Latest Amendments to the Ukrainian Trademark Law

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(In force 25.06.2003)


The Law of Ukraine
On Protection of Rights to Trademarks for Goods and Services

as amended by the Laws of Ukraine
N 751-XIV of June 16, 1999,
N 2188-III of December 21, 2000,
N 2783-III of November 15, 2001,
N 2921-III of January 10, 2002,
N 34-IV of July 4, 2002,
N 762-IV of May 15, 2003,
N 850-IV of May 22, 2003
(The word "Department" is replaced with the word "Institution"
according to the Law of Ukraine N 2188-III of December 21, 2000)

This Law shall regulate relations arising in connection with acquisition and
use of the property right to trademarks for goods and services (hereinafter -
trademark) in Ukraine.

Chapter I
GENERAL PROVISIONS
Article 1. Definitions

For the purpose of this Law the terms below shall be used in the following
meanings:
Institution - the central body of executive power for legal protection of
intellectual property;


(paragraph two of Article 1 in the wording of
the Law of Ukraine N 2128-III of December 21, 2000)



entity - a natural person or a legal entity;


(paragraph three of Article 1 as amended according
to the Law of Ukraine N 850-IV of May 22, 2003)



trademark - a mark for distinguishing goods and services of one entity from
goods and services of other entities;


(paragraph four of Article 1 as amended according
to the Law of Ukraine N 850-IV of May 22, 2003)



certificate - the certificate of Ukraine for a trademark for goods and
services;

registered trademark - a trademark for which the certificate is issued;

application - a set of documents required for issuing the certificate;

applicant - an entity that submitted an application or acquired rights of the
applicant according to other procedure set forth by the law;


(paragraph eight of Article 1 as amended according
to the Law of Ukraine N 850-IV of May 22, 2003)



application priority (priority) - being the first to submit the application;

priority date - the date of submitting the application to the Institution or
a respective state body - a participant to the Paris Convention on Protection
of Industrial Property - under Priority;

Register - the State Register for Certificates of Ukraine for trademarks for
goods and services;

Chamber of Appeal - a collegial body of the Institution to consider
objections against the Institution's resolutions with respect to acquisition
of the right to objects of intellectual property and other issues in its
competence according to the present Law;


(Article 1 is added with paragraph twelve according to
the Law of Ukraine N 2128-III of December 21, 2000,
paragraph twelve of Article 1 as amended according
to the Law of Ukraine N 850-IV of May 22, 2003)



expertise institution - a state establishment (enterprise, organization)
authorized by the Institution to consider applications and carry out expert
examination thereof;


(Article 1 is added with paragraph thirteen according to
the Law of Ukraine N 2188-III of December 12, 2000)



state system of legal protection of intellectual property - the Institution
and a set of expertise, scientific, educational, informational and other
state institutions of relevant specialization that belong to the sphere of
the Institution's management;


(Article 1 is added with paragraph fourteen according to
the Law of Ukraine N 2188-III of December 12, 2000)



domain name - a name used for addressing computers and resources in the
Internet;


(Article 1 is added with paragraph fifteen according to
the Law of Ukraine N 34-IV of July 4, 2002)



ICGS - International Classification of Goods and Service for registration of
trademarks.


(Article 1 is added with paragraph sixteen according
to the Law of Ukraine N 850-IV of May 22, 2003)



Article 2. Authorities of the Institution in the Sphere of Protection of
Rights to Trademarks for Goods and Services

1. The Institution shall ensure implementation of the state policy in the
sphere of protection of rights to trademarks for goods and services. For this
purpose it shall:

arrange for reception of applications, their examination, and make decisions
with respect thereto;

issue certificate for trademarks for goods and services, ensure their state
registration;

ensure publication of official information on trademarks for goods and
services;

participate in the international cooperation in the sphere of legal
protection of intellectual property and represent Ukraine on issues on
protection of rights to trademarks for goods and services in the
international organizations in accordance with the current legislation;

adopt normative and legal acts within its authorities according to the
established procedure;

organize informational and publishing activity in the sphere of legal
protection of intellectual property;
organize scientific research on improving legislation and organizing
activities in the sphere of legal protection of intellectual property;

organize activity on retraining personnel of the state system of legal
protection of intellectual property;

authorize institutions, included into the state system of legal protection of
intellectual property - according to their specialization - to perform
certain assignments, stipulated by this Law, the Provision on the
Institution, other normative and legal acts in the sphere of legal protection
of intellectual property;

perform other functions in accordance with the Provision on the Institution,
approved according to the established procedure.

2. The Institution's activities shall be financed by the State Budget of
Ukraine.


(Article 2 in the wording of the Law of
Ukraine N 2188-III of December 12, 2000)



Article 3. International Agreements

1. Where international agreements of Ukraine stipulate regulations contrary
to provisions of Ukrainian legislation on trademarks, the provisions of
international agreements shall apply.

Article 4. Rights of Foreign and Other Entities

1. Foreign and stateless persons have the same rights as Ukrainian citizens,
as set forth by the present Law, in accordance with the international
agreements of Ukraine, or on the principle of reciprocity.

