The protection of trade marks and copyrights in Ukraine is governed by laws and the respective secondary legislation.

The general provisions are provided by the Civil and Commercial Codes of Ukraine, while the detailed provisions are provided by the Trade Mark Law of Ukraine (the “Trade Mark Law”) and the Law of Ukraine on Copyright and Related Rights (the “Copyright and Related Rights Law”). There are also a number of Rules and Instructions (subordinate legislation).

As Ukraine is a civil law country, rights to trade marks and copyrights are based on statutory law.

Ukraine is a party to a number of international treaties:

• the Paris Convention for the Protection of Industrial Property (the “Paris Convention”);
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”);
• the EU-Ukraine Association Agreement;
• the Singapore Treaty on the Law of Trademarks;
• the Trade Mark Law Treaty (TLT);
• the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Agreement”);
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• the Nice Agreement on the International Classification of Goods and Services;
• the Berne Convention for the Protection of Literary and Artistic Works, revised in 1971;
• the Marrakesh Treaty to facilitate access to published works for persons who are blind, visually impaired or otherwise print-disabled;
• the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms;
• the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations;
• the WIPO Copyright Treaty; and
• the WIPO Performances and Phonograms Treaty.

All of these treaties, conventions and agreements are self-executing.

Foreign individuals and individuals without citizenship enjoy equal trade mark rights and obligations as provided by the local laws.

In Ukraine any sign or any combination of signs may be subject to trade mark protection. Such signs may be words (including personal names), letters, numerals, figurative elements, colours, shapes of products or their packaging (including three-dimensional marks) and sounds, provided that such signs are capable of distinguishing the goods or services of one person from the goods or services of other persons, and are appropriate for their reproduction in the register in such a way as to enable clear and precise scope of the granted legal protection.

Collective marks may also be registered in the name of an established association. In this case, the application should also be accompanied by the document that sets out the terms of use thereof and that includes the list of persons entitled to use such trade mark.

Designations reproducing surnames, names, pseudonyms and derivatives thereof, as well as portraits and facsimiles of well-known individuals in Ukraine, are not registerable as trade marks without their consent.

Additionally, according to the established practice of the National Office for Intellectual Property and Innovations (the “IP Office”), trade marks reproducing very widespread surnames may be refused as devoid of initial distinctiveness.

Meanwhile, the exclusive right of the certificate holder to prohibit other persons from using the registered trade mark without their consent does not extend to the bona fide use by third parties of their own names (including surnames).

Trade mark protection may be granted to industrial designs if they meet the requirements for trade mark protection (three-dimensional marks, for example).

Regarding statutory trade marks, legal protection shall not be provided in Ukraine to trade marks that represent or imitate:

• state armorial bearings, flags and other state symbols (emblems);
• full or abbreviated official names of states or international two-letter codes of states;
• emblems and abbreviated or full names of international intergovernmental organisations; and
• an official control or guarantee, or testing seals or stamps.

These signs may be included as non-protected elements of a trade mark, provided that there is the consent of the relevant competent authority or the owners thereof. Using the national symbols of Ukraine, such as the flag and the national coat of arms, is possible under a special law only, which has not yet been adopted.

Ukraine does not grant protection to marks that are famous outside the jurisdiction but that are not yet in use within Ukraine. However, if a third party files such a mark for registration in its name, it is possible to oppose the application based on non-compliance with public order, akin to the filing of trade marks in bad faith.

Trade mark protection may be granted to a designation that is inherently distinctive or that has acquired distinctiveness through its use before the application filing date.

The Trade Mark Law or secondary legislation does not specify particular requirements for or evidence of acquired distinctiveness. This question is considered on a case-by-case basis.

A pre-use requirement is not applicable in Ukraine.

According to the Civil Code of Ukraine, trade mark rights include:

• right to use a trade mark;
• exclusive right to authorise the use of a trade mark;
• exclusive right to prevent unauthorised use of a trade mark, including prohibiting such use; and
• other property rights established by law.

The Trade Mark Law provides that the certificate grants its owner the exclusive right to prohibit other persons from using, without their consent and unless otherwise provided by this Law:

• a designation identical to the registered trade mark concerning the goods and services listed in the certificate;
• a designation identical to the registered trade mark concerning goods and services related to those listed in the certificate, if such use may lead to confusion between this designation and the trade mark, particularly if an association between such designation and the trade mark may arise; and
• a designation similar to the registered trade mark concerning the goods and services listed in the certificate and related to those listed in the certificate, if such use may lead to confusion between these designations, particularly if an association between such designation and the trade mark may arise.

These rights endure throughout the duration of the trade mark’s validity.

In Ukraine, trade mark protection arises solely from its registration, whether through national or international procedures.

A trade mark is deemed to be used if it is applied in the form of the registered trade mark, and in a form that differs from the registered trade mark only by individual elements, provided that this does not alter the overall distinctiveness of the trade mark.

The owner of protected trade mark has the right to affix alongside the trade mark a warning marking ®, indicating that this trade mark is registered in Ukraine. The use of this symbol is entirely optional.

However, using the symbol ® for non-registered trade marks may entail liability according to unfair competition legislation.

In Ukraine, intellectual property rights are not singular, and a trade mark can be safeguarded by multiple forms of intellectual property protection. An emblem that is actually used as a trade mark might be protected under both trade mark and copyright law. Consequently, different instruments for enforcement will be applied.

If a trade mark constitutes a surname, it can be registered, subject to certain restrictions (as mentioned in 2.1 Types of Trade Marks).

