A well-known TM in Ukraine in simple terms, a well-known TM is a designation that has been used intensively and for a long time in the territory of a particular country, due to which it has gained wide popularity among consumers in relation to the goods and/or services of a particular person.
The possibility of recognizing a TM as well-known is fixed in Article 6 bis of the Paris Convention for the Protection of Industrial Property and in Article 25 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services” on the basis of recognition of a TM as well-known by the Appeals Chamber. A TM may be recognized as well-known regardless of its registration in Ukraine.
In connection with the reform of the intellectual property sphere, starting from 08.11.2022, the state organization UKRNOIPI (IP Office) began to perform the duties of the National Intellectual Property Authority (NIPA), which, among other things, led to the temporary termination of the powers of the Chamber of Appeals. For more than one year, the functioning of the Appeals Chamber was blocked, making it impossible to apply administrative remedies for the protection of intellectual property (IP) rights and the right holders had to go to court.
With the adoption of the new Rules of Procedure of the Appeals Chamber of the National Intellectual Property Authority (Order of the Ministry of Economy of Ukraine dated November 23, 2023 No. 17768 “On Approval of the Rules of Procedure of the Appeals Chamber of the National Intellectual Property Authority”, registered with the Ministry of Justice of Ukraine on January 4, 2024 under No. 21/41366), which entered into force on February 09, 2024, additional opportunities for protecting intellectual property rights by applying to the Appeals Chamber have become available to right holders. In particular, the Appeals Chamber, as a collegial body of the NIPA, is competent to consider applications for recognition of a TM as well-known in Ukraine.
The procedure for recognizing a TM as well-known in Ukraine provides wider opportunities for the protection of rights to TM owners, since the protection of well-known TMs may apply to unrelated goods and services and extend to the entire period of consumer awareness, even in the absence of registration of the TM in Ukraine. For a long time, obtaining the status of a well-known TM was possible only through court proceedings, and with the launch of the Appeals Chamber, it will be possible for applicants to obtain it out of court (administratively).
As of the date of publication of this article, organizational and legal measures are being taken to form the staff of the Appeals Chamber of the National Intellectual Property Authority (hereinafter – the Appeals Chamber) in accordance with Chapter 2 of Section I of the Rules. After the Appeals Chamber staff is agreed upon and approved by the order of the National Intellectual Property Authority, the Appeals Chamber will resume its work.
Among the key provisions of the new version of the Rules of Procedure of the Appeals Chamber, in particular, it may be noted that the requirements for the survey on the issue of goodwill of TMs in Ukraine have been relaxed.
Advantages of a well-known TM over an ordinary TM
1) The TM is recognized as well-known from the date requested by the applicant, and not from the date of the relevant decision of the Appeals Chamber. Even if the decision of the Appeals Chamber is dated 2024, this does not mean that the TM was not well-known before that time. It will be considered well-known from the date that the applicant considers necessary and appropriate.
2) The legal protection of a well-known TM extends not only to those goods and services that are specified in the classes of the International Classification of Goods and Services (ICGS) in the certificate. This means the right to use the TM independently and to allow/prohibit its use by third parties. For example, if a TM is recognized as well-known for the manufacture of kitchen appliances, the owner of the TM has the right to prohibit its use for labeling dishes, clothing, and so on.
3) Recognition of a TM as well-known is an additional criterion for the UIPDC examiners to refuse to register similar marks.
4) A well-known TM has no validity period – there is no need to renew the decision of the Appeals Chamber every 10 years (as for ordinary TMs)
5) Increases the status of the company and brand.
6) Increases the value of the asset (TM) – an additional advantage when selling a business or entering into a partnership.
Conditions for recognizing a TM as well-known in Ukraine
When determining whether a TM is well-known in Ukraine, the factors are considered if they are relevant. The existence of relevant factors should be confirmed by the information contained in the relevant documents, which provide factual data confirming the good reputation of the TM in relation to the goods and/or services for which it is used as of the date specified in the application.
The use or any promotion of the TM may be confirmed, in particular, by information on
– types of labeling of goods and/or use of the TM in the provision of services;
– exhibiting goods at exhibitions, fairs, including international and/or national ones. In this case, information may be provided on the number of visitors to the exhibition, fair, area of exhibition pavilions, etc;
– use of the TM in advertising;
– commercial use of the TM on the Internet;
– measures to promote the TM.
The intensity of TM use in Ukraine may be confirmed by information on:
– the volume of sales of goods and/or services in respect of which the TM is used;
– a list of regions of Ukraine indicating the settlements where such goods and/or services were sold;
– the average number of consumers of goods and/or services as of the date specified in the application;
– the range of consumers and their specifics depending on the nature of the goods and/or services;
– the manufacturer’s market position in the relevant sector of the economy;
– volumes of exports (imports) of goods to which the TM is applied;
– the value (cost) of the TM according to the annual financial statements (with the methodology for assessing the TM determined by its owner).
The duration of the use of the TM may be confirmed by information on the date of the beginning of the use of the TM and the continuity of its use.
Advertising of the TM may be confirmed by information on:
– methods of advertising the marked goods and/or services in various media, including the Internet;
– the number of consumers of such advertising;
– advertising costs, including financial documents (reports) on advertising costs/
The well-known of a TM in a certain circle of consumers may be confirmed by the results of a survey on the well-known of a TM in Ukraine conducted by a research organization specializing in sociological or marketing research.