2. Foreign or other entities, who reside or are permanently located outside
Ukraine, in their relations with the Institution, shall exercise their rights
through representatives registered in accordance with the Provision on
Representatives on Intellectual Property approved by the Cabinet of Ministers
of Ukraine.

Chapter II
LEGAL PROTECTION OF TRADEMARKS

Article 5. Conditions for Providing Legal Protection

1. Legal protection shall be given to a trademark, provided it does not
contradict with the public order, humane and morale principles and which is
not subject to terms for refusing legal protection stipulated by the present
Law.

2. Object of trademark may be any mark or a combination of marks. Such marks
may be, particularly words, including proper names, letters, figures, graphic
elements, colors and combinations of colors, as well as any combination of
such marks.

3. The property right to a trademark shall be certified. The certificate
shall be valid for 10 years from the date of submitting an application to the
Institution, and may be prolonged by the Institution for another 10-year
period upon an application from the certificate holder, provided a duty is
paid according to the procedure set forth by clause 2 of Article 18 of the
present Law. The procedure for prolonging validity term for the certificate
shall be established by the Institution.
Validity term of the certificate may be terminated before the expiry date, as
stipulated by Article 18 of the present Law.

4. The scope of legal protection shall be determined by a picture of
trademark and the list of goods and services included into the register, and
is attested by the certificate with a copy of a trademark's picture included
into the Register and the list of goods and services.

5. Any entity, association of entities, or their successors shall have the
right to receive the certificate in accordance with the procedure established
by the present Law.

6. The right to receive the certificate shall be exercised by the applicant,
whose application has an earlier submission date to the Institution, or - in
case priority is claimed - an earlier date of priority, provided the
application is not considered withdrawn, is not withdrawn or the Institution
has not passed a decision on refusing registration of a trademark which
appeal opportunities being exhausted.


(Article 5 in wording of the Law of
Ukraine N 850-IV of May 22, 2003)



Article 6. Grounds for Refusing Legal Protection

1. In accordance to the present Law legal protection cannot be provided to
marks including or imitating:

national coat-of-arms, flags, and other state symbols (emblems);

official names of countries;

emblems, abbreviated or full names of international, intergovernmental
organizations;

official control, guarantee, or testing seals, stamps;

awards and other honors.

These marks may be included into a trademark as non-protected elements,
provided a respective competent body or their owners agree thereto. A
competent body related to the state is a collegial body created by the
Institution.

2. According to the present Law the following marks also cannot receive legal
protection:

usually having no differentiated meaning and having not acquired it due to
their use;

including only commonly used marks to specify goods and services of a certain
type;

including only marks or data, which are descriptive when used with respect to
goods and services mentioned in the application or connected thereto,
particularly specifying type, quality, composition, quantity, properties,
purpose, value of goods and services, place and time of production or sale of
goods or rendering of services;

deceptive or misleading as to goods, services, or entities, producing goods
or rendering services;

including only commonly used symbols and terms;

reflecting only the form, which is explained by the natural state of goods or
the necessity of receiving technical results or providing goods with their
substantial value.

Marks, specified in paragraphs two, three, four, six and seven of the present
clause, may be included into a trademark as non-protected elements, provided
they do not have the dominating position in the picture of a trademark.

3. Marks cannot be registered as trademarks, if they are identical or similar
and hence cannot be distinguished from:

trademarks registered before or applied for registration in Ukraine in the
name of another entity, with regard to the same or similar goods and
services;

trademarks of other entities, provided these trademarks are legally protected
without registration on the basis of Ukraine's international agreements,
particularly trademarks recognized as well known according to Article 6 of
the Paris Convention for the Protection of Industrial Property;

company names known in Ukraine, and belonging to other entities, that
acquired the right thereto before the date of submitting an application to
the Institution regarding the same or similar goods and services;

qualifying indications of goods' origin (including or alcohols and alcoholic
beverages), which are protected according to the Law of Ukraine "On
Protection of Rights to Indication of Goods Origin" (N 752). Such marks may
be only non-protected elements of trademarks of entities entitled to use
these indications;

marks of conformity (certification marks) registered according to the
established procedure.

4. Marks shall not be registered as trademarks if they reproduce:

industrial designs, the rights to which belong to other entities in Ukraine;

names of works of science, literature, art known in Ukraine, or quotations
and characters from them, works of art, or fragments thereof without
permission of copyright holders or their successors;

last names, first names, pseudonyms, and their derivatives, portraits and
facsimiles of entities known in Ukraine without their consent.

(Article 6 as amended according to the Laws of Ukraine
N 751-XIV of June 16, 1999,
N 2783-III of November 11, 2001,
in wording of the Law of Ukraine N 850-IV of May 22, 2003)



Chapter III
PROCEDURE FOR RECEIVING CERTIFICATE

Article 7. Application

1. An entity willing to obtain a certificate shall submit an application to
the Institution.

2. On behalf of the applicant, the application may be submitted through a
representative on intellectual property, or other authorized person.