According to the Copyright and Related Rights Law, objects of copyright include works in the field of literature, art and science, as follows:

• literary works of fiction, non-fiction, scientific, technical or other nature (books, brochures, articles, etc), in written, electronic (digital) or other forms;
• speeches, lectures, addresses, sermons and other oral works;
• musical works with or without lyrics;
• dramatic or musical-dramatic works, pantomimes, light and sound shows, circus performances, choreographic works, and other works created for stage performance, as well as their productions;
• theatrical productions, stage adaptations and adaptations of intangible cultural heritage suitable for stage performance;
• audiovisual works;
• translated texts for dubbing (including voice-over), subtitling of audiovisual works into other languages;
• works of fine art;
• photographic works;
• works of applied art, including decorative weaving, ceramics, carving, casting, artistic glass, artistic forging, jewellery, etc;
• architectural works, urban planning, landscape architecture and landscaping;
• works of artistic design;
• derivative works;
• collections of works, collections of adaptations of intangible cultural heritage, encyclopaedias and anthologies, collections of common data, and other compiled works, provided they are the result of creative activity in the selection or arrangement of content;
• illustrations, maps, plans, drawings, sketches, plastic works related to geography, geology, topography, engineering, construction and other fields of activity;
• computer programs;
• databases (data compilations), if the selection or arrangement of their components is the result of intellectual activity; and
• other works.

The aforementioned list of protected works is not exhaustive. Any objects that may fall under the concept of works of literature, art and science, both presently and in the future, will be subject to copyright protection.

Copyright protection may be granted to industrial designs if they meet the requirements for copyright protection.

Copyright protection extends solely to the form of expression of a work. All original works – whether published or unpublished, completed or incomplete, regardless of their purpose, genre, scope or mode of expression – are subject to protection.

Portions of a work that can be used independently – including the original title of the work, and original characters of the work when used separately from the work in which they are created – are considered works and are protected under the law.

Protection does not extend to the technologies of creation and expression of the work, nor to ideas, theories, principles, methods, procedures, processes, systems, ways, concepts or discoveries, even if they are expressed, described, explained or illustrated in the work.

A copyright in a work arises from the fact of its creation.

The primary subject of copyright is the author. Other natural or legal persons who have acquired property rights to the work through a legal transaction or by law may also be subjects of proprietary copyright rights.

According to presumption of authorship in the absence of evidence to the contrary, the author of the work is the individual who is indicated as the author in the original or copy of the work.

The author must be one or more physical persons. Authors who jointly engage in creative activities to create a work (a work created collaboratively) are considered co-authors.

For a work created during employment, the following provisions are provided:

• the moral rights belong to the employee whose creative labour produced such work; and
• the proprietary rights transfer to the employer in its entirety, unless otherwise provided by the law, the employment contract (contract) or any other agreement, concluded between the employee (author) and the employer.

With respect to objects created by an artificial intelligence software, the Copyright and Related Rights Law provides the sui generis right to non-original objects generated by computer programs, which are objects that differ from existing similar objects and are formed as a result of the functioning of a computer program without the direct involvement of a natural person in the creation of these objects.

Subjects of the sui generis right over non-original objects generated by a computer program may include individuals who possess property rights or licensing authority for the computer program that created the work – specifically, authors of such computer programs, their heirs, individuals to whom authors or their heirs have transferred property rights to the computer program, or legitimate users of the computer program. The contract may specify the conditions of ownership of sui generis rights over non-original objects generated by relevant computer programs.

Works created anonymously or under a pseudonym are also eligible for copyright protection. For more details, contact a local attorney.

Authors engaged in a collaborative creative activity that leads to the creation of a work – known as a work created in co-authorship – are considered co-authors.

If a work created in co-authorship constitutes an indivisible whole and is not otherwise provided for by contract or the aforementioned Law:

• the property rights belong jointly to all co-authors and are exercised with their mutual consent; and
• none of the co-authors has the right to refuse, without sufficient grounds, to grant permission to other co-authors for publication or adaptation of such work.

If a work created in co-authorship consists of parts each of which can be used independently and is not otherwise provided for by contract or the above Law, each co-author has the right to exercise property rights over the part of the work created by them, provided that such actions do not harm the normal use of the work and do not unjustly restrict the legitimate interests of the respective copyright holders.

In the case of copyright infringement of a co-authored work, each co-author has the right to seek protection, including through legal action.

Remuneration for the use of a co-authored work is divided equally among the co-authors unless otherwise established by contract or the above Law.

In Ukraine, copyright consists of the author’s personal moral rights and the property rights of copyright holders.

The list of moral rights provided by the law is exhaustive, while the list of property rights is open-ended.

The moral rights of the author include:

• the right to demand recognition of authorship;
• the right to prohibit the mentioning of their name during any use of the work;
• the right to choose a pseudonym, and to specify and demand the mentioning of the pseudonym instead of the real name of the author;
• the right to demand the preservation of the integrity of the work, and to oppose any distortion, alteration or other modification of the work, including the addition of illustrations, prefaces, afterwords, comments, etc, without the author’s consent;
• the right to provide a title to the work or to leave it untitled; and
• the right to dedicate the work to a person (or persons), event or date.

Personal moral rights belong exclusively to the author and cannot be transferred or inherited by other persons.

The copyright holder has the right to use the work in any way(s), as well as the exclusive right to permit or prohibit the use of the work by other individuals.

Methods of using the work include:

• reproduction;
• inclusion in a composite work;
• inclusion in another work, excluding a composite work;
• distribution of copies of the work;
• importation of copies of the work;
• leasing or lending copies of the work;
• public performance, public display, public demonstration, public notification, interactive provision of access to the public, and other methods of making the work available to the public;
• translation; and
• adaptation, arrangement and other similar alterations of the work.

This list is not exhaustive.

In Ukraine, the general term of validity of copyright expires after 70 years, calculated from January 1st of the year following the year of the author’s death.

There are also specific requirements on the term of validity for works published anonymously or under a pseudonym. For more details, contact a local attorney.

The term of copyright validity for a work created in collaboration expires after 70 years, calculated from January 1st of the year following the year of the last co-author’s death. The term of validity of intellectual property rights to an audiovisual work expires after 70 years, calculated from January 1st of the year following the year of the last author’s death.

The law also specifies a special term of proprietary rights for unpublished works. For more details, contact a local attorney.

Ukrainian legislation does not include provisions allowing early termination of proprietary rights. The author’s personal moral rights are protected indefinitely.

In Ukraine, collective management of property rights is carried out by collective management organisations in accordance with the Law on Effective Management of Property Rights of Rights Holders in the Field of Copyright and (or) Related Rights, which provides for voluntary collective rights management, based on an agreement between the rights holder and the respective organisation, as well as for mandatory rights management in cases stipulated by the Copyright and Related Rights Law.

