Well-known trademark in Ukraine: status, benefits and how to obtain it

Intellectual property protection is an integral part of successful business. Registration of a trade mark provides a basic level of protection of rights to designations that individualise a company’s goods and services on the market. However, for brands that have achieved a significant level of recognition and reputation among consumers, Ukrainian legislation provides for the possibility of obtaining a special legal regime – the status of a well-known trade mark.

Recognition of a trade mark as a well-known trade mark provides its owner with a significantly broader scope of legal protection than a regular registration. This means not only enhanced protection against unfair competition, but also extended exclusive rights, which may extend even to heterogeneous goods and services. Obtaining the status of a well-known trade mark also indicates a high level of consumer confidence and market value of the brand, which has a positive impact on its reputation.

In this article Polikarpov Law Firm lawyers a to provide a detailed review of the concept of a well-known trademark in Ukraine, analyse the benefits of this status, the criteria for obtaining it and the recognition procedure itself. This information will be useful for brand owners who seek to ensure the maximum level of protection for their valuable intangible assets.

I. What is a well-known trade mark (WLTM)?

Having established the general significance and implications of obtaining well-known trade markstatus, the next step is the need for a clear legal definition of the concept. In order to properly understand the specific legal regime afforded to such marks, it is important to establish its essential characteristics and its differences from the standard protection of marks for goods and services.

This section focuses on these issues. We will examine the normative definition of a well-known trade mark, as it is enshrined in Ukrainian legislation, taking into account the relevant provisions of international law. In addition, a comparative analysis of the legal regimes of a well-known trademark and a registered trade mark will be carried out in order to identify key differences in the scope and nature of protection granted. An understanding of these aspects is fundamental for further analysis of the benefits and procedure for recognising a mark as a well-known mark.

Subsection 1.1: Definition of a WCTM

The central issue when considering the institution of well-known trade marks is, of course, its formal definition. In accordance with Article 25 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, well known trade mark means a mark or designation that has become widely known in Ukraine among the relevant circle of consumers regarding goods and/or services of a certain person as of a certain date. This recognition is carried out by a competent authority – the Appeal Chamber of the National Intellectual Property Authority (UKRNOIVI) or a court.

The key elements of this definition that need to be detailed are:

• Widespread awareness: This criterion does not presuppose that the brand is absolutely recognisable by all citizens of the country. Familiarity is assessed specifically in the relevant circle of consumers – that is, among actual and potential buyers of the goods/services for which the brand is used, as well as those involved in distribution channels. For example, for a brand of a pharmaceutical product, its awareness among doctors, pharmacists and patients with certain diseases is important.
• Intensity of use: Widespread awareness is usually a consequence of a long, consistent and significant volume of use of the brand on the Ukrainian market. It is the active use of the mark in business activities that contributes to its recognisability.
• Date linkage: The status of a well-known mark is not established in the abstract, but as of a specific date declared and justified by the applicant. This may be a date prior to the date of filing of the application for recognition of the mark as well-known.
• Territorial aspect: The fame of the brand must be proved exactly on the territory of Ukraine. International brand awareness is an important factor, but is not an automatic basis for recognising a brand as well known in Ukraine without proof of local recognition.

It is also important to emphasise that the concept of a well-known trademark corresponds with Ukraine’s international obligations, in particular with the article of the Paris Convention for the Protection of Industrial Property. This norm requires member countries to provide protection to marks that are recognised as well-known, even if they are not registered in the territory of a given country. International practice often uses the term well-known brand, which is synonymous with the Ukrainian concept. So, a well-known trade mark is not just a popular brand, but a brand whose exceptional recognisability and reputation among the relevant audience is officially confirmed in accordance with the procedure established by law.

Subsection 1.2: Distinguishing a CTM from an ordinary TM

Understanding the specificity of a well-known trade mark (CTM) is impossible without clearly distinguishing its legal regime from that of a regular registered trade mark (TM). Although both institutions are aimed at protecting the rights of owners of the means of individualisation, there are significant differences between them, which determine the uniqueness and advantages of the status of the WCTM.

The main differences are as follows:

1. Scope of legal protection:This is the key difference. Protection of a standard registered TM extends to the use of identical or similar designations for homogeneousgoods and/or services specified in the certificate. That is, the main criterion is the risk of confusion of designations by consumers in relation to related products. However, the legal protection of a well-known trade markis much broader. It applies not only to homogeneous, but also to heterogeneousgoods and services. The basis for such extended protection is that the use of a similar designation by another person for any goods/services may:
   • Indicate a link between these goods/services and the owner of the DITM, misleading consumers.
   • Damage the interests of the owner of the
   • CTM
   • by weakening its distinctiveness (brand dilution).
   • Damage the reputation of the CTM
   • . Represent misuse of its reputation.
2. Basis of rights arising: The rights to an ordinary TM arise from the date of its state registration and are certified by a certificate. The status of a well-known trade mark, on the contrary, is based on the fact of its widespread popularity, obtained as a result of intensive use. Although this status is formally recognised by the UKRNOIVI Appeal Chamber or a court, it is the actual fame that is primary. As a consequence, protection of a CTBT may be granted even in the absence of its formal registration in Ukraine, which is in line with international standards (in particular, the Paris Convention). However, in order to implement this enhanced protection, an official decision to recognise the mark as well-known is required.
3. Level of protection against specific infringements: CTBT status provides more effective protection against forms of unfair competition such as dilution and tarnishment. Dilution occurs when the uniqueness of a well-known brand is weakened by the use of similar marks by others, even for dissimilar goods, thus reducing its identifying power. CTM status explicitly seeks to prevent such actions by providing the owner with stronger legal tools to stop such infringements.

Thus, while a registered TM provides protection within a specific market segment, a well-known trade mark receives a much broader and more powerful legal shield reflecting its high market value and reputation.

II. Advantages of CTBT status

Having defined the concept of a well-known trademark (WTM) and its differences from a regular registered TM in the previous section, it is logical to move on to analysing the practical advantages of obtaining this special status. After all, these benefits are the key motivating factor for brand owners to initiate the rather complicated procedure of having their brand recognised as well-known. Understanding the specific benefits allows us to assess the feasibility of investing resources in obtaining such status.

This section will detail the main benefits arising from the recognition of a trade mark as a well-known brand in Ukraine. In particular, we will analyse aspects related to enhanced protection of rights, more effective protection against brand dilution, increased reputational value of the asset and strengthened legal position of the owner in potential litigation. This analysis aims to demonstrate the real value of the status of the DVTM as a tool for strategic intellectual property protection.

Subsection 2.1: Extended protection

One of the most significant and fundamental advantages offered by the status of a well-known trade mark (WTM) is the significantly extended protection of rights of its owner. Unlike standard TM registration, where protection is limited primarily to homogeneous goods and services (i.e., those with respect to which there is a risk of consumer confusion), the protection of a WCTM goes far beyond this.

In particular, the legal protection granted to a well-known trade mark extends also to non-homogeneous goods/services. This means that the owner of the CTBT has the right to prohibit the use by others of a designation that is similar to its mark, even if those persons use it for goods or services totally unrelated to those for which the mark has become well known.

Of course, such a prohibition is not absolute. It applies under certain conditions, namely if such use:

• Indicates a link between heterogeneous goods/services and the owner of a well-known trade mark, which may mislead consumers.
• May harm the interests of the owner of the CTBT by weakening (diluting) its distinctiveness. For example, if a unique and well-known mark becomes associated with a wide range of unrelated goods of different quality, its identifying function may be impaired.
• The reputation of a well-established trade mark may be damaged. Say, the use of a similar mark for goods of poor quality or of dubious reputation may adversely affect the perception of the original brand.
• Constitutes unfair use of the reputation or distinctiveness of the CTBT (obtaining an undue advantage).

Example: The owner of a well-known trade mark for the manufacture of high-tech computers may have grounds to prohibit the use of a similar designation for the manufacture of, for example, cheap toys, if such use could give consumers a false impression of a link between the manufacturers or damage the reputation of the computer brand as a symbol of quality and innovation.

Thus, extended protection for heterogeneous goods/services is a powerful tool that allows CTBT owners to control the use of their brand much more broadly than is possible under ordinary registration, effectively protecting the investment made in achieving widespread brand awareness and positive brand reputation.

Subsection 2.2: Defence against brand dilution

Another significant advantage of being a well-known brand is that it provides its owner with significantly more effective tools to combat the specific phenomenon of brand dilution (brand dilution). This phenomenon poses a serious threat to strong and recognisable brands, potentially levelling significant investments made in their development and promotion.

Brand dilution refers to the process of gradual weakening of the uniqueness and distinctiveness of atrade mark as a result of its use or the use of similar signs by others, especially in relation to goods or services that do not compete directly with the goods/services of the brand owner. Even if the consumer does not confuse the origin of the goods, the very exclusivity and exclusive association of the brand with a particular producer may be weakened. In other words, the more similar marks appear on the market (even for heterogeneous goods), the less unique and expressive the original brand becomes. This leads to weakening of TM as an identifier of specific origin and quality.

Standard registered trade mark protection, which focuses primarily on the risk of confusion for homogeneous goods, is not always sufficient to effectively counter brand dilution. This is where status of a well-known trade mark provides a key advantage. As already mentioned in the subsection on extended protection (2.1), the owner of a CTBT may object to the use of similar signs even for dissimilar goods/services, if such use is likely to prejudice the interests of the owner of