3. The application shall concern one trademark.

4. The application shall be in Ukrainian, and include:

application for registration of a trademark;

picture of the mark specified in the application;

list of goods and services, for which the applicant wants to register the
trademark, grouped in accordance with the ICGS.

(paragraph four of clause 4 of Article 7 as amended
according to the Law of Ukraine N 850-IV of May 22, 2003)



5. The application shall specify the applicant's (applicants') name and
address.

6. If the applicant asks for protection of color, or a combination of colors,
as a distinguishing sign of their trademark, they shall

claim that in the application and specify the color, or combination of
colors, to be protected;

provide a color picture of a trademark in the application. The number of
copies of such a picture shall be specified by the Institution.

7. Other requirements for the documents shall be established by the
Institution.

8. A duty shall be paid for submitting the application. The rate of duty is
determined with consideration of quantity of ICGS classes covering goods and
services included into the application. The document confirming payment of
the duty shall be received by the Institution together with the application
or within a two-month period from the date when the application has been
submitted. This deadline may be extended but not longer than for six months,
if before the expiry thereof a respective application is submitted and a duty
for submission thereof is paid.

(clause 8 of Article 7 in wording of the Law
of Ukraine N 850-IV of May 22, 2003)



Article 8. Date of Submitting Application

1. The date of submitting the application shall be considered the date when
the Institution receives documents containing at least:

application in a free form on registration of a trademark in Ukrainian;

information on the applicant, their address written in Ukrainian;

a clear picture of a mark applied for registration;

the list of goods and services for which the trademark is applied for
registration.

2. The date of submitting the application shall be determined according to
clauses 10 and 11 of Article 10 of the present Law.

3. After the date for submission of the application is determined, any entity
shall have the right to study materials of the application according to the
procedure set forth by the Institution. A duty shall be paid for studying
materials of the application.

(Article 8 in wording of the Law of Ukraine
N 850-IV of May 22, 2003)



Article 9. Priority

1. The applicant has the right to priority of application for the same
trademark during six months from the date the earlier application was
submitted to the Institution or a respective body of a country - participant
of the Paris Convention for the Protection of Industrial Property, provided
there is no priority claimed for the earlier application.

2. The priority of a trademark used in an exhibit shown at official or
officially recognized international exhibitions held on the territory of a
country - participant of the Paris Convention for the Protection of
Industrial Property, may be set as of the date when the exhibition was
opened, provided the application was sent to the Institution within six
months since the date specified above.

3. The applicant, who would like to enjoy the right of priority, within three
months from the date of submitting the application to the Institution, shall
submit an application on priority with reference to the date and registered
number of the previous application, and also its copy translated into
Ukrainian, or a document confirming display of the exhibit at an exhibition,
provided this application or exhibit were respectively submitted or conducted
in a country - participant of the Paris Convention for the Protection of
Industrial Property. The above-mentioned materials may be changed within the
specified term. If the materials are not submitted duly on time, the right
for priority shall be considered as lost, of which the applicant is notified.

Article 10. Expert Examination of an Application

1. Expert examination of an application shall have the status of scientific-
technical examination and shall include formal expert examination and
qualifying expert examination (essential expert examination), which is
carried out by an expertise institution in accordance with the present Law
and rules established by the Institution on the basis of the present Law.

2. Expertise institution fulfils informational activity necessary for
performing examination of applications and is the center for international
exchange of publications according to the Convention concerning the
International Exchange of Publications approved on December 3, 1958 by the
General Conference of the United Nations Educational, Scientific and Cultural
Organization (UNESCO).

3. Final results of examination of an application, which is not considered
revoked or is not revoked, shall be reflected in a substantiated conclusion
of expert examination of an application, which comes into effect after it has
been approved by the Institution. On the basis of such conclusion the
Institution shall pass the decision on registration of a trademark for all
goods and services mentioned in the application or on refusal to register a
trademark for all goods and services mentioned in the application, or on
registration of a trademark related to a part of goods and services mentioned
in the application and refusal to register a trademark for the rest of goods
of services mentioned in the application. The Institution's decision shall be
sent to the applicant.

The applicant shall have the right to demand copies of materials presented
against the application within one month after they receive the decision of
the Institution. These copies shall be sent to the applicant within one
month.

4. On their own initiative or upon request of the expertise institution the
applicant may, either in person or through their agent participate in
consideration of issues which have arisen in the course of expert examination
according to the procedure set forth by the Institution.

5. The applicant shall have the right to correct application and change their
names, address, mailing address, names and addresses of their representative,
as well as introduce amendments related to reduction of the list of goods and
services.

The applicant may amend the application with respect to changing identity of
the applicant upon consent of other applicants mentioned in the application.
Such amendments upon consent of all applicants may be introduced by a person
willing to be an applicant.

Such amendments and corrections shall be taken into account, if they were
received by the expertise institution not later than a document confirming
payment of the state duty for issuance of a certificate.

