EU-Ukraine Association Agreement: the Trademark Implications

The EU-Ukraine Association Agreement was signed on June 27 2014. Although it is yet to be ratified and implemented, the agreement is expected to pursue the harmonisation of Ukrainian law with the European legal framework. This will affect trademarks, among other things, as an important trade-related aspect.

While many rules set forth in the agreement are already reflected in the relevant Ukrainian laws and regulation (eg, in terms of the registration procedure and the conditions for granting legal protection), crucial novelties are to be introduced; some of these novelties are described below.

One of the most important issue concerns the enhancement of the possibility to oppose trademark applications. While the Law of Ukraine on Marks for Goods and Services allows the filing of oppositions against trademark applications, the practical implementation of the relevant provision is very restricted since trademark applications are not published according to the law. The agreement envisages that the parties thereto shall provide a publicly available electronic database of trademark applications that will facilitate the filing of oppositions. Implementation of this provision means that more trademark conflicts will be addressed at an earlier stage.

The agreement also provides for a broader scope of exceptions to trademark rights. In particular, a trademark registration shall not entitle its proprietor to prohibit a third party from using the mark, in the course of trade, where such use is necessary to indicate the intended purpose of a product or service, in particular accessories or spare parts, provided that the third party uses the mark in accordance with honest practices in industrial or commercial matters. Currently, this aspect is not expressly addressed in Ukrainian law.

In terms of the revocation of trademark registrations, the agreement provides that a trademark shall be vulnerable to revocation for non-use if, within a continuous period of five years, it has not been put to genuine use in the relevant territory in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. Currently, the Law on Marks for Goods and Services provides for a period of three years in this respect. The agreement also provides that the commencement or resumption of use within the period of three months preceding the filing of an application for revocation, which began at the earliest on the expiry of the continuous period of five years of non-use, shall be disregarded where preparations for the commencement or resumption of use occur only after the proprietor has become aware that an application for revocation may be filed. At present, there are no such statutory restrictions regarding proof of use in Ukraine.

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