Maintaining the validity of a trademark in Ukraine

Obtaining a trade mark certificate is certainly an important stage, the moment when you, in other words, receive official confirmation of the rights to your brand. But it is not the finish line, but rather just the beginning of a long journey. To preserve your precious brand rights, it is not enough to simply put the certificate in the safe. It is necessary to actively use the trademark and, just as importantly, to renew it in a timely manner.

Why is it so important? Because failure to use your TM or to renew it in a timely manner can lead to the most unpleasant thing of all – the complete loss of rights to your brand. Imagine: years of effort, investments in development and promotion – and all this can go to waste because of formal non-compliance.

In this article we will discuss in detail how to maintain the validity of your trade mark in Ukraine: why and how it should be used, and how not to miss the important moment of prolongation of TM. After all, ownership of TM is not only rights, but also, conventionally speaking, certain obligations.

I. Use of a trade mark: why and how?

So, you have the certificate in your hands. It would seem that you can exhale and quietly reap the fruits of your intellectual labour. But that’s not what happened as thought! It turns out that having a registered trade mark is, in other words, only half the battle. The second, equally important half is its active use. In this chapter, we will look at why this is so important, what exactly counts as “use” from the point of view of the law, and what unpleasant consequences await those who neglect this duty.

Subsection 1.1: Duty to use

Many trade mark owners mistakenly believe that obtaining a certificate is the final point. However, Ukrainian legislation establishes a clear obligation to use the registered designation.

This is not just a right, but an obligation, enshrined in the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, in particular in Article 18, which regulates the consequences of non-use of the mark. Why is it so? A trade mark is not seen as an abstract asset, but as a tool that serves to distinguish goods and services on the market. If the owner does not apply its TM, it does not fulfil its key function and may become an obstacle for other market players who would like to use similar designations.

The “register and forget” strategy is therefore too risky. The duty to use implies that you must actively use your trade mark in commerce for the goods and services for which it has been legally protected.

What exactly does the law mean by “use”? We will consider this further. The main thing to realise now is that registration of a TM does not guarantee its “lifelong” status. Retention of rights requires proof that your trade mark actually works on the market.

Subsection 1.2: What counts as use of TM?

Okay, the law requires the use of tm. But what exactly falls under that concept? It’s not just hanging a certificate in a frame on the wall. The legislator is quite clear about what actions are considered to be full use of your mark.

Firstly, of course, it is the application of the mark on goods and/or their packaging. This is the most classic option. If you sell, say, software on physical media (which is rare nowadays, but still), then the name or logo on the box or disc is a direct use of. Or, if your software is bundled with some device – the labelling of this device.

Secondly, for the service sector (and software development, SaaS are often services), using a TM means using it when offering and providing these services. Your brand name on the website where the service is described, the TM name in the development contract, the logo on the login page of your SaaS service, the trademark on the invoices for the use of software – all this counts.

Thirdly, the scope of TM application is much wider. We are talking about use in business documentation, advertising, Internet. Here lies a huge layer of opportunities and, in fact, everyday business processes:

• Your logo and name on the official website of the company or product.
• Demonstration of TM in advertising campaigns – banners, videos, contextual advertising.
• Application of TM on letterheads, in commercial offers related to specific software.
• Mention of TM in product catalogues, price lists.
• The Internet is extremely important for software: a domain name matching the TM, pages in app shops (App Store, Google Play), profiles in social networks where the product under this TM is promoted.

These use cases show that the brand must “live” in your business.

Finally, the law is loyal to the use of a TM with minor changes, which do not affect its distinctiveness. That is, a slight restyling of the logo or font of the name will most likely be considered the use of a registered TM. But a radical change of image may require a new registration.

The main thing is that the use of must be real, commercial and relate to the goods or services specified in your certificate. Formal use “to tick a box” may not count.