A duty shall be paid for filing requests to amend and correct an application,
provided a mistake is not evident or technical, and an amendment emerged due
to circumstances depending on the applicant.

6. The expertise institution may request from the applicant submission of
additional documents, if examination is impossible without them, or in case
there are substantiated doubts in authenticity of any data or elements,
included into materials of the application.

Within one month from the date of receiving a notification or conclusion of
the expertise institution with request to submit additional materials, the
applicant shall have the right to demand from the expertise institution
copies of documents presented against the application.

Additional materials shall be submitted by the applicant within two months
from the date of receiving notification or conclusion of the expertise
institution or copies of materials presented against the application. The
deadline for submitting additional materials shall be extended, but not
longer than for six months, if before expiry thereof respective application
is submitted and a duty for submission thereof is paid. The deadline missed
for serious reasons shall be renewed, if within six months from expiry
thereof respective application is submitted and a duty for submission thereof
is paid. If the applicant does not submit additional materials before the set
deadline the application shall be considered revoked and the applicant shall
be notified thereof.

7. If the applicant has filed additional materials, then it shall be
determined in the course of expert examination whether they fall within the
scope of the essence of the marks and the list of goods and services
mentioned in the application.

Additional materials do not fall within the scope of the essence of the marks
as disclosed in the application, if they contain features, which should be
included into the marks mentioned in the application as a trademark.

Additional materials in part falling outside the essence of the marks
mentioned in the application or supplementing the list of goods and services
mentioned in the application shall not be taken into account in the course of
examination of the application, and may be filed by the applicant as a
separate application after receiving respective notification from the
expertise institution.

8. Any entity may submit to the expertise institution a motivated objection
against the application with respect to no correspondence between marks
mentioned therein to terms of providing legal protection, determined by the
present Law.

A duty shall be paid for submission of an objection.

The objection shall be considered is it has been received by the expertise
institution not later than five days prior to the date when the Institution
passes a decision on the application.

The expertise institution shall send the applicant a copy of the objection.

The applicant shall have the right to inform the expertise institution on
their attitude to the objection within two months after the date of receiving
notification. They may denounce the objection and leave the application
without changes, introduce changes to the application or withdraw it.

Results of considering the objection shall be reflected in the Institution's
decision on the application. A copy of the decision shall be sent to the
entity that submitted the objection.

9. During the formal expert examination of an application:

the date of submitting the application shall be established on the basis of
Article 8 of the present Law;

the application shall be checked for compliance with formal requirements of
Article 7 of the present Law and rules established by the Institution on the
basis of the present Law;

a document confirming payment of the duty for submitting the application
shall be checked for compliance with established requirements.

10. If materials of application comply with requirements of Article 8 of the
present Law and there is a document confirming payment of duty for submission
of the application, the applicant shall be sent a notification on the
established date for submission of the application.

11. If the application does not comply with requirements of Article 8 of the
present Law, the applicant shall be immediately notified thereon. If
incompliance has been eliminated within two months from the date of the
applicant's receiving of the notification, the date of submitting the
application shall be date, when the expertise institution received corrected
materials. Otherwise, the application shall be considered as not submitted
and the applicant shall be notified thereon.

12. If the application complies with requirements of Article 7 of the present
Law and a document confirming payment of the duty for submission of the
application to the established requirements, the applicant shall be notified
thereon.

13. If requirements of clause eight of Article 7 of the present Law are
violated, the application shall be considered revoked and the applicant shall
be notified thereon.

14. If the application does not meet formal requirements of Article 7 of the
present Law and rules established by the Institution on the basis of the
present Law or a document confirming payment of duty for submitting the
application to the established requirements the applicant shall be sent a
notification with suggestions with respect to eliminating shortcomings.

If shortcomings are related to grouping of goods and services, the
notification shall include the list of goods and services grouped by the
expertise institution and, if necessary, the rate of duty for submission of
the application, which has to be paid, shall be mentioned. In case, when
goods or services are presented in the application as a term, which crosses
out the possibility of associating it with a certain class of the ICGS, the
applicant is offered to replace the term or exclude it. If the applicant does
not comply with this requirement, the above-mentioned term is not included to
the list of goods and services grouped by the expertise institution.

Elimination of shortcomings mentioned in the notification shall take place
within the deadline set forth by clause 6 of the present Article for
additional materials.

15. Qualifying expert examination shall verify compliance of the claimed
marks to terms of providing legal protection set forth by the present Law.
The examination shall use informational database of the expertise
institution, including materials of the application, as well as reference-
search device and respective official editions.

16. If there are reasons to think that the declared mark fully or partly does
not meet the terms for providing legal protection, the expertise institution
shall send the applicant a substantiated preliminary conclusion thereon with
a suggestion to provide a motivated reply in favor of registering the mark.

The applicant's reply shall be sent within the deadline set by clause six of
the present Article for additional materials and shall be taken into
consideration during the time of preparing examination conclusion on the
application.