There are several different collective rights management organisations in Ukraine that collect royalties on behalf of their members, depending on the field of creative activity and types of objects, as well as collective rights management organisations authorised by governmental authority for collecting royalties in cases of mandatory rights management.

In Ukraine, a copyright in a work arises from the fact of its creation. For the establishment and exercise of copyright, registration of copyright or any other special formalities is not required, nor are any other special formalities. However, registration of the copyright is possible.

The author may register their copyright in the respective state registry to authenticate their personal moral rights and/or property rights to the work (whether published or unpublished), as well as the fact and date of its publication and the acquisition of property rights under a contract or law. Each party to the contract concerning property rights to the work is entitled to register the contract in the IP Office, which issues a certificate for copyright registration and a decision on contract registration.

A copyright holder may use the copyright protection symbol © to indicate their ownership rights. This symbol should be accompanied by the name (or legal entity name) of the copyright holder and the year of the work’s first publication.

The state registration of copyright and agreements relating to the author’s rights to the work is carried out in accordance with the Rules adopted by the Ministry of Economy of Ukraine.

The following documents and information are required:

• an application, according to the established form;
• a copy of the work;
• a document confirming the fact and date of publication of the work (if available);
• a document on the payment of the established fee;
• a document confirming the authority of the representative (if the application is filed with the participation of the applicant’s representative);
• a certificate of inheritance rights, if the application is filed by an heir;
• documents confirming the creation of a work for hire in connection with the performance of duties by an employee – for more details, contact a local attorney; and
• documents confirming the transfer and ownership of such rights, if the application is filed by the customer.

The official fee for copyright registration is established by the Cabinet of Ministers of Ukraine, and may vary between EUR6 and EUR13 depending on the status of the person who has filed the application (an individual or a legal entity).

The IP Office may issue a refusal to copyright registration if:

• the applicant has not corrected errors in the application or has not provided additional documents specified in the IP Office’s request;
• the application concerns an object not protected by copyright;
• the application is filed in violation of the rights and legitimate interests of third parties;
• the application contains information that contradicts universally recognised principles of morality and public order; and
• the applicant or the person related to the application – including as the author, co-author, compiler, heir, employer, customer, party to the contract, or other subject of copyright to the work for which the application is filed – is a person associated with the aggressor state.

The actions or inaction of the IP Office, including the refusal to register copyright, may be challenged in court.

If an application package contains incomplete documents or improperly prepared documents, or if there are reasonable doubts regarding the accuracy and/or completeness of the information provided, the IP Office shall, within one month of receiving the application documents, send the applicant a request to:

• address the identified deficiencies in the application documents; and
• provide additional documents necessary for the review of the application.

The applicant must submit the corrected information and/or required documents to the IP Office within three months of receiving the request.

In Ukraine, intellectual property rights can be safeguarded through various forms of intellectual property protection. A copyright may be protected as a trade mark or a design if it meets the respective requirements for these objects. As a result, different enforcement mechanisms will be applied.

Exclusive rights to permit or prohibit the use of a certain trade mark by third parties may be acquired through the trade mark registration process only.

To register a trade mark, a person must file the respective application with the IP Office or an international registration designating Ukraine. Furthermore, it is possible to obtain a fully valid legal protection for a well-known trade mark in Ukraine when recognised as such by the Chamber of Appeals of the IP Office or by the court.

Legal protection shall be granted to a mark that:

• is distinctive;
• does not contradict public order or moral principles; and
• is not subject to refusal according to the grounds defined by the Trade Mark Law.

Different types of marks (including trade dress – for example, in the form of three-dimensional marks) are registrable if they can fulfil the trade mark function of identifying the origin of the goods.

The IP Office maintains the State Register of Trade Marks (the “State Register”), which includes all registered Ukrainian trade marks. The State Register is publicly available on the IP Office’s website, which also publishes applications filed for registration in the online Official Bulletin.

Information about registered marks and filed applications is available on the IP Office Information System, an online unified search engine providing information about all IP objects.

Bearing in mind that the IP Office conducts a substantive examination (including checking of prior rights), it is highly recommended to conduct a full availability trade mark search before filing a new application.

The IP Office also maintains a register of well-known trade marks. This is not a State Register, but rather a list of trade marks recognised as well known in Ukraine by the Chamber of Appeals of the IP Office or by the court.

The term of protection of a trade mark is ten years calculated from the application filing date. A trade mark may be renewed for the next ten years each time upon request of the trade mark owner, provided that the renewal fee has been duly paid. Late payment is possible within six months after the trade mark expiry date (subject to an extra fee). For more details, contact a local attorney.

The martial law imposed in Ukraine in 2022 caused legal ambiguity regarding IP rights terms. According to the relevant law, IP rights, the validity of which expire on the day of imposition of the martial law in Ukraine or during the martial law, shall remain valid until expiry or cancellation of the martial law.

Upon the expiry or cancellation of the martial law, the validity of IP rights may be extended as per regular IP law. The main purpose of this provision, in conjunction with other sections of the law, can be interpreted as a temporary suspension of deadlines for IP renewals and other prosecution terms. Registration of copyright does not require any maintenance and remains valid throughout the full term of copyright protection.

The following information and documents are required for filing a trade mark application in Ukraine:

• applicant’s data (full name and address);
• representation of the mark (in colour, if claimed);
• list of goods and/or services the trade mark is applied for; and
• power of attorney (POA) signed by a duly authorised person.

The POA should be simply signed, and in some cases may be the subject of notarisation. Legalisation is not required. For more details, contact a local attorney.

In respect of certain specific types of trade marks, additional data is also required, particularly as follows:

• sound mark – recorded phonogram and musical score;
• colour mark – examples of how the applied mark will be used in respect of goods and/or services; and
• three-dimensional mark – all views of the applied mark.

No grounds for filing the application are required (such as actual use or intention to use the applied mark).

Prosecution of a trade mark application filed in the name of a foreign person may be performed through a Ukrainian trade mark attorney only.

A trade mark may be registered in the name of a legal entity or an individual regardless of whether it has the status of a private entrepreneur. Co-ownership is also permitted. In this case, there is no need to provide the IP Office with the co-ownership agreement.

