Ukraine: Outline Of Grounds For Trademark Refusal In Ukraine

Last Updated: 19 February 2013
Article by Mariya Ortynska

Legislation of each country establishes its own grounds for refusal of a trademark. In many countries there are similar grounds for refusal, but success registration of a sign in one country is not guarantee of trademark registration in another country.

In this article we consider most common grounds for trademark refusal in Ukraine.

1. Likelihood of confusion means that it can not be registered a sign that is similar with a sign that was earlier filed for registration. This rule applies only for related goods or servises. Concerning to this ground for refusal trademark eximiner check similarity in sound, appearance and meaning.

To avoid rejection of registration we recommend to conduct a preliminary search before the trademark registration. More over, we advice to pay attention to list of goods or services in application.

The way to overcome trademark refusal is to show that there is no conflict between trademark's applicant and earlier filled trademark and that conflict can not appear in future. Sometimes it is possible to obtain a trademark registration by reduction of the list of good or services. Undoubtedly, during the preparation of arguments for overcoming refusal it is important to analyze all aspects concerning trademarks and attitude of average consumers to them.

In some countries, for example in Russian Federation, it is possible to overcome provisional refusal by providing Letter of Consent of applicant of earlier filed trademark. Unfortunately, the similar path of solutions is impossible in Ukraine.

By the way, it can not be registered a sign that is similar with:

  • well-known trademarks;
  • commercial names known in Ukraine concerning related goods or services;
  • geographical indications. Actually these indications are protected by special ligislation.

2. Lack of distinctiveness

As the trademark is a sign that distinguishes goods or services of one person from another, that's why it should be distinctive. Hense, a sign that doesn't have distinctiveness cannot be registered.

Examples of signs that are not distinctive:

  • signs consist from one letter or figure. Exception — signs consist of one letter or figure executed in original manner;
  • signs consist of simple geometric shapes;
  • realistic images of products;
  • well-known abbreviation.

A sign can get distinctiveness by long-term exploitation. In this case to overcome provisional refusal it is possible to show such evidences:

  • references about sales of products or goods;
  • marketing and advertising expences;
  • documents that sertify consumer association of a sign with an applicant;
  • documents that sertify participation in exhibitions;
  • diplomas, awards;
  • other documents.

Main goal of all these documents is sertify that an applied sign is associated only with applicant and thereby evidence that a sign get distinctiveness.

Analysing Ukrainian practice, we must admit that in many cases in contrast to device and combines signs. The verbal signs more often may be deemed not distinctive.

3. Descriptive signs also are not registrable.

Desciptive signs are signs that identify type, quality, quantity, properties, composition, place or time of manufacture goods or providing services. For instance, «the best toy» for toys, «very good taxi» for taxi services. In case, if a sign consists of elements that describe not directly, but in a way of some associations, it may be deemed registrable. For example, «northern» for nutritive ice.

4. Misleading signs mean signs that suggest an incorrect statement for average consumer, namely about type, place, time, quality or manufacture of goods or provider of services. These signs can not be also registered. In some cases distributors try to register trademark of well-known manufactor of goods. Also these signs are not registrable.

5. Similarity of third partie's industrial designs, names of famous literary, artistic, scientifical works, quotes and charasters, names, surnames, pseudonyms of famous people in Ukraine.

These signs may be registered only by authorisation of holder of copyrights or famous people.

6. Imitation of state flags, official names of states, emblems and names of international organisations.

According to Ukrainian legislation these elements may be concluded to a sign with autorisation of competent authority. In Ukraine such authorisation concerning inclusion into a sign official names of Ukraine may be issued by Commision concerning adjustment questions about inclusion into a sign official name of Ukraine. What is more, it is required additional fee for filling application with a sign included official name of Ukraine. But payment of additional fee is not guarantee of granting decision of registration. To obtain such authorisation your sign should satisfy requirement established by special legislation.

Remains an open question about receiving authorisation of organisation of other states. In effect, main problem is that sometimes it is diffucult to understand for applicant what organisation is competent for giving an authorisation in other countries. Also it is difficult to obtain such authorisaion during two or three months (depending on type of filling procudure — national or under Madrid System) provided by trademark law. This term could be extended for six months, but it is possible to obtain authorisation during such terms not in all cases.

7. Contrary to public order, principles of humanity and morality.

Very often applicants do not pay attention to this ground for refusal. But as for me, it is very controversial and subjective ground.

A sign contradicts public order, principles of humanity and morality, if it, for example, consists of symbols of church, names of saint persons, images of historic and cultural monuments, offencive words. According to the Rules of conclusion and examination of trademark application an exeminer decides if a sign belongs to a sign of pornografic charakter, doens't consist slogans against state, symbols of extremists organisation. More over, in 2012 many signs were rejected in registration because were concluded such elements as «2012», «UEFA» or other signs concerning EURO 2012. According to the meaning of exeminers inclusion such elements in to a sign contradicts the public order.

Speaking about grounds of trademark refusal we must mentioned that in some cases these refusals can be overcomed. Main principle of overcoming refusal is providing forceful arguments showed the opposite.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Mariya Ortynska
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
Accounting and Audit
Anti-trust/Competition Law
Consumer Protection
Corporate/Commercial Law
Criminal Law
Employment and HR
Energy and Natural Resources
Environment
Family and Matrimonial
Finance and Banking
Food, Drugs, Healthcare, Life Sciences
Government, Public Sector
Immigration
Insolvency/Bankruptcy, Re-structuring
Insurance
Intellectual Property
International Law
Litigation, Mediation & Arbitration
Media, Telecoms, IT, Entertainment
Privacy
Real Estate and Construction
Strategy
Tax
Transport
Wealth Management
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.