March 14, 2023

Recently, more manufacturers have expressed a desire to emphasize Ukrainian origin in the labeling of their products or their services. The consequence of this is an increased interest in the registration of trademarks using the name of our state or the international code "ua". So, in the future, I suggest that you familiarize yourself with some features of trademark registration, which include the name "Ukraine" or the international code "UA". ## Experience of other countries Initially, it would be appropriate to consider the approach to registering such designations in other countries of the world. Thus, in the vast majority of countries, a special approach has been established to the registration of designations that represent the name of the country or in the composition that includes such a name. For example, the U.S. Trademark Act states that a trademark that, when used in relation to or in connection with the applicant's goods, indicates a geographical content, that is, contains the name of the country , cannot be registered. U.S. law does not provide for the possibility of providing legal protection of signs that consist of geographical names, including state names. Such trademarks can be recognized by the expert as descriptive because they indicate geographical content. There is also a waiver approach when an applicant submits an application in which he waives the rights to the name of the state that is included in his trademark. Thus, the trademark will be registered, but without providing legal protection to the name of the state. Such a procedure is provided for by the legislation of Jamaica. Liberal are the norms of Spanish law, in which there are no provisions prohibiting registration as trademarks of the names of countries. But it should be noted that during registration, considerable attention is paid to such a criterion as the acquisition of distinguishing ability by designation. There are countries, including Georgia, Lithuania, Slovenia and Ukraine, whose legislation allows the registration of the name of the state as part of a trademark, however, only if permission is obtained from the relevant competent authority. Such a competent authority in Ukraine is the Commission for the approval of issues on the introduction of a designation containing the official name of the state "Ukraine" in the mark for goods and services (trademark). In accordance with the provisions of the Law of Ukraine "On Protection of Rights to Marks for Goods and Services", the applicant is obliged to apply to the Commission if his trademark contains the name "Ukraine", including spelled out in Latin, or the international letter code of the state. It should be noted that further consideration of the trademark is possible only if this permission is obtained from the Commission, otherwise the trademark will be denied registration. ## Registration of TM in the composition of which is "Ukraine" in Ukraine Further, I propose to consider the peculiarities of registration of trademarks in Ukraine, which include the name of the country and analyze the criteria that such trademarks must meet: ### Content that can be combined in TM "Ukraine": The Law of Ukraine "On Protection of Rights to Marks for Goods and Services" (hereinafter referred to as the Law) stipulates that the object of a trademark can be any designation or any combination of designations. These can be, in particular, words, proper names, letters, numbers, pictorial elements, colors, the shape of goods or their packaging, sounds, etc. So, at first glance, words and images, even sounds, can be registered as a trademark. However, there is a provision of the Law according to which designations registered as trademarks cannot contradict the public order, generally accepted principles of morality, the requirements of the Law of Ukraine "On condemnation of the communist and national-socialist (Nazi) totalitarian regimes in Ukraine and the prohibition of propaganda of their symbols" and which are not the grounds for refusing to provide legal protection established by [this Law](https://zakon.rada.gov.ua/laws/show/317-19). It is the criterion of compliance with the principles of morality and public order that should be paid attention to during the creation and subsequent registration of a trademark. Applicants should consider in combination with which designations the registration of trademarks is possible and with which it is unacceptable. So, it is advisable to avoid including homonyms in trademarks - words that are written in the same way but have different meanings. For example, it would be inappropriate to submit the phrase "Ukraine is in the fire" for registration, because this phrase, generally addressed to someone in an unseemly rush, but due to today's reality, most people will see association with the war happening in Ukraine these days, so the phrase can be wrongly interpreted. It is also highly discouraged to combine the name of the state and images in the trademark, which may be ambiguously perceived by consumers. It is necessary to take into account the fact that such trademarks will be checked for the criterion of compliance with morality and public order before the publication of information and in the process of considering them at the Commission. ### Regarding the identity of the applicant or the future owner of the trademark According to Art. 1 of the Law of Ukraine On Protection of Rights to Marks for Goods and Services "the applicant *is a person who has submitted an application or acquired the rights of the applicant in another manner prescribed by law".