Multiple-class applications are permitted in Ukraine. The official filing fee depends on the number of applied classes but not on the number of selected goods/services.

The filing fees for trade mark applications depend on a number of circumstances, such as the presence/absence of colour, the quantity of classes of the ICGS and the quantity of applicants.

There is no requirement regarding the use of the applied mark in commerce before protection is granted in Ukraine.

However, a trade mark owner is obliged to use its mark after registering. If a trade mark is not used in Ukraine for a continuous five years from the publication of the registration, or if such use has been suspended for the same term from any other date following the publication, any person can apply to the court for non-use cancellation of the trade mark, either fully or partially.

The IP Office conducts a substantive examination to check the prior rights, for, inter alia:

• trade marks, including those recognised as well known in Ukraine;
• trade names that are known in Ukraine and belong to other persons who have acquired the right to said names before the application filing date with respect to identical or similar goods and services;
• conformity marks (certification marks) registered in accordance with the established procedure;
• industrial designs belonging to other persons in Ukraine;
• geographical indications;
• copyright; and
• surnames, first names, pseudonyms and their derivatives, portraits and facsimiles of persons known in Ukraine without their consent.

The applicant may introduce different changes, amendments or corrections into a filed application (which are subject to payment of the official fee) regarding:

• the applicant’s name and address not connected to an assignment of the application;
• the representative’s name and address;
• the address for correspondence;
• the applicant’s name and address due to assignment of the application; and
• the limitation of goods and services, etc.

It is not possible to amend the image of the applied mark or to extend the list of goods and services.

The applicant may also withdraw the application at any stage of prosecution.

It is possible to divide a trade mark application before the IP Office issues a decision thereon.

Filing a request for dividing the initial application and filing the divisional application(s) are subject to payment of the official fee.

The date of filing the divisional application shall be considered the same as the date of filing the divided application. The priority date of the divisional application shall be determined the same as the priority date of the divided application, if there are grounds for that.

Normally, the IP Office does not check the information provided by the applicant. However, in case of any doubts in respect of the filed documents/materials, the responsible examiner may send its request, and the applicant has two months to respond.

The applicant is responsible for accuracy of information provided to the IP Office.

The registration of a trade mark shall be granted to a mark that is inherently distinctive, does not contradict public order or moral principles, and is not subject to refusal according to the grounds defined by the Trade Mark Law.

Since the IP Office conducts a substantive examination, a provisional/final refusal may be based both on absolute and relative grounds.

The list of absolute grounds for refusal is broad and (among others) covers signs:

• contradicting public order or moral principles;
• inherently devoid of distinctiveness;
• consisting exclusively of the shape, or another characteristic, which results from the nature of the goods themselves, is necessary to obtain a technical result or gives substantial value to the goods;
• reproducing registered or applied-for plant varieties (PVs); and
• containing registered or applied-for geographical indications (GIs).

Furthermore, the Trade Mark Law extended relative grounds for refusal by adding the following:

• that the trade mark is identical/similar to an earlier right by association (not only by confusion);
• that the trade mark is identical/similar to a well-known trade mark, to the extent that it may cause confusion or association; and
• that the application has been filed by an agent or representative in its name without the owner’s consent, if there is no evidence to justify such filing and the owner has objected thereto (Article 6 septies of the Paris Convention).

If a provisional refusal is issued, the applicant has two months for filing arguments in favour of the registration. For international registrations, this term is three months. These deadlines may be extended for three or six months (subject to a fee).

If the final refusal was issued, the applicant may appeal the decision to the Chamber of Appeals of the IP Office or to the court within two months of receiving the final decision.

Ukraine is a party to the Madrid Agreement and the Madrid Protocol.

International registrations in Ukraine are granted the same legal protection as national applications. The IP Office neither issues local registration certificates in respect of international registrations nor maintains the national register of the international registrations protected in Ukraine.

Assignments and assignment agreements regarding the international registrations (even though they designate Ukraine only) may be registered through the World Intellectual Property Organization (WIPO) only.

Opposition

The IP Office publishes filed applications in the online Official Bulletin after the filing date. Once published, any person can file an opposition within three months after publication. This term is not extendable.

However, the martial law imposed in Ukraine in 2022 caused legal ambiguity regarding IP rights terms, including timeframes for filing oppositions.

Cancellation

The legislation does not impose any statutory limitations or time periods within which to file claims for invalidity. The general limitation period of three years applies (see 7.1 Timeframes for Filing Infringement Lawsuits).

However, when filing claims for trade mark cancellation, proving certain circumstances is often linked to the use of the trade mark, which may require filing a claim after an indefinite period (for example, after the trade mark has become generic or started to mislead the public), or within a clearly defined period (the five-year non-use period).

Opposition

An opposition may be based on absolute and relative grounds for refusal – inter alia, it may be filed:

• if a mark is identical to or is misleadingly similar to marks that have been registered or applied for registration for similar or related goods and services in Ukraine in the name of another person;
• if a mark is misleading or capable of deceiving the public as to the goods, services or person manufacturing the goods or providing the services; or
• if a mark is identical to or is misleadingly similar to marks of third persons, where such marks are protected without registration, particularly marks recognised as well-known.

Each and all grounds for refusal of a trade mark application may serve as the basis for filing a trade mark invalidation action as well.

Risk of dilution or exploitation of goodwill may not be a separate ground for refusal but should arise from confusing similarity of the compared marks or the misleading nature of the conflicting mark as to the goods/services or a person producing goods and/or providing services.

Revocation/Cancellation

A revocation (invalidation) trade mark action may be filed in the following cases:

• non-compliance of the registered trade mark with the conditions for granting legal protection (mentioned in 4.10 Refusal of Registration);
• presence in the certificate of trade mark elements or a list of goods and services not included in the submitted application; and
• issuance of the certificate as a result of submitting an application that violates the rights of other parties.

A trade mark declared invalid is considered as not having taken effect from the date following the filing date of the application. Consequently, the IP Office makes the necessary amendments to the relevant trade mark register and publishes this information in its Official Bulletin.

