Following the legislative amendments related inter alia to the regulation of trademark registration and protection adopted within the IP patent reform in 2020, the government is now moving forward with the new rules for trademark registration and related procedures. The Ministry of Economy of Ukraine has published a draft order “On the approval of rules for drafting, filing trademark applications, applications for international trademark registration, conducting expertise on trademark applications, international trademark registration with extension to Ukraine” along with a draft of the proposed rules (the Rules).
In general, the new Rules will cover trademark registration procedures in more detail as they provide a step-by-step description of all the actions and aspects of these procedures, explaining thoroughly the terms and notions used in the current legislation as well as in the Rules being proposed. These are more structured and easier to comprehend than the current regulation.
The Rules are not only based on the amendments introduced in 2020 but also consider and cover current standard practices that are being used by the Ukrainian Patent Office either to cover gaps in the legislation or to execute procedural regulation and requirements absent or insufficient in the rules currently in force. This relates inter alia to the procedure for trademarks registration objection at the expertise stage of the registration process as well as international registration procedures. The new Rules provide for detailed regulation of these procedures and actions and related requirements.
The new Rules cover the following procedures:
- Filing for a trademark registration (requirements for such trademarks, grounds for refusal of registration, processes related to documents submission, communication related to a trademark registration application etc.);
- Expertise on an application (formal and substantive);
- Third-person objections against a trademark registration at the expertise stage;
- Actions related to the application that may be taken on the applicant’s initiative (participation during consideration of issues that arise during an expertise, extending terms, splitting an application etc.);
- International registrations and other actions under the Madrid Agreement.
The Rules interpret in detail the requirements set out by law for a trademark to be granted protection and thus to be registered. These are not concise explanations that only briefly explain general norms of the law, but rather give a detailed description of what can or cannot be registered as a trademark. These provisions of the proposed Rules are closer to guidelines in their nature. For instance, names that only contain parts that are exclusively descriptive (in relation to the goods and services they cover) cannot be registered as trademarks; current rules do not explain what “descriptive” means in this respect at all, while the Rules being proposed contain specific examples and explanations of what indications are considered “descriptive”.
These Rules also thoroughly describe what indications are not distinctive, those that are generic, what is meant by the shape of a product that is solely a function of its natural state, what indications are considered to be misleading (as to the product or services or as to their manufacturer) etc. The stated indications generally cannot be registered as trademarks.
Besides substantive regulation, the Rules also provide a set of solutions to formality related issues. One of which is the case where a PoA in the name of a representative is issued after the application has been filed by the representative. In this case the representative must submit a written confirmation of the applicant’s actions along with the PoA.
Moreover, there are many standard practices used by the Ukrainian Patent Office that are not covered by current legislation, many of these are related to the issuance of PoAs and related formalities. The Rules give precise answers to most of the questions a representative would have when filing an application as well as to questions that are not evident and could have been missed by an applicant or his/her representative. For example, the Rules establish that the right to revoke an application or to transfer rights related to the application by a representative must be specified in the PoA, otherwise a representative is not entitled to conduct the respective actions.
The Rules also establish the procedure of electronic filling and set out the requirements for such an application and registering related particularities.
In general, as mentioned above, besides setting out the procedural requirements for trademarks registration and related procedures, the new Rules can be seen more as guidelines which, if adopted, will be very useful for both the applicants and their representatives as well as for the Ukrainian Patent Office, as they provide very precise instructions for each stage of these procedures.
For more information about the new rules and procedures related to trademarks registrations in Ukraine please refer to Maria Orlyk or Diana Valyeyeva.
Regulation: Draft Order of the Ministry of Economy of Ukraine “On the approval of rules for drafting, filing trademark applications, applications for international trademark registration, conducting of expertise on trademark applications, international trademark registration with the extension to Ukraine” (in Ukrainian).