The new Rules of Procedure of the Appeals Chamber, as mentioned above, eased the requirements for a survey on the issue of TM awareness in Ukraine, namely: the minimum number of respondents was changed (reduced) to 200 thousand people (whereas before the changes this number was 500 thousand people), and the number of people surveyed in at least two settlements was changed (reduced) to 70 people (before the changes – at least 125 people).
A survey on the goodwill of a TM intended for production and technical products should be conducted among specialists who are consumers of this type of products and belong to production, trade and other business circles.
A survey on the goodwill of a TM intended for consumer goods should be conducted among the so-called average consumers on the basis of age, gender, education, social and financial status, as well as among specialists in the relevant industries and trade.
The results of a survey of a certain range of respondents – consumers and professionals – should provide answers to the following questions at least
– whether they know the TM;
– for which goods and/or services the TM is used;
– which person, in their opinion, is the owner of the TM or the manufacturer of goods labeled with the TM and/or the provider of services for which the TM is used;
– how long they have known the TM;
– what is their source of information about the TM.
To determine whether the TM is well-known in Ukraine, the following may also be considered
– information on the number of registrations and their validity periods, if the TM is registered in other countries
– information on decisions on recognizing the TM as well-known in other countries, made by the competent authorities of these countries;
– information on the fact of use of the TM in other countries, in particular in those that have long-standing economic and trade relations with Ukraine.
In order to determine whether a TM is well-known in Ukraine, other information that, in the opinion of its owner, indicates that its TM is well-known in Ukraine in relation to the goods and/or services produced and/or provided by it may also be considered.
Factual data confirming the existence of factors that may affect the recognition of a TM as well-known in Ukraine may be provided by the applicant to confirm several factors indicating that the mark is well-known in Ukraine.
General procedure for filing an application with the Appeals Chamber at the NIPA
An application for recognition of a TM as well-known in Ukraine shall be made in writing in any form in the state language, signed by the applicant or his/her representative.
If the annexes to the application are in a language other than Ukrainian, their translation into Ukrainian must be provided. Otherwise, they are not taken into account.
The application shall contain
– surname, name, patronymic (if any) or full name of the applicant, his/her place of residence (location), type and number of communication means
– address for correspondence, including e-mail address, if any;
– name of the representative, if the application is submitted by him/her, type and number of his/her means of communication;
– content of clearly formulated requirements of the applicant;
– substantiation of the applicant’s claims for recognition of its TM as well-known in Ukraine;
– the date from which the applicant considers its TM to be well-known in Ukraine in relation to the goods and/or services produced and/or provided by it;
– information on the availability of legal protection of the TM in Ukraine;
– list of documents attached to the application;
– signature of the applicant or his/her representative.
Annexes to the application are:
– a TM image;
– a document certifying the authority of the representative to file the application, or a certified copy thereof (if the application is filed through a representative). This document or its certified copy may be submitted by the representative at the meeting on consideration of the application for recognition of the TM as well-known in Ukraine;
– documents specified in the application as evidence of the circumstances set forth therein, which contain factual data confirming the existence of factors that may affect the recognition of the TM as well-known in Ukraine in relation to the goods and/or services for which it is used;
– an extract from the State Register of the Certificate of Ukraine for the TM regarding the information on the certificate of Ukraine for the TM or an extract from the International Register in accordance with Article 5ter of the Protocol to the Madrid Agreement Concerning the International Registration of Marks regarding the information on the international registration (if the TM is registered in Ukraine or protected under an international registration).
– The image of the TM shall be provided in one copy.
A fee shall be paid for filing the application and a document confirming the payment of the fee shall be submitted in accordance with the Procedure for Payment of Fees for Actions Related to the Protection of Intellectual Property Rights, approved by the Resolution of the Cabinet of Ministers of Ukraine No. 1716 dated 23.12.2004 (as amended by the Resolution of the Cabinet of Ministers of Ukraine No. 859 dated 16.09.2023)
Such an application is considered at a special meeting of the Appeals Chamber; the Board shall notify the applicant of the place, date and time of the meeting in advance.
The most common difficulties in recognizing a trademark as well-known
Services are more difficult to recognize as well-known than products. This is due to the fact that when providing services, the applicant often has few documents confirming the well-known of the TM. Let’s compare 2 cases:
- When recognizing TM Yagotynske, the applicant provided all documents confirming the manufacture and sale of products, acts and invoices for the shipment of goods to stores, documents confirming advertising, etc. It’s simple.
- Recognition of 1+1 and TSN as well-known required confirmation of the service provision – for this purpose, the company additionally ordered information from the Industrial Television Committee on the average daily coverage of television broadcasting in the target group that watches a TV channel or program for at least 1 second daily. The process is also complicated by the fact that TV channels do not advertise themselves often. They are known for their media personalities and products, so they run ads for the channel’s products (programs, series or movies).
A TM may not be recognized as well-known for all classes of the Nice Classification and the list of goods and services contained in the certificate. The Appeals Chamber should receive as much information as possible regarding each product or service for which the trademark is requested to be recognized as well-known.
A TM may be recognized in a color other than the one applied for and reflected in the certificate – the perception and recognition of the TM by the target audience plays an important role.
Today, more than 100 different TMs and designations are recognized as well-known in Ukraine, including: GOOGLE, Nemiroff, ZAZ, UkrAuto, McDONALD’S, Korolivsky Smak, RedBull, UKR.NET, ROZETKA, 1+1, TSN, Nova Poshta, Lifecell, BKK, Eucalyptus, Svit Navvyvorot, Yagotynske and others. For example, the number of registered trademarks in Ukraine exceeds 200 thousand!
A well-known TM / Appeals Chambe / copyright / intellectual property