Subsection 1.3: Consequences of not using a TM

Okay, we’ve sorted out that using the tm is a duty. But what happens if that obligation is neglected? What if your wonderful registered stamp has been gathering dust for years without seeing the light of day? The consequences, frankly speaking, can be very unpleasant. The main risk is early termination of the certificate.

The law is clear: if a trade mark is not used in Ukraine in whole or in part for the goods and services specified in the certificate continuously for five years from the date of registration (or from another date, if provided for by law), any interested party has the right to apply to the court for early termination of the certificate for that TM (in whole or in part).

Five years is quite an impressive period of time. But, believe me, time flies fast, especially in business. Imagine: you registered a TM “in reserve”, for a future project which you never launched. Or you used it only for one specific product, although you registered it for a wide range of goods. In five years’ time, some competitor to whom your TM is “annoying to the eye” may sue. And if you can’t prove the fact of real use of your trademark for the last five years for the goods/services for which the application has been filed, the court may satisfy the claim and “take away” your rights to the trademark.

The procedure for early termination due to non-use of a trademark looks like this:

1. An interested person ( for example, a competitor who wants to register a similar TM) collects evidence that your TM is not being used.
2. This person files a statement of claim with the court for early termination of the certificate for your TM.
3. The court considers the case. The burden of proving that the TM has been used falls on you, the owner of the certificate. It is you who will have to prove that the TM has been used.
4. If you cannot provide sufficient evidence of use, the court will order early termination of the certificate (in full or in respect of certain goods/services).
5. The validity of the certificate is terminated from the date on which the court decision enters into legal force.

As you can see, failure to use a trademark is not just a formal infringement. It is a real risk of losing your brand protection. This is why you should not register brands “just for fun”. Register what you plan to actually use, and use what you have registered.

Subsection 1.4: Proving the use of TMs

Let’s imagine a worst-case scenario: someone files an application with the court for early termination of your certificate due to non-use of your trademark. What to do? How to protect your rights? The main thing to know is that the burden of proving the fact of use of the TM lies with you, the owner of the certificate. You will have to provide the court with convincing evidence of the use of your brand.

What can serve as such evidence? It must be materials confirming the actual commercial use of your TM in Ukraine during the last five years (or other relevant period) exactly for those goods and services in respect of which the dispute has arisen. The evidence must be specific, dated and relate specifically to your activities under this brand.

Here are examples of what may be your evidence of use:

• Contracts: Licence agreements for the use of your TM, contracts for the supply of goods (if the software is on media), contracts for services (development, support of software under your TM), distribution agreements. It is important that your TM appears in the contracts and the corresponding goods/services are specified.
• Primary documentation: Invoices, delivery notes, statements of work performed/services rendered, where goods/services under your TM are indicated. This is direct evidence of commercial transactions.
• Advertising and marketing materials:
  • Printed products: catalogues, booklets, price lists, flyers with your TM, dated for the relevant period.
  • Outdoor advertising: photos of billboards, citylights (if applicable).
  • Media publications: advertisements, articles, press releases mentioning your product under this TM.
• Evidence from the Internet (extremely important for software):
  • Website screenshots: Dated screenshots of pages on your website where the TM is used to describe the programme, services, in the contact section, etc. Preferably, these screenshots should be authenticated (e.g. notarised or via specialised web archiving services).
  • Screenshots from app shops: Pages of your app in App Store, Google Play with TM name, logo, description.
  • Online advertising: Reports of advertising campaigns (Google Ads, Facebook Ads) where your TM was used, screenshots of adverts.
  • Social media: Dated posts promoting the product under your TM.
• Financial statements: Data on sales of goods/services under your TM.
• Packaging and labelling (less relevant for software, but possible): Photographs of the physical packaging of the product with your TM printed on it.

Key rule: Collect and store this evidence systematically! Don’t wait until a dispute arises. Save contracts, invoices, advertising materials, take dated screenshots of the website. The more evidence you have covering different time periods within the last five years, the stronger your case will be in court.

Having strong evidence of use is your main shield against attempts to terminate your trade mark certificate early .