A trade mark cancellation action may be filed if:

• the trade mark becomes a generic term for a particular type of goods/services after the date of publication of the information about the issuance of the certificate;
• due to the use of the trade mark by its certificate holder or by another person with their permission, it may mislead the public, particularly regarding the origin, quality or geographical origin of the goods/services for which it was registered; or
• the trade mark has not been used continuously in Ukraine for five years from the date of publication of the information about the issuance of the trade mark certificate, or if its use has been suspended for another reason after that publication for a continuous period of five years.

A trade mark is cancelled from the date of the court decision thereon. The IP Office then makes the necessary amendments to the trade mark register and publishes this information in its Official Bulletin.

The re-examination procedure is not carried out by the IP Office in the aforementioned cases; the court independently determines the grounds for invalidity or cancellation.

Copyright legislation does not provide specific requirements for the revocation or cancellation of copyright. It follows from the case law that, based on a claim seeking to establish the absence of authorship of a work, parties may also assert a claim for the invalidation of a certificate regarding the registration of copyright.

Foreigners, stateless persons, foreign legal entities and other persons having a place of permanent residence or permanent location outside Ukraine have a right to file an opposition through Ukrainian trade mark attorneys only. Ukrainian individuals or legal entities may act without involving trade mark attorneys.

The official fee for filing an opposition is UAH2,000. The agent’s fee is normally calculated on an hourly basis and depends on the complexity of the matter, the necessity of collecting respective evidence and preparing a Ukrainian translation, etc. The opposition procedure does not envisage any compensation for the opponent’s expenses.

Although possession of the earlier trade mark application or registration is a strong argument, the opponent does not necessarily need to own a registered trade mark, since other valid prior rights can be invoked.

A revocation/cancellation proceeding may be initiated by an individual or legal entity who considers their rights or legitimate interests to have been infringed, unrecognised or disputed due to the existence of another trade mark or copyright. According to case law, the plaintiff must demonstrate at least their legal or commercial interest in taking such actions.

The opposition may be filed within three months from the publication date. This term is not extendable. For a description of the opposition procedure, see 5.2 Legal Grounds for Filing an Opposition or Cancellation.

Revocation/cancellation actions can only be brought before the civil and commercial courts.

Partial revocation/cancellation is possible. If the grounds for revocation/cancellation of the trade mark certificate apply to certain goods or services, the certificate shall only be terminated partially.

A post-grant opposition can be filed with the Chamber of Appeals within two months of receiving the final decision, but only by a person who filed a pre-grant opposition.

The period for consideration of the opposition is two months from receipt thereof, along with a respective payment receipt by the Chamber of Appeals, and may be extended for no more than two months, provided that the relevant request is submitted and the respective fee is paid.

The IP Office’s final decision on the application may also be appealed to the court.

The grounds for appealing the IP Office’s final decision are the same in both post-grant opposition and court procedures.

If the opposition is filed, a copy thereof is sent to the applicant, who has 15 days to respond, from the notification date.

The opposition procedure includes filing written materials and conducting oral hearings, the number of which depends on the complexity of the case. Both the opponent and the applicant are parties to the proceedings.

A grounded decision of the Chamber of Appeals may be challenged by the applicant or opponent through the court within two months from the date of receipt thereof.

The general requirements of procedural law apply. After filing a statement of claim but before the consideration of the case on merits, the subject or grounds of the claim may be amended, and the amount of the claim may be increased or decreased.

The current legislation does not contain any prohibitions or restrictions as to filing actions involving revocation/cancellation and infringement being heard together.

According to procedural law, a statement of claim may combine several claims that are related by their grounds or the evidence presented, including both primary and ancillary claims (those whose satisfaction depends on the satisfaction of primary claims).

The court may join multiple cases into a single proceeding if a claim is filed by:

• the same plaintiff against the same defendant;
• the same plaintiff against different defendants; and
• different plaintiffs against the same defendant.

A claim for revocation/cancellation and infringement may be filed within one proceeding, or different claims may be filed with one court and subsequently joined into one proceeding.

However, claims that fall under different types of court procedures cannot be joined into a single proceeding. For more details, contact a local attorney.

National legislation does not provide for a specific procedure for terminating trade marks or copyrights that were filed fraudulently and for special liability for such actions.

However, at the registration stage, an opposition may be filed in cases where the mark may be misleading as to the person producing the goods or providing the services, if filed for registration on its own behalf by an agent or representative of the person using a mark in a foreign country, etc. Upon consideration of such opposition, the trade mark may be refused.

The registered trade mark may be declared invalid if the filed application violates the rights of other parties.

In Ukraine, only a registered trade mark may be assigned. If a trade mark application is under examination, it is possible to assign the right to obtain the certificate (assignment of the application). The assignment agreement for a registered mark is subject to mandatory registration by the IP Office.

A copyright may be assigned for an actually created (existing) work.

The copyright and trade mark assignment agreements must be concluded in writing.

Partial assignments of trade marks or copyrights are permitted.

A mark may be partially assigned provided that no similar goods and services remain in the trade mark registration subject to partial assignment.

The proprietary rights to the work may be transferred (alienated) to another person based on the law or legal transaction entirely (for all methods of using the work worldwide) or partially (for specific methods of using the work worldwide or for all or specific methods of using the work in certain countries).

The rights to a trade mark and copyright can be inherited.

Licences may be issued only in respect of registered trade marks or actually created works.

The registration of licences is not mandatory and may be performed upon the request of one of the interested parties. Trade mark and copyright licences must be concluded in writing.

It is possible to issue different types of licences, including exclusive, non-exclusive and sole licences.

A licence for a trade mark or copyright may be issued for the full term of protection of the respective object but may not exceed this term.

Trade mark applications cannot be licensed.

The assignment agreement regarding a trade mark must be registered with the IP Office, while registration of the copyright assignment is not mandatory.

Registration of licence is not mandatory for trade marks and copyright.

The assignment agreement relating to trade marks will become effective for third parties, including courts and governmental authorities, from the date of its registration by IP Office.

The general limitation period is three years unless a special limitation period is established. This period commences from the day when the person learned or could have learned about the infringement of their rights or about the person infringing those rights. A special limitation period is not envisaged for trade mark or copyright infringement actions.

