Grounds and procedure for trademark certificate’s termination under the legislation of Ukraine
Year: 2025
Type: article
Abstract: This article analyzes the legal grounds and procedures for trademark certificate’s termination under Ukrainian legislation. A trademark serves as a means of distinguishing goods and services, ensuring their legal protection and market recognition. The study highlights the conditions under which a trademark certificate may be terminated, including both extrajudicial and judicial procedures. It has been established that the extrajudicial termination of a certificate is possible in cases where the trademark owner voluntarily waives their rights, the certificate expires and the renewal fee is not paid. Judicial termination of a certificate may occur when a trademark becomes a commonly used designation, is found to be misleading to consumers, or has not been used for a continuous five-year period without valid justification. The latter ground is one of the most common in judicial practice and serves as a mechanism for clearing the market of unused marks while ensuring the bona fide registration of trademarks for actual use. The study examines the application of Ukrainian legislation in the context of the Association Agreement between the EU and Ukraine, which requires harmonization of trademark regulations. Particular attention is paid to judicial practice regarding the termination of trademark certificates, especially in relation to the interpretation of the non-use period and its impact on new owners following the transfer of rights. Key law enforcement challenges are explored, including issues related to the evidentiary base in court proceedings, the role of the National Intellectual Property Authority in the process of terminating trademark certificates, and the grounds for involving state bodies in resolving such disputes. The study substantiates the need for improvements in national legislation to ensure effective control over the use of trademarks and prevent bad faith registrations without the intention of actual use in commerce. It is proposed to refine the criteria for determining valid reasons for non-use of a trademark, expand mechanisms to prevent its transformation into a generic designation, and establish clear standards for assessing the proven fact of non-use. The authors emphasize the importance of effectively applying legal mechanisms to ensure market stability and protect the rights of trademark certificate holders.
Authors: I. I. Shpuganych, Y. I. Samahalska
Institution: Lviv University
Language: English
Topic: Intellectual Property Law
Subfield: Law
Field: Social Sciences
Domain: Social Sciences
Open Access status: diamond
OpenAlex ID: W4409948464