II. Extension of the term of validity of the TM certificate

Active use of your trademark is one side of the coin of maintaining its validity. The second, no less important, is the timely renewal of your trademark, i.e. the extension of the validity of your certificate. After all, trade mark rights, unlike, say, copyright, are not eternal. They have a certain period of validity, and if it is not renewed, all your efforts to register and use them may be in vain. In this section, we will look at how long a certificate is valid and how to renew it correctly.

Subsection 2.1: Validity of the TM

So, you have successfully registered your trade mark and received a certificate. But for how long are you granted this protection? Ukrainian legislation establishes a clear term of validity of tm.

According to the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, the term of validity of a trade mark certificate in Ukraine is 10 years.

Important point: these 10 years are counted not from the date of issuance of the certificate, but from the date of filing an application for TM registration with UKRNOIVI. You can find this date in your certificate.

Ten years is a long enough period during which you have exclusive rights to use your brand. But you should not forget about this date. Mark it in your calendar, set a reminder. After all, after this ten-year period the certificate will automatically expire if you do not take care to renew it.

Knowing the exact expiry date of your certificate is the first step towards timely renewal and preserving your brand rights.

Subsection 2.2: Renewal procedure

When the end of the ten-year validity period of your certificate is approaching, it is time to take care of the renewal of tm. Fortunately, the procedure is fairly standard and not too complicated if done on time.

The main steps to extend the validity of the certificate:

1. Submitting a petition to UKRNOIVI:You need to prepare and submit to UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation) a special petition to extend the term of validity of the trade mark certificate.
   • Petition Form: The petition form can be found on the official website of UKRNOIVI. It should be filled in carefully, indicating the number of the certificate, data of the owner and other necessary information.
   • Methods of submission: The application can be submitted by the same methods as the application for registration: online (through the e-filing system), by mail or in person

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2. Payment of the renewal fee:The renewal feemust be paid at the same time as (or before) filing the application.
   • Amount of the fee: The amount of the fee depends on the number of classes of ICTU for which the TM is registered. Up-to-date information on the amount of the fee can be found on the UKRNOIVI website.
   • Confirmation of payment: A document confirming the payment of the fee (receipt or its copy) must be attached to the application

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Deadline for filing the petition:

This is a very important point! The application for renewal of tm and payment of the fee must be made:

• Within the last year of the certificate: That is, starting on the first day of the last, tenth year of the certificate.
• OR within 6 months of the certificate expiry date: If you have not done this within the last year, you have another six-month “grace” period. BUT! In this case, the renewal fee is increased by 50%.

Do not wait until the last minute! It is best to apply and pay the fee during the last year of the certificate to avoid unnecessary expenses and the risk of missing the deadline.

Links to the application form and up-to-date information on the fee can always be found on the official UKRNOIVIwebsite .

Timely submission of the application form and payment of the fee is the key to successfully extending the Tm and preserving your rights for another 10 years.

Subsection 2.3: Cost of renewal

Therenewalprocedure of is not free of charge. In order to retain your rights to trade mark for another 10 years, you must pay the relevant government renewal fees.

• What does the fee depend on?

The main factor that affects the renewal fee is the number of Classes of the ICTU for which your trade mark is registered . The more classes are indicated in your certificate, the higher the fee will be.

The logic here is simple: you continue protection for each class separately, so the fee is also calculated according to the volume of this protection

• Where can I find information about the amount of the fee?

The amount of fees for renewal of is established by the current legislation of Ukraine. Up-to-date and accurate information about current fees can always be found on the official website UKRNOIVI. Be sure to check this information before paying, as fees may change periodically.

• Additional fee for the “grace” period:

As we have already mentioned, if you apply for renewal not during the last year of the certificate, but within 6 months after its expiry, the fee is increased by 50%. This is a kind of “late fee”, so it’s better not to get to that point and do everything on time.

Understanding the structure of renewal fees will help you plan ahead to budget for maintaining your brand.