Legal Claims

For trade mark protection, such claims may include:

• prohibition of unauthorised use of a trade mark;
• removal from goods/packaging of unlawfully used trade marks, and destruction of manufactured images of a trade mark or confusingly similar designations; and
• declaration of invalidity of a trade mark certificate.

For copyright protection, claims may include:

• recognition of copyright;
• restoration of the situation that existed prior to the infringement;
• cessation and/or prohibition of actions that infringe copyright or pose a threat to their infringement;
• termination of preparatory actions for the infringement of copyright, including by suspending customs procedures if there is reason to believe that pirated copies of works, phonograms, videograms, and means of circumventing technological protection of copyright, etc, might be admitted into or from the customs territory of Ukraine;
• publication, at the infringer’s expense, in the mass media of information about committed infringements of copyright and court decisions regarding these infringements; and
• implementation of other measures provided by law related to the protection of copyright.

For both trade mark and copyright infringement, claims may include:

• compensation for material damage (including damages and lost profits), recovery of income, etc; and
• compensation for moral damage.

Ukrainian legislation does not restrict the rights-holder in choosing a legal claim, even if such a claim is not directly provided for by law but is effective in defending the violated right.

According to Ukrainian legislation, the right to permit or prohibit the use of a trade mark (or confusingly similar designations) arises from the certificate issued by the IP Office or under the Madrid Agreement. Since May 2024, the Supreme Court has ruled that a well-known trade mark no longer automatically allows enforcement (as was the case previously). Infringements now require a separate determination of the trade mark’s well-known status in each case, regardless of previous recognition.

In Ukraine, copyright arises from the moment a work is created and does not require any registration. However, according to relevant court practice, the burden of proving ownership of the copyright rests with the plaintiff.

In the sphere of intellectual property, secondary liability is not directly provided under Ukrainian legislation.

Trade Mark and Copyright Infringement

Any unauthorised use of a trade mark (in its registered form or confusingly similar designation) or copyrighted work constitutes infringement.

The unauthorised use of a trade mark may include:

• applying the trade mark to any goods for which the trade mark is registered, including packaging containing such goods and signage associated with them, labels, patches, tags or other items attached to the goods, and storing such goods with the trade mark applied for the purpose of offering for sale, offering for sale, selling, importing and exporting;
• using it in the offering and provision of any service for which the trade mark is registered; and
• applying it in business documentation, advertising and on the internet.

The following forms of unauthorised use of a copyrighted work may constitute infringement:

• reproduction;
• inclusion in a composite work and in a work other than a composite;
• distribution of copies of the work;
• importation of copies of the work;
• rental or lending of copies of the work;
• public performance, public display, public demonstration, public notification, interactive provision of access to the public, and other ways of bringing to the attention of the public;
• translation; and
• transformation, adaptation, arrangement and other alterations of the work.

The above list is not exhaustive.

Infringement Elements

In trade mark disputes, the plaintiff must prove:

• the existence of trade mark rights (national/international registration or that the trade mark is well known in Ukraine);
• the fact (or threat) of infringement; and
• in specific cases, the amount of material and/or moral damage, and the causal link between the infringer’s actions and the harm caused.

In copyright disputes, the plaintiff must prove:

• the plaintiff’s ownership of copyright or the right to their protection;
• the fact of unauthorised use of a copyrighted work; and
• in claims for compensation for material and/or moral damage, the extent of the damages and the causal relationship between the harm suffered and the actions of the infringer.

Unfair Competition

The Law of Ukraine on Protection Against Unfair Competition imposes liability for the unlawful use of the business reputation of an economic entity, including the unauthorised use of an entity’s trade mark or similar designations in economic activities, which has led or may lead to dilution of the activities of such entity. The Anti-Monopoly Committee of Ukraine enforces liability for unfair competition in Ukraine. Rights to unregistered marks may also be protected by filing a complaint with the Anti-Monopoly Committee of Ukraine.

Cybersquatting

Unauthorised use of trade marks in domain names is unlawful. Thus, the rights-holder has the right to bring an action to cease such use of a trade mark in domain names, with the termination claim of the delegation or transfer of the domain name that infringes on trade mark rights.

According to the Trade Mark Law, the use of a trade mark or a confusingly similar designation without the consent of the rights-holder constitutes infringement. However, there are exceptions where the use of a trade mark does not require the consent of the rights-holder (refer to 9.1 Defences to Trade Mark Infringement).

The unauthorised use of an author’s work is deemed unlawful under Ukrainian legislation. Simultaneously, the Copyright and Related Rights Law provides an exhaustive list of exceptions that permit the use of copyright objects without the rights-holder’s consent (refer to 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing)).

In Ukraine, no prerequisites exist for suing a trade mark or copyright infringer. While it is common, not mandatory, for the owner to send a cease-and-desist letter before filing a lawsuit, the claim should mention any prior attempts to resolve the issue out of court.

Additionally, considering a case’s specifics, the court may require the plaintiff to deposit a sum of money into the court’s account to secure potential reimbursement of the defendant’s legal costs. This applies if the claim seems obviously unreasonable or for an abuse of the right to sue.

Jurisdiction

Trade mark and copyright disputes, including infringement proceedings, between individuals or individuals and legal entities fall under the jurisdiction of civil courts. Disputes between legal entities should be heard by commercial courts. These rules apply to first, second and third instances.

Usually, attorneys represent the parties in litigation; however, self-representation is also permitted.

Foreign trade mark or copyright owners may bring infringement claims in Ukraine through local attorneys. The trade mark must be registered or its status as well known must be proved during the consideration on merits in a relevant court case in Ukraine, while copyright registration is not required.

Costs Before Filing a Lawsuit

Such costs typically involve:

• the test purchase of the infringing products;
• evidence notarisation and translation;
• postal services for sending cease-and-desist letters; and
• an IP expert report (if necessary).

The court fees for filing the statement of claim and a preliminary injunction request are also normally incurred before filing a lawsuit.

An alleged infringer may not initiate declaratory judgment proceedings. However, the defendant is entitled to file a motion requesting the court to oblige the plaintiff to deposit a sum of money into the court’s deposit account. This deposit ensures the possible reimbursement of the defendant’s future litigation costs.