(Article 10 in wording of the Laws of Ukraine
N 2188-III of December 21, 2000,
N 850-IV of May 22, 2003)



Article 11. Withdrawal of the Application

The applicant shall have the right to withdraw the application at any time
before the date of payment of the state duty for issuance of the certificate.

(Article 11 as amended according to the Law
of Ukraine N 850-IV of May 22, 2003)



Article 11-1. Splitting the Application

1. The applicant shall have the right to split the application into two or
more applications (separated applications) through division between them of
goods and services mentioned in the application in such a way, that each of
the separated applications did not include goods and services related to
goods and services mentioned in other applications.

2. To split the application the applicant shall submit an application on
introducing certain changes to the application and a separated
application(s), provided duties are paid for submission of the above
mentioned applications.

3. The date of submitting the separated application shall be the same as the
date of submitting the split application. The date of priority of the
separated application shall be determined, if there is a reason for that, the
same as the date of priority of the split application.

(the Law is added with Article 11-1 according to
the Law of Ukraine N 850-IV of May 22, 2003)



Article 12. Publication on Issuance of the Certificate

On the basis of the decision on registration of the trademark and with the
document confirming payment of the state duty for issuing the certificate and
the duty for publication on issuance of the certificate, the information on
issuing the certificate shall be published in the official bulletin rendering
information on issuance of the certificate determined according to the
established procedure. The above-mentioned duties shall be paid after the
applicant received the decision on registration of the trademark.

The application shall be considered withdrawn and publication is not
conducted, provided within three months after the date when the decision on
issuing the certificate is delivered to the applicant, the document
confirming payment of duties for issuing the certificate and for publication
on issuance of the certificate in volumes and according to the procedure
established by the legislation have not been sent to the expertise
institution.

The deadline for accepting these documents may be extended, but not longer
than for six months, if before the expiry thereof a respective application is
submitted and a duty is paid for submission thereof. The deadline missed for
serious reasons shall be renewed, if within six months after the expiry
thereof a respective application is submitted and a duty is paid for
submission thereof.

(Article 12 in wording of the Laws of Ukraine
N 2188-III of December 21, 2000,
N 850-IV of May 22, 2003)



Article 13. Registration of the Trademark

(the title of Article 13 as amended according to
the Law of Ukraine N 850-IV of May 22, 2003)



1. Along with publication of the information on issuing the certificate the
Institution shall conduct the state registration of the trademark, and enter
relevant information to the Register. The form of the Register and the
procedure for maintenance thereof are established by the Institution.

2. After the information on the certificate is entered to the Register, any
person has the right to access this information according to the procedure
established by the Institution and with respect to their application to
receive an extract from the Register related to information on the
certificate, provided a duty is paid for submission of the application.

(clause 2 of Article 13 as amended according to
the Law of Ukraine N 850-IV of May 22, 2003)

3. Information entered in the Register may be corrected on the initiative of
the certificate holder or the Institution.

(paragraph one of clause 3 of Article 13 in wording
of the Law of Ukraine N 850-IV of May 22, 2003)



On the certificate holder's initiative amendments may be entered to the
Register according to the established list of possible amendments. A duty
shall be paid for entering amendments to the Register.

(Article 13 is added with clause 3 according to
the Law of Ukraine N 2188-III of December 21, 2000)



Article 14. Issuing the Certificate

1. The Institution shall issue the certificate within one month after the
state registration of the trademark. The certificate shall be given to an
entity that has the right to receive it. If the right for the certificate
belongs to several entities, they shall receive one certificate.

2. The Institution shall establish the form of the certificate and the
information contained therein.

3. Upon the certificate holder's request the Institution shall correct
evident mistakes in the certificate, with further notification about it in
the official bulletin.

4. In case of loss of or damage to the certificate, the certificate holder
shall be given a copy of the certificate according to the procedure set forth
by the Institution. A duty shall be paid for issuing the copy of the
certificate.

(Article 14 is added with clause 4 according to
the Law of Ukraine N 850-IV of May 22, 2003)



Article 15. Appeals against the Decision with Respect to the Application

1. An applicant shall have the right to appeal the Institution's decision on
application in court as well as to the Chamber of Appeals within two months
after receiving the decision of the Institution or copies of materials
requested according to clause 3 of Article 10 of the present Law.

2. If the Institution's decision on the application is appealed in court
after state registration of the trademark, the court shall also resolve the
issue related to validity of respective certificate.

3. The right to appeal the Institution's decision to the Chamber of Appeals
shall be lost in case state duty has been paid for issuance of the
certificate.

4. The Institution's decision may be appealed to the Chamber of Appeals
through submitting an objection against the decision following the procedure
set forth by the present Law and based thereon regulations of the Chamber of
Appeals, approved by the Institution. A duty shall be paid for submission of
the objection. If the duty has not been paid within the deadline, mentioned
in clause 1 of the present Article, the objection shall be considered as not
submitted and the applicant shall be notified thereon.

5. In case the Chamber of Appeals receives the objection and a document
confirming payment of the duty for submitting the objection, procedures on
the application shall be suspended until the decision of the Chamber of
Appeals is approved.