Subsection 2.4: Consequences of late renewal

We have already noted the importance of meeting deadlines when renewing tm. But what happens if you still miss all the deadlines – both the last year of the certificate and even the “favourable” six months after its expiry? The consequences, unfortunately, are very serious.

If a trade markcertificate has not been renewed in time (i.e. no application has been filed and/or the relevant fee has not been paid in due time), the certificate will be terminated.

What does this mean in practice?

• Loss of exclusive rights: As soon as the certificate ceases to be valid, you lose all exclusive rights to use your trade mark.
• Loss of legal protection: Your TM is no longer legally protected.
• Registration by others: After your certificate has been terminated, any other person may apply and register the same or similar trade mark in their own name for the same or related goods/services. Your previous priority will no longer be valid.

In essence, the termination of the certificate due to late renewal means the complete loss of the rights to your brand that you once obtained through registration. It is no longer possible to restore the validity of the certificate after missing all the deadlines. The only way out is to go through the whole procedure of TM registration anew (unless, of course, the designation has been occupied by someone else).

Therefore, we emphasise once again: watch the deadlines! Failure to renew on time is a direct way to lose your intellectual property.

III. Recommendations for maintaining the effect of TM

So, you have become the owner of a registered trade mark. To ensure that this registration does not turn into a mere piece of paper, but continues to reliably protect your brand, you need constant support for registration. This is not too difficult, but it requires systematic attention. Here are some practical tips to help you keep your TM strong:

1. Actively use TM! This is the most important rule. Do not let your brand “gather dust”. Use it consistently and effectively for the goods and services specified in the certificate. Be aware of the risk of early termination due to non-use. Every advertising leaflet, every mention on a website, every agreement where your TM appears is a brick in the foundation of its protection.
2. Preserve evidence of use. Don’t rely on memory or chance. From the very beginning, keep an “archive” of your TM usage. Collect copies of contracts, invoices, advertising materials, take dated screenshots of web pages, keep reports of advertising campaigns. Anything that can prove the commercial use of your brand will come in handy if there is a dispute about its use. Organise this evidence so that you can easily find it when you need it.
3. Keep track of your renewal dates. Ten years is certainly a long time, but time slips away. As soon as you receive your certificate, put the expiry date (i.e. application date + 10 years) on your calendar, planner, CRM system – anywhere you are sure you won’t miss it. Put a reminder a year, six months before the deadline. Missing the renewal deadline is a guaranteed loss of the TM.
4. Pay the required fees on time. Renewal of the certificate requires payment of a state fee. Find out the current amount of the fee in advance (on the UKRNOIVI website), budget for this cost and pay the fee at the same time as submitting the application for renewal. Failure to pay the fee is the same grounds for termination of the certificate as missing the deadline.

These seemingly simple tips will help you to ensure that your trade markregistration is well supported and avoid the unfortunate surprises of losing rights to your own brand.

Conclusions

So, to summarise. Obtaining a certificate for trademark is only the first step on the way to a reliable protection of your brand. To ensure that the certificate does not lapse prematurely and that your registration remains your reliable shield, ongoing support for the registration is essential .

Two aspects are key elements of this support:

1. Active use of the trade mark: It is not enough to simply register a TM – it must actually be used in commerce for the goods and services for which it is registered. Remember the five-year time limit, after which non-use may be grounds for early termination of the certificate.
2. Timely renewal of the certificate: Don’t forget that the certificate is valid for 10 years from the date of application. A timely filed application and paid fee is the key to preserving your rights for decades to come.

Neglecting these two points can lead to irreparable loss of rights to your brand, image and reputation.

Preserving the validity of a trade mark requires attention and responsibility. If you feel you need help tracking deadlines, gathering evidence of use or preparing documents for renewal, the lawyers at Polikarpov Law Firm are always ready to provide expert support. We can help you avoid risks and ensure the long-term protection of your brand. And if you are just thinking about registration, we recommend reading our article: “Trademark registration: a necessity for your business“.