Additionally, the court may require the plaintiff who filed for a preliminary injunction to compensate the defendant for any possible losses that may arise from the injunction.

In Ukraine, all trade mark or copyright claims, regardless of their size or scope, must be resolved through the courts. There are no alternative legal bodies or forums that handle these specific types of disputes.

The IP Office’s decisions have no direct effect on infringement actions. Nevertheless, the court may take such decisions into account when delivering the final decision on the merits of the case.

In Ukraine, a counterfeit mark refers to an unauthorised reproduction of a trade mark that is identical or confusingly similar to a registered trade mark, and used in relation to goods or services for which the trade mark is registered.

Copyright counterfeiting typically involves illegal reproduction, importation into or exportation from the customs territory of Ukraine, and distribution of pirated copies of works (including computer programs and databases, phonograms, videograms, illegal use of broadcast programming, camcording and internet piracy).

The legal system provides for both civil and criminal remedies against counterfeiting. Civil actions may include injunctions, claims for damages, and the seizure and destruction of counterfeit goods. Criminal penalties include fines, confiscation of counterfeit goods, penal labour or imprisonment.

Criminal liability also extends to the illegal production, storage, sale or transportation with the intent to sell excisable goods, including alcoholic beverages and tobacco products.

There are no special procedural provisions for trade mark or copyright proceedings in Ukraine. Currently, such proceedings are considered by civil and commercial courts (until the High Intellectual Property Court is established in Ukraine). The respective litigation cases are usually assigned to judges with the necessary level of experience in IP disputes. Parties do not influence judge selection, which is made automatically by the court case distribution system. A presiding judge or a party may request an IP expert opinion in cases where specific knowledge is required.

Only the owner of a registered trade mark holds exclusive rights to use the mark or to prohibit its use, including through legal proceedings. Unregistered trade marks may be protected if recognised as well known in Ukraine by the court or the Chamber of Appeals of the IP Office.

In addition to judicial protection, it is also possible to approach the Anti-Monopoly Committee of Ukraine with a request to protect against unfair competition. For more details, contact a local attorney.

An infringement claim generally depends on whether the alleged infringer’s use of a mark is likely to confuse consumers. Therefore, the use of the same or similar mark on the same or related goods/services is crucial to establishing a likelihood of confusion and, consequently, infringement. Well-known trade marks, however, may be protected more broadly, covering even dissimilar goods if the use harms their distinctiveness or reputation.

For copyrights, although registration is not mandatory in Ukraine, holding an official registration can significantly enhance the copyright holder’s position in litigation. It serves as prima facie evidence of copyright ownership and the originality of the work, thus simplifying the enforcement process and reducing the evidentiary burden.

The typical costs for bringing an infringement action to a conclusion in the first instance include court fees, professional fees and the costs associated with preparing expert reports. The overall cost varies depending on the specific circumstances of each case.

The exclusive right of a trade mark owner to prohibit unauthorised use of the registered trade mark does not apply in the following situations:

• exercise of any right acquired before the trade mark filing date, or the priority date (including the right of prior use);
• use of the trade mark for a product that has been placed on the market under the trade mark by the owner or with their consent;
• use of the trade mark in a manner related to the type, quality, quantity, destination, value, geographical origin, time of production of goods or provision of services, or other characteristics of goods or services, provided it does not infringe on the rights of the trade mark owner;
• use of the trade mark in commerce when it is necessary to indicate the intended purpose of a product or service – for example, as accessories or spare parts (descriptive use);
• use of the trade mark in comparative advertising;
• non-commercial use of the trade mark;
• all forms of broadcasting news and commenting on news;
• fair use of names or addresses of other persons;
• use of the trade mark in comparative advertising and not associated with unfair business practices; and
• the exclusive right of the owner of a trade mark certificate containing a geographical indication to prohibit other persons from using the registered trade mark without their consent does not apply to the fair use of the respective geographical name by other persons.

For more details, contact a local attorney.

Additionally, a counterclaim may be filed as a defensive strategy to invalidate an earlier registered trade mark or to cancel its registration due to non-use.

The Copyright and Related Rights Law provides the following exhaustive list of fair uses/fair dealings (without the copyright holder’s permission and free of charge, but with attribution to the author and source):

• quotations, including translations, from legally published works such as newspaper articles can be used in press reviews if they serve a critical or informational purpose and are clearly marked as quotations;
• legally published articles and short works, including excerpts from various works, can be reproduced digitally for educational or research purposes, with no commercial benefit and where usage is aligned with the intended educational or research goal;
• educational institutions may reprographically reproduce legally published articles and other short works for teaching, provided the reproduction is limited to educational purposes and is not systematic;
• digital reproduction and access to legally published short works and excerpts for remote learning are allowed, with protective measures against unauthorised access;
• previously published articles on current issues can be reproduced and distributed unless explicitly prohibited by the author;
• public disclosure of works seen or heard during current events is allowed for reporting purposes, provided the use aligns with the informational objective;
• reproduction of works in catalogues for publicly accessible exhibitions, auctions, fairs or collections is permitted, as long as the catalogues are not used for commercial purposes;
• publicly delivered speeches, addresses, reports and similar works can be reproduced and made known publicly to the extent that it serves the intended purpose;
• lawfully published literary, artistic, musical and other works may be used to create pastiche, parody or caricature;
• creating images of architectural and visual art works located in publicly accessible places and using these images, provided such actions carry no independent economic significance;
• adaptation of audiovisual works through audio description (descriptive video service);
• reproduction in the State Register of copyright registration certificates and the State Register of copyright-related contracts;
• recording of works for short-term use by broadcasting organisations for their own programmes, with the right to public dissemination; and
• production of copies of works from lawful sources for text and data mining related to scientific publications or research, provided there is no direct prohibition by copyright owners, especially via computer-readable means on digital content accessible online.

For more details, contact a local attorney.

The right to free speech is a fundamental right, and there are instances where this right intersects with copyright law, particularly in the realms of news reporting, commentary and non-commercial research. The use should not conflict with normal exploitation of the work and should not unreasonably prejudice the legitimate interests of the copyright owner.

