In Ukraine, registered trademarks can only be invalidated through a court proceeding. Some key points about trademark cancellation procedures include: - Interested parties can file lawsuits seeking cancellation on grounds of non-use or that the trademark fails to meet registration requirements. - Court proceedings typically take 5-7 months and may involve expert analysis to examine distinctiveness or likelihood of confusion issues. - Trademarks can be invalidated fully or partially and the grounds for invalidation include lack of distinctiveness, functionality, misleading nature, violation of earlier rights, and non-use. - Several case examples are provided where Ukrainian courts decided on trademark validity issues based on the specific facts and arguments made by plaintiffs and defendants.

1. Trademark cancellation procedure in
Ukraine.

2. Registered trademark could
be invalidated in Ukraine
only by the court.

3. Lawsuits to court
In 2013 Ukrainian courts proceed 209 cases involving enforcement of IP rights
Invalidation Non-use cancellation
Trademarks
Ukrainian
Under Madrid
55
53
2
41
33
8
Industrial design 3 -
Invention 4 -
Utility model 18 -

4. Plaintiff
It could be any
interested person.

5. Firma Handlowa Raveka (Poland) VS Firshtein Gmbh (Germany)
Plaintiff - German natural person
Defendant - Polish legal entity -Firma Handlowa Raveka
Trademark Certificate of Ukraine № 43797
Trademark - MOLOTOW
Goods paints; varnishes; dyes; anti corrosive substances; mordant
Claims - cancellation of certificate
Grounds - non-use

6. Firma Handlowa Raveka (Poland) VS Firshtein Gmbh (Germany)
Position of plaintiff:
- plaintiff is founder of Firshtein Gmbh
- Firshtein Gmbh marked and use MOLOTOW
- plaintiff is owner of trademark certificate 995602
Mark MOLOTOW
Goods Paints, lacquers, particular with regard to aerosol cans and to
writing and drawing instruments, including bitumen varnish, paints,
colorants, varnishes, primers, thinners, pigments, distemper.
Plaintiff received provisional refusal in Ukraine based on
prior registration of defendant trademark.

7. Defendants in invalidation procedure are
Patent office of
Ukraine
(state service of IP)
Person who
registered a
trademark.

8. Court procedures
Procedure - 5-7 months.
Appellation process could last for 3-4 month.

9. Pay attention
The trademark could be invalidated during the entire
time of its validity.
Trademark certificate could be invalidated as for all
goods or services, as for only part of them.

10. In Ukraine we have special institute - court experts
What they do?
- examine a sign
- make conclusion concerning misleading,
lack of distinctiveness or other ground of
cancellation.
What if you don't agree with this conclusion?
-make a request for additional expertise.

11. Invalidation of TM certificate
According to article 19 of trademark law, trademark certificate could be
invalidated in next cases:
- sign does not meet fulfillment registration requirements. It is the most common type of
grounds;
- if trademark certificate consists of sign or list of goods of services that were not filled in
application;
- if certificate was issued with infringement rights of third persons.

12. The sign could not be registered if:
- there are proprietary rights, such as an
earlier conflicting registration or application
- the mark is descriptive, i.e., it consists of
a sign or indication that may serve in trade to
designate the kind, quality, quantity, intended
purpose or value of goods or of rendering of
services or other characteristics of goods or
services;
- the mark is not distinctive;
- the mark is misleading, deceptive or
disparaging;
- the mark is functional;
- breach of copyright;
- registered design rights;
- rights in a personal name;
- the mark is generic, i.e., the mark
consists exclusively of signs or indications that
have become customary in the current language
or in the bona fide and established practices of
the trade;
- the mark consists of a geographical
indication;
- the mark is against public policy or
principles of morality

13. As Ukraine is member of Paris Convention,
trademark could not registered when infringed rights
under Article 6 bis of the Paris Convention (well-known mark);
rights under Article 6 ter of the Paris Convention (protection of armorial bearings, flags
and other State emblems);
rights under Article 6 septies of the Paris Convention (registration in the name of the
agent or other representative of the proprietor of the mark);
rights under Article 8 of the Paris Convention (trade names);

14. Functional character and lack distinctiveness
Landrin VS Raffaello

15. Expertises
Landrin VS Raffaello
First expert decision - ‘trademark is creative, alternative, not
determined only be characteristics of good and constituted the exclusive
combination of the form, color, contour, design, which made this trademark
distinctive.’
Second expertise decision ‘trademark is not distinctive on the base that
there was nothing unique in the round form of candy and light color dressing
which covers the candy and that this representation of candy are common for
different candy manufactures including the territory of Soviet Union.’
The final decision was issued in favor of company «Landrin». The
trademark was recognized as devoid of distinctiveness.

16. Darnitsa VS Pharmac
Darnitsa filed a lawsuit for trademark cancellation.
Grounds:
1) lack of distinctiveness.
2) generic name
3) trademark certificate consists of sign or list of goods
of services that were not filled in application

17. Plaintiff:
- many people know Corvalolum as name for type of
drugs;
- in many directories, guides, references books it is used
as generic name;
- plaintiff filed an application to Rospatent and Rospatent
refused the ground that it is generic name;
- Kyiv vitamin manufacturer in 1994 and Naturpreparat
in 1998 filed an application for the same trademark, but
received refusal because of prior rights of Pharmak;
- - application was filed for one list, but in the Certificate
is another list of goods.
Defendant:
- about lack of distinctiveness: facts that this
trademark is in many references books means only
that this trademark is well-known;
- previously in Soviet Union for during 40 years only
one manufacture produced drug with this trademark;
- he registered this trademark in other countries;
- concerning argument that trademark certificate
consists of sign or list of goods of services that were
not filled in application he said that he has a right to
amend a trademark application;

18. Court position:
- refuse in trademark cancellation;
- ‘in provided materials court understood only that Corvalolum is very famous and used
only as a trademark, but not generic name’
- ‘court analyze materials and agreed with the defendants arguments that Corvalolum is
name created by workers of Kyiv Lomonosov manufacture (Pharmak is its assignor).
Legend was the next: at first it was CARDIVALOL, but then they changed syllables
and created Corvalolum’

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