Ukraine: Ministry of Economy launches new rules for drafting and filing trademark applications — challenges and opportunities for clients

02 Oct 2024    1 minute read
Trademark Applications National Trademark Applications International Trademark Applications Legal Protection to a Trademark

In brief

On 18 September 2024, new rules for the registration of trademarks in Ukraine came into force ("Rules"). In line with the order of the Ministry of Economy of Ukraine No. 19889 dated 6 August 2024, the Rules establish requirements for the preparation and, filing of a trademark application, an application for international trademark registration and examination of a trademark application, and international trademark registration with extension to Ukraine. The provisions of the Rules align with the requirements of EU legislation, which enables national producers to protect and recognize Ukrainian geographical indications in the EU.

The Rules establish the following, among others:

  • New forms and requirements for trademark applications
  • Procedure for filing national trademark applications and international trademark applications
  • Application of grounds for refusal to grant legal protection to a trademark

Contents

Key changes include the following:

  • Additional information from the applicant is now required, i.e., identification documents for natural persons, registration numbers from foreign legal entities.
  • There is new requirement for applying colors: along with the name of the color, it is now necessary to indicate its number in accordance with an internationally recognized color identification system, for example, the Pantone Matching System, RAL, Focoltone color scale.
  • More types of trademarks are now available for registration including positional, ornamental, motion, multimedia, color and color combinations. Such trademarks can be filed for registration with the help of multimedia formats MP3 and MP4.
  • A non-exhaustive list of grounds for determining a trademark as being contrary to public policy and generally recognized principles of morality has been provided.
  • A trademark disclaimer is now allowed, i.e., the removal of certain elements of a trademark from legal protection. This makes it possible to identify some words as commonly used, generic or descriptive and not requiring protection.
  • The Rules also establish the detailed procedure of filing and prosecution of electronic applications.

Recommendations

Overall, the Rules can be considered positive from a business standpoint. They contribute to the harmonization of Ukrainian legislation with EU legislation, providing applicants with broader possibilities for protecting the results of their intellectual activity and making some processes more predictable and smoother. On the other hand, it is recommended to be more attentive during the initial period, as we anticipate more requests from the Ukrainian IP Office in view of the finetuning of the whole procedure, as more information is now required to consider the application to be duly filed and accepted by the Ukrainian IP Office.

Click here to read the Ukranian version.

Contact Information
Ruslan Drobyazko
Partner
Kyiv
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ruslan.drobyazko@bakermckenzie.com
Myroslava Koval-Lavok
Counsel
Kyiv
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myroslava.koval-lavok@bakermckenzie.com

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