The Trade Mark Law does not explicitly determine a certain IP exhaustion regime. Meanwhile, the current jurisprudence tends to apply the international trade mark exhaustion principle. However, the exhaustion system will not apply if the state of the product has changed or worsened upon the first sale. In such a case, a trade mark holder may prohibit the use of its trade mark on parallel imported products.

The Copyright and Related Rights Law clearly provides a national exhaustion regime for works. If copies of the work have been lawfully introduced into civil circulation by their first sale in Ukraine, further alienation of these copies without the consent of the copyright holder and without payment of remuneration (exhaustion of rights) is permitted, except for original works of art, the further alienation of which is subject to payment of remuneration for the right of resale. The provisions of this paragraph do not apply to interactive provision to the public of access to the work.

Preliminary injunctions are available either before filing a claim or at any stage of the case if failure to take such measures may significantly complicate or make it impossible to enforce the court decision, or to restore the violated or disputed rights or interests of the plaintiff.

In trade mark or copyright invalidation disputes, the courts may apply preliminary injunctions against a defendant who holds a disputed trade mark or copyright certificate, namely prohibiting transfer of rights, abandonment of a disputed trade mark and granting of rights to use a disputed trade mark or work to third parties.

Trade Marks

The infringement must be stopped upon the request of the trade mark owner, and the infringer is obliged to compensate the owner for any material damage through reimbursement of losses or payment of compensation, and for any non-material (moral) damage caused.

The amount of damages is determined by the court, taking into account the profits lost by the trade mark owner or income gained by the infringer as a result of the rights infringement.

The court determines compensation based on the extent of the infringement, the infringer’s fault and other factors. It cannot be less than the fee that would have been paid for permission to use the trade mark. If the infringement was unintentional and not negligent, the compensation equals that fee.

Copyright

The copyright owner has the right to seek legal protection and demand compensation for damages caused by copyright infringement, including lost profits or profits earned by the infringer, or to claim compensation.

When determining the amount of compensation, the court considers:

• the duration and systematic nature of the infringement;
• the extent of the violation (including the geographic scope of its distribution);
• the economic sector involved;
• the intentions of the infringer;
• culpability and its forms; and
• other objective circumstances.

Initially, the plaintiff pays the court fees to commence the proceedings. As a rule, the losing party must reimburse these court fees to the prevailing party.

Regarding attorneys’ fees and other litigation expenses, reimbursement by the losing party is contingent upon a court ruling concerning the distribution of these expenses.

If a party or its representative abuses procedural rights, or if the dispute arises from the party’s bad faith actions, the court may order such party to pay all or part of the litigation fees, regardless of the dispute’s outcome.

A trade mark or copyright owner cannot seek relief on the merits of an infringement case without notifying the defendant, as required by the procedural laws of Ukraine. Typically, the court issues a writ of summons or a subpoena to the defendant. However, the court may issue a preliminary injunction ex parte, without prior notification to the defendant. Additionally, during criminal proceedings, an infringer may not be notified about the seizure of counterfeit products.

Current Ukrainian law enables customs to seize counterfeit goods. To facilitate the identification of possible counterfeits at the border, a trade mark or copyright should be registered with the Customs IP Registry of Ukraine.

Upon detecting infringing products, customs officials must immediately notify a representative of the trade mark or copyright owner and temporarily suspend the customs clearance of such goods. This suspension period lasts for ten business days and can be extended by an additional ten business days upon a reasonable request. During this period, the trade mark or copyright owner may take defensive actions, including:

• filing a court action, which includes an application for a preliminary injunction to halt customs clearance of the infringing goods, and a statement of claim for infringement of IP rights at the customs border; and
• requesting the customs authorities to either destroy the counterfeits or remove the infringing marks from the products and/or packaging.

In some instances, it may be necessary to obtain samples of the counterfeit products and prepare an expert report.

Per applicable customs regulations, seizures should not apply to genuine goods manufactured with the consent of the rights-holder or by a person authorised by the holder. Therefore, customs officials typically do not suspend the clearance of parallel imports.

Both trade mark and copyright infringement decisions can be appealed with the appellate court. The statement of appeal must specify what violations of procedural law norms or incorrect applications of substantive law norms have occurred and that led to the issuance of an erroneous decision.

An appeal must be filed within 30 days (or within 20 days for commercial courts) of the judgment date. This term may be extended due to a compelling reason.

Appeal proceedings normally last from four to 12 months before a decision is issued.

A Concept of AI Development was approved by the Cabinet of Ministers of Ukraine in 2020, and outlines the goals, principles and tasks guiding efforts in the emerging field of AI. According to the Concept, the utilisation of AI is permissible only when it upholds the supremacy of law, fundamental human and citizen rights and freedoms, and democratic values, and ensures appropriate guarantees for the use of AI technologies.

At the beginning of 2024, the Ministry of Digital Transformation of Ukraine, in collaboration with its partners and relevant experts, developed guidelines for the responsible use of AI in the media. The aim is to familiarise Ukrainian journalists with current international best practices in this area.

AI has also impacted on copyright legislation in Ukraine. Specifically, the Copyright Law, effective as of 1 January 2023, introduced the concept of non-original objects generated by a computer program. These objects are protected for 25 years under a sui generis right. This move likely reflects the evolving understanding and adaptation of copyright laws worldwide to address the complexities introduced by AI into content creation.

Currently, there are no landmark trade mark or copyright decisions in Ukraine pertaining to AI. However, according to a ruling by the Supreme Court issued in February 2024, the use by a party in a dispute of an “opinion” generated by an AI system regarding an issue already considered by the court can be interpreted as an abuse of procedural rights and as a display of disrespect for the judicial system.

Online platforms and ISPs in Ukraine typically follow a notice and takedown procedure. Copyright or trade mark holders need to notify the service providers of the infringing content formally. Service providers are expected to respond quickly to such notices by removing or disabling access to the reported content if the complaint appears legitimate.

Trade mark owners also frequently deal with domain name disputes, often resorting to arbitration under the WIPO rules or other authorised ADR institutions. It is important to note that the registration of .UA domain names (second-level) can only be done based on respective registered trade marks (national or international registrations covering Ukraine) by the trade mark holders or their authorised licensees.