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The Verhovna Rada passed a law on trademark protection

The Verkhovna Rada of Ukraine adopted in the second reading and as a whole Law №2258 "On Amendments to Certain Legislative Acts of Ukraine Concerning Strengthening the Protection of Rights to Trademarks and Industrial Designs and Combating Patent Trolling".

As stated in the explanatory note, this Law is aimed at ensuring the fulfillment of Ukraine’s obligations in the field of European integration in terms of harmonizing the requirements of current legislation of Ukraine on the protection of trademark and industrial design rights with European Union law.

To this end, the Law provides for the implementation of the requirements of Articles 204-207 of the Association Agreement, as well as the provisions of Directive 98/71 / EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of industrial designs, Council Regulation (EC) (6/2002 of 12 December 2001 on Community designs; Directive 2008/95 / EC of the European Parliament and of the Council of 22 October 2008 on the approximation of the laws of the Member States relating to trade marks, Council Regulation (EC) № 207/2009 of 26 February 2009 on the Community trade mark into national law.

The law provides for the following changes:

- for trademarks

  • submission of the application in electronic form;
  • the grounds for refusal of registration or invalidation of trademark registration are specified;
  • collective trademark registration;
  • the procedure for granting legal protection under international registration (under the Madrid system) has been clarified;
  • sanctions for trademark infringement have been strengthened.

- for industrial designs

  • an additional criterion of security (individual character) has been established;
  • legal protection of unregistered industrial designs is provided;
  • submission of the application in electronic form;
  • possibility of division of the application;
  • term of validity of rights - no more than 25 years (currently - 15);
  • changed the type of security document (from a patent to a certificate);
  • the possibility of pre-trial revocation of the certificate in the Appeals Chamber (fight against "patent trolling").


As noted, the latter rule is important in the fight against "patent trolling" (a phenomenon based on the abuse of rights by unscrupulous individuals to industrial designs that are not new and mostly takes place at the customs border). At the same time, amendments on the abolition of sanctions for patent trolling in the amount of up to UAH 236 million were taken into account.

Instead, the law provides for an additional administrative method of revoking registrations to combat this negative phenomenon, as well as to prevent it in the future - the so-called "post grant opposition" mechanism (invalidation of industrial design certificates in the Appeals Chamber).

It should be noted that the relevant amendments were made to the Commercial and Civil Codes, the laws of Ukraine "On protection of rights to industrial designs", "On protection of rights to marks for goods and services" and the Decree of the Cabinet of Ministers of Ukraine "On state duty".

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