria in determining whether a mark is wellknow in Ukraine (use and popularity in other jurisdictions can also be of relevance, but is not key):
- popularity of the mark within a certain segment of the society;
- duration, volume and geographical region of use of the mark;
- duration, volume and geographical use of promotions of the mark, including advertising, presentations at trade fairs and exhibitions of goods and services containing the mark;
- duration and geographical region of any registration and application for registration of the mark, provided the mark is used or recognised;
- evidence of successful protection of rights to the mark, in particular territories in which the mark is recognised as well-known by the authorised bodies;
- value associated with the mark.
The owner of a mark for which the well-known status is claimed must provide information and documentation to the Appeal Chamber proving that the mark meets at least some of the above criteria. If a mark is claimed to be well-known at some specific point in time in the past, the owner must be able to support this with relevant proofs.
Recognition of a mark as well-known may be done in relation to various goods and services. However, a broader scope of goods and services requires the collection and filing of more documentation and materials in order to substantiate the application. Therefore, it is generally advisable to claim the well-known status only in relation to core goods and services associated with a particular mark.
Timing and costs
Ukrainian law does not establish a deadline for the recognition or refusal to recognise a mark as well-known by the Appeal Chamber. This approach is reasonable as long as owners of marks are allowed to file unlimited volumes of documents, materials and other information to substantiate their claims. Therefore, the time required to examine the documents and render a decision may vary significantly from case to case. In practice, the Appeal Chamber usually renders its decision within six months from receipt of the applicant's documents.
The official fee for recognition of a mark is small. Total expenses for preparation of the application and documentation (including legal fees) depend on numerous factors, such as availability of documents and materials to substantiate the claim, the number of goods and services in relation to which a mark is claimed as well-known, the necessity to perform market research, their scope and geographical borders, etc. Considering that obtaining the status of a well-known mark in Ukraine serves as effective protection against present and future infringements of the owner's rights, this is a worthwhile investment! 1
The biggest advantage of a well-known mark lies in its broad scope of protection.
This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.
Footnote
1. The Law of Ukraine "On marks for goods and services", 15 December 1993, No. 3689-XII, as amended.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