* The same article states that it can be completed by both a legal entity and an individual. However, according to the provisions of the "Rules for the approval of issues on the introduction of a designation containing the official name of the state "Ukraine" in the mark for goods and services" (hereinafter - the Rules), in* case of submission for registration of a trademark with the name "Ukraine", the applicant may be either a legal entity or an individual entrepreneur, both must be registered in accordance with the current legislation of Ukraine. This is important for applicants to consider before submittingan application for trademark registration. However, in my opinion, the requirement of the Rules is not consistent with the provisions of the Law of Ukraine "On Protection of Rights to Trademarks for Goods and Services". It is appropriate to note that today the most active, so to speak, users of trademarks using the name of the state "Ukraine" are mainly public organizations, public associations and unions, which can be formed without obtaining the status of a legal entity. Therefore, according to the provisions of the Law, such a category of persons is not able to register trademarks containing the name "Ukraine" and or containing the international letter code of the state, since they are not legal entities. ### Regarding the list of goods and services in relation to which a trademark has been submitted for registration In this aspect, the applicant needs to consider two circumstances. It is that the nature of the goods and services indicated in the application for trademark registration should not question its compliance with moral standards and public order in the process of use. For example, if goods of class 16 of the ICTP (printed products) are declared, then it is advisable to exclude from the list such goods as "hygienic paper" or among the services of class 45 of the ICTP it is inappropriate to indicate funeral services. If the applicant leaves such goods or services, This may not lead to a refusal to provide legal protection, but will be the basis for receiving a request with a recommendation to adjust the list of goods and services. The second circumstance that should be taken into account when forming the list of goods and services in the application is the criteria that these goods or services must meet. Namely, in the future, the applicant will bear the burden of proving that these goods and services are unique, inherent only in Ukraine, have industrial, educational, scientific, cultural or artistic value. Special dexterity of imagination requires proving the criterion of uniqueness of the declared goods and/or services. At the first glance, proving the compliance of goods and services with the above criteria requires the use of a trademark in relation to them at the time of consideration of the petition at the Commission. However, if we take a closer look at the provision of the Rules, it can be concluded that it obliges the applicant to provide information regarding his activities in relation to goods or services for which the use of the trademark is "intended". That is, although it is usual that in order to prove compliance with these criteria, the applicant provides materials confirming the actual use of the declared trademark, but this is not mandatory -- the information may relate to goods or services in respect of which another trademark of the applicant is actually used, and the use of the declared one is assumed in the future. ### Regarding the peculiarities of the applicant's activities 1. Dominant position in the market As mentioned above, there are certain requirements regarding the identity of the applicant, in particular, it must be a legal entity or an individual entrepreneur, but these are not all requirements. A person who wishes to register a trademark, which includes "Ukraine" or an international code of the state, must have a peculiar background and is obliged to prove, among other things, that he occupies **a dominant position in the Ukrainian market** in relation to goods and/or services for which the use of the trademark is intended; carries out foreign economic activity and in its group of goods and/or services of foreign economic activity is occupied by dominant position; the duration of such a person's activity in the Ukrainian market or the world market for such goods and/or services is at least 5 years. Thus, the applicant, before submitting an application for trademark registration, must have been operating for a long time and prove its dominant position in the market in relation to goods and/or services in respect of which the trademark is supposed to be used. It should be borne in mind that the proof of the dominant position should not, as a result, be qualified as a monopoly, which according to the Law "On Protection of Economic Competition" is a violation of fair competition and Article 52 of this Law provides for the imposition of a fine for the actions of market participants that led to a significant restriction of competition or monopolization, respectively.. 2. Implementation of foreign economic activity Another aspect that applicants should take into account is the provision on the conduct of foreign economic activity in their group of goods and/or services. This is worth paying attention to applicants - legal entities whose purpose is not to make a profit. In such cases, it will be quite difficult for the applicant to prove the conduct of foreign economic activity and presence in the market. 3. Duration of business Also, a rather important criterion applicable to the applicant's identity is that the duration of his activity in the Ukrainian market or the world market for relevant goods and/or services should be at least 5 years. This criterion indicates the long-term presence of a business entity in the Ukrainian market. Usually, in confirmation of this, documents are submitted containing the date of registration of the applicant: a legal entity or an individual entrepreneur. As can be seen from the above, the procedure for obtaining the Commission's consent to include in the trademark a designation containing the official name of the state "Ukraine" or the international code of the state can be quite complicated and lengthy, so we recommend that you contact the specialists in intellectual property law in advance. If you wish to register a trademark in Ukraine, please contact our intellectual property protection specialist Tetiana Zhyla t.zhyla@laudis.ua.