6. The objection against the Institution's decision on the application shall
be considered according to regulations of the Chamber of Appeals within two
months from the date of receiving the objection and the document confirming
payment of the duty for submission thereof within the motives stated by the
applicant in the objection and during the time of its consideration. The
deadline for consideration of the objection may be extended upon the
initiative of the applicant, but not longer than for two months, if before
its expiry respective application is submitted and a duty for submission
thereof is paid.

7. Based on results of considering the objection, the Chamber of Appeals
shall pass a motivated decision that shall be approved by an order of the
Institution, and sent to the applicant.

In case of satisfying the objection fully or in part, the duty for submission
of the objection shall be returned.

8. Prior to approval of the decision of the Chamber of Appeals, within one
month from the date when such decision was passed, the Head of the
Institution may file a motivated written protest against this decision, which
shall be considered within one month. The decision of the Chamber of Appeals
adopted upon this protest shall be final and may be cancelled only by court.

9. The applicant may appeal the decision of the Chamber of Appeals that has
been approved by the Institution in court within two months following the
receipt of the decision.

(Article 24 in wording of the Laws of Ukraine
N 2188-III of December 21, 2000,
N 850-IV of May 22, 2003)



Chapter IV
RIGHTS AND DUTIES ARISING FROM CERTIFICATE

Article 16. Rights Arising from the Certificate

1. Rights arising from the certificate shall become effective from the date
of submitting the application. The certificate's validity shall be extended
provided a respective duty is paid.

2. The certificate shall confer on its holder the right to use the trademark
and other rights determined by the present Law.

3. Relations arising in the course of using the trademark, for which the
certificate is held by several entities, shall be determined by an agreement
between such entities. If such agreement is absent, each certificate holder
may use the trademark at their discretion; however, none of them shall have
the right to grant a permit (a license) for using the trademark and transfer
the property right to the trademark to other entities without consent of
other certificate holders.

4. The following shall be considered to constitute use of the trademark:

laying thereof on any goods for which the trademark is registered, package
containing such goods, signboard related thereto, label, tab, tag or other
item attached to the goods, storing such goods with the above-mentioned
laying of the trademark in order to sell, offer for sale, import and export;

use thereof while offering or rendering any service, for which the trademark
is registered;

use thereof in business documents or in advertising and in the Internet,
including in domain names.

The trademark shall be recognized as used, if it has been used in the form of
a registered trademark, as well as in the form, which differs from the
registered trademark only through separate elements, if they do not change
the trademark's features on the whole.

5. The certificate shall confer upon its holder the exclusive right to
prohibit other entities from using without their consent, unless otherwise is
envisaged by the present Law:

a registered trademark related to goods and services mentioned in the
certificate;

a registered trademark with respect to goods and services similar to those
included into the certificate, if such use may result into deception as to
the entity producing these goods or rendering such services;

a mark similar to the registered trademark with respect to goods and services
mentioned in the certificate, if such use may result in confusion of this
mark and the trademark;

a mark similar to the registered trademark with respect to goods and services
similar to those mentioned in the certificate, if such use may result in
deception as to the entity producing goods or rendering services or this mark
and the trademark may get confused.

6. The exclusive right of the certificate holder to prohibit other entities
from using the registered trademark without their consent shall not apply to:

exercise of any right, which arose before the date of submitting the
application or, if priority was claimed, before the date of the application's
priority;

use of the trademark for goods, introduced into civil circulation under this
trademark by the certificate holder, or upon their agreement, provided the
certificate holder does not have serious reasons to prohibit such use related
to further sale of the goods, particularly in case of change or worsening in
the goods' state after they have been introduced into civil circulation;

use of qualifying indication of the goods' origin, which is protected
according to the Law of Ukraine "On Protection of Rights to Indication of the
Goods Origin" (N 752);

non-commercial use of the trademark;

all forms of news broadcasting and commentaries on news;

bona fide use of their names and addresses thereby.

7. The certificate holder may transfer to any entity the property right to
the trademark fully or respectively a part of goods and services mentioned in
the certificate on contractual basis.

Transfer of the property right to the trademark shall not be allowed, if it
may cause deception of the consumer with respect to goods and services or to
the entity producing goods or rendering services.

8. The certificate holder shall have the right to grant a permit (license) to
any entity for use of their trademark on the basis of a license agreement.

License agreement shall include a provision saying that quality of goods and
services produced or rendered according to the license agreement shall not be
lower than quality of goods and services of the certificate holder and the
latter shall exercise control over performance of this provision.

9. An agreement on transfer of the property right to the trademark and a
license agreement shall be deemed valid, if they have been concluded in
writing and signed by the parties.

A party to the agreement shall have the right to inform an indefinite circle
of entities on transfer of the property right to the trademark or on issuing
a license to use the trademark. Such informing shall be performed through
publication of data in the official bulletin in volumes and according to the
procedure set forth by the Institution and at the same time entry thereof to
the Register.

