Lawyer, Head of Judicial Practice of NOBILI Law Firm Meshe Oleksiy

Rights of trademark owners

Each owner of a certificate for a mark has certain rights regarding its use. Such rights are defined in article 16 of the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”.
The certificate gives its owner the exclusive right to prohibit other persons from using without his consent:
1. A registered mark in relation to the goods and services provided in the certificate;
2. A registered mark in relation to related goods and services indicated in the certificate, if as a result of such use it is possible to mislead a person producing goods or providing services;
3. A designation similar to a registered mark with respect to the goods and services provided in the certificate, if as a result of such use these designations and mark can be confused;
4. A designation similar to a registered mark in relation to goods and services related to those indicated in the certificate, if as a result of such use it is possible to mislead a person who produces goods or provides services, or these designations and mark can be confused.

The exclusive right of the certificate holder to prohibit other persons from using the registered mark without his consent does not apply to:
1. Exercise of any right arising prior to the filing date of the application or, if priority has been declared, prior to the priority date of the application;
2. The use of a mark for goods introduced under civilian circulation by the certificate holder or with his consent, provided that the certificate holder has no good reason to prohibit such use in connection with the subsequent sale of the goods, in particular in case of a change or deterioration of the condition of the goods after its introduction into civil circulation;
3. Non-commercial use of the mark;
4. All forms of news feed and news commentary;
5. Fair use by them of their names or addresses;
6. The use of the mark in comparative advertising is carried out in accordance with the legislation on advertising, on protection against unfair competition and does not apply to dishonest business practices.
We should also dwell on the legal use of the mark. The owner of the certificate has the right to transfer to any person the right of ownership of the mark in full or in relation to part of the goods and services indicated in the certificate, on the basis of the contract.

 

Transfer of ownership of the mark is not allowed if it can cause misleading the consumer regarding the goods and services or in relation to the person producing the goods or providing the service.
Also, the owner of the certificate has the right to give any person permission (to issue a license) to use the mark on the basis of a license agreement.
The license agreement must contain a condition that the quality of goods and services produced or provided under the license agreement will not be lower than the quality of goods and services of the certificate holder and that the latter will exercise control over the fulfillment of this condition.
The agreement on the transfer of ownership of the mark and the license agreement are considered valid if they are concluded in writing and signed by the parties.
The party to the contract has the right to inform an indefinite number of persons about the transfer of ownership of the mark or the issuance of a license to use the mark.
The owner of the certificate has the right to affix a warning mark next to the mark, indicating that this mark is registered in Ukraine.
The holder of a certificate engaged in intermediary activities has the right, on the basis of an agreement with a producer of goods or a person providing services, to use his mark along with the mark of these persons, as well as instead of their mark.
Sometimes it happens that the owners of the mark are several people, including individuals and legal entities. In this case, all relationships when using the sign are determined by agreement between them. In the absence of such an agreement, each owner of the certificate can use the mark at his discretion, but none of them has the right to give permission (to issue a license) to use the mark and transfer ownership of the mark to another person without the consent of the other owners of the certificate.