Duties shall be paid for publishing the information on full transfer of the
property right to the trademark and issuance of a license for using the
trademark, as well as on amendments to the information on issuance of a
license, suggested by a party to the agreement.

In case of publishing information on transfer of the property right to the
trademark related to a part of goods and services mentioned in the
certificate, the Institution shall issues a new certificate in the name of
the entity that has acquired this right, provided there is a document
confirming payment of the state duty for issuance of the certificate.

10. The certificate holder shall have the right to lay out along with the
trademark a warning mark, showing that this trademark has been registered in
Ukraine.

11. The certificate holder, engaged in intermediary activities, shall have
the right to use their trademark along with the trademark of the above-
mentioned entities, as well as instead of their trademark on the basis of an
agreement with the producer of goods or the entity rendering services.

(Article 16 as amended according to the Laws of Ukraine
N 751-XIV of June 16, 1999,
N 2188-III of December 21, 2000,
N 34-IV of July 4, 2002,
in wording of the Law of Ukraine
N 850-IV of May 22, 2003)



Article 17. Duties Arising from the Certificate

The certificate holder shall bona fide use their exclusive rights arising
from the certificate.

(Article 17 as amended according to the Law of Ukraine
N 762-IV of May 15, 2003,
in wording of the Law of Ukraine
N 850-IV of May 22, 2003)



Chapter V
TERMINATION OF CERTIFICATE'S VALIDITY AND ITS INVALIDATION

Article 18. Termination of Certificate's Validity

1. The certificate holder may refuse from the certificate at any time
completely or partially on the basis of an application submitted to the
Institution. The refusal shall come into force from the date of publishing
the information in the Institution's official bulletin.

2. The certificate's validity shall be terminated, provided the duty for
extension of validity term is not paid. The document confirming payment of
extension duty for each extension of validity shall be submitted to the
Institution by the end of the current term of the certificate's validity,
provided the payment was conducted during the last six months of the period.

(paragraph one of clause 2 of Article 18 as amended
according to the Law of Ukraine N 850-IV of May 22, 2003)



The duty for extension of the certificate's validity may be paid, and the
document confirming payment thereof - shall be submitted to the Institution
during six months after the established term expires. In this case the duty
shall grow by 50%.

The certificate's validity shall be terminated from the first day of the
period, for which the duty is not paid.

3. The certificate's validity shall be terminated upon a court decision,
because the trademark has transformed into a commonly used mark for goods and
services of a certain type after the date of submitting the application.

(clause 3 of Article 18 as amended according to
the Law of Ukraine N 762-IV of May 15, 2003)


4. If the trademark was not used in Ukraine fully or in part related to goods
and services mentioned in the certificate within three years from the date of
publishing the information on issuance of the certificate or from other date
after the publication, any person shall have the right to turn to court with
an application on pre-term termination of the certificate's validity fully or
partly.

In this case the certificate's validity may be fully or partly suspended only
on condition that the certificate holder does not mention serious reasons for
not using the trademark. Such serious reasons are, particularly:

circumstances impeding use of the trademark regardless of the certificate
holder's will such as: limitations on import or other requirements for goods
and services established by the legislation;

the opportunity to deceive with respect to an entity producing goods or
rendering services, during the entity's use of the trademark, that turned to
court, or any other entity with respect to goods and services regarding which
a requirement on termination of the certificate's validity has been set.

For purposes of the present clause use of the trademark by the certificate
holder shall be also use of the trademark by other entity provided the
certificate holder exercises control over such use.

(Article 18 is added with clause 4 according to
the Law of Ukraine N 850-IV of May 22, 2003)



Article 19. Invalidation of Certificate

The certificate may be invalidated totally or partially through a court
procedure, if

a) the registered trademark does not meet the conditions of legal protection;

b) the certificate contains element of the trademark, or list of goods and
services which were not included into the application;

c) the certificate is issued as a result of submitting the application with
violation of rights of other entities.

(clause 1 of Article 19 is added with the sub-clause "c"
according to the Law of Ukraine N 2783-III of November 15, 2001,
sub-clause "c" of clause 1 of Article 19 in wording
of the Law of Ukraine N 850-IV of May 22, 2003)



2. Provided the certificate or any part of it is recognized as invalid, the
Institution shall inform about it in its official bulletin.

3. The invalidated certificate or a part thereof shall be considered as those
that did not come into effect from the date of submitting the application.

(Article 19 in the wording of the Law of
Ukraine N 2188-III of December 21, 2000)



Chapter VI
PROTECTION OF RIGHTS
Article 20. Violation of the Certificate Holder's Rights

1. Any encroachments on the rights of the certificate holder, which are
specified in Article 16 of the present Law, including taking actions without
their consent, which require their consent, and preparation of such actions,
shall be considered as violation of the certificate holder's rights, that
entails responsibility in accordance with the current legislation of Ukraine.

(clause 1 of Article 20 as amended according to
the Law of Ukraine N 850-IV of May 22, 2003)



2. Upon the request of the certificate holder's such violation shall be
terminated and the violator shall compensate the losses, which have been
incurred.

The certificate holder may also demand removal of illegally used marks or
trademarks from goods or packaging, which look so similar to theirs that they
may be confused, or destruction of produced copies of the trademark or mark,
which look so similar to the original that they may be confused.

An entity that obtained the license may demand restoration of the violated
rights of the certificate holder upon the certificate holder's consent.

(paragraph three of clause 2 of Article 20 in wording
of the Law of Ukraine N 850-IV of May 22, 2003)



Article 21. Means to Protect Rights

1. Protection of rights to trademarks shall be performed through court and
other proceedings determined by the law.

2. Jurisdiction of courts shall include all legal relations arising from the
application of the present Law.

Courts, within their competence, shall settle disputes on:

identification of the patent holder;

conclusion and performance of license agreements;

violation of rights of the patent holder.

(Article 21 in wording of the Law of Ukraine
N 762-IV of May 15, 2003)



Article 22. Right to Re-Registration

No entity, but the previous holder of the certificate shall have the right to
re-registration of the trademark within three years after the expiry date of
the certificate in accordance with clause 1-3 of Article 18 of the present
Law.

(Article 22 as amended according to the
Law of Ukraine N 850-IV of May 22, 2003)



Chapter VII
FINAL PROVISIONS

Article 23. State Duty and Other Payments

Amounts and the procedure for payment of the state duty for issuing
certificates for trademarks for goods and services shall be established by
the legislation.

Revenues obtained from payment of the state duty for issuing certificates for
trademarks for goods and services shall be remitted to the State Budget of
Ukraine.

Amounts, terms and procedure for paying duties envisaged by the present Law
shall be established by the Cabinet of Ministers of Ukraine.

Duties, envisaged by the present Law shall be remitted to current accounts of
the institutions, authorized by the Institution that are members of the state
system of legal protection for intellectual property, and according to their
specialization perform certain assignments, determined by the present Law.

(part four of Article 23 as amended according to the
Law of Ukraine N 2921-III of January 10, 2002)



Revenues from duties, envisaged by the present Law, shall have a purpose
designation, and according to the Institution's directives are used
exclusively for ensuring development and functioning of the state system for
legal protection of intellectual property, particularly for fulfillment of
assignments, established by the present Law, and other normative and legal
acts in the sphere of intellectual property.

(Article 23 in the wording of the Law of Ukraine
N 2188-III of December 21, 2000)



Article 24. Registration of Trademark in Foreign Countries

1. Any entity has the right for registration of a trademark in foreign
countries.

2. In case of registering a trademark in foreign countries in accordance with
the Madrid Agreement Concerning the International Registration of Trademarks
and/or the Protocol of the Madrid Agreement on the International Registration
of Trademarks, the application for international registration and respective
application on territorial expansion and an application of extending the
international registration of a trademark shall be submitted through the
Institution, provided a national duty is paid for submitting each of them.

(clause 2 of Article 24 in wording of the Law
of Ukraine N 850-IV of May 22, 2003)



3. Expenses related to registration of a trademark in foreign countries shall
be paid by the applicant or other entity by the applicant's consent.

Article 25. Protection of Rights to a Well-Known Trademark

1. Protection of rights to a well-known trademark shall be performed
according to Article 6 of the Paris Convention for the Protection of
Industrial Property and to the present Law, if the trademark was recognized
as well-known by the Chamber of Appeals or a court.

2. When determining whether the trademark is well-known in Ukraine, the
following factors may be considered, if they are relevant:

the degree of publicity or recognition of the trademark in a respective
sector of the society;

duration, volume and geographic region of any use of the trademark;

duration, volume and geographic region of any expansion of the trademark
including advertising or publication and presentation at fairs or exhibitions
of goods and/or services with respect to which the trademark is used;

duration and geographic region of any registration and/or applications for
registration of the trademark, provided the trademark is used or is
recognized;

proof of successful assertion of the rights to the trademark, particularly
the territory where the trademark is recognized as well-known by competent
bodies;

value, which is associated with the trademark.

3. The procedure of the Chamber of Appeals for recognizing the trademark as
well-known in Ukraine shall be determined by the Institution. A duty shall be
paid for submitting the application for recognizing the trademark as well-
known in Ukraine.

The decision of the Chamber of Appeals related to recognition of the
trademark as well known in Ukraine may be appealed in court.

4. From the date, when, according to the decision of the Chamber of Appeals
or a court, the trademark has become well-known in Ukraine, it shall be
granted legal protection the same as it would have been given, if the
trademark was submitted for registration in Ukraine. It shall also include
goods and services that are not related to those, for which the trademark was
recognized as well-known in Ukraine, if use of the trademark by another
entity with respectsuch goods and services shows the connection between
them and the owner of the well-known trademark and their interests may be
infringed upon by such use.

(the Law is added with Article 25 according to
the Law of Ukraine N 850-IV of May 22, 2003)



President of Ukraine

L. KRAVCHUK

Kyiv
December 15, 1993
N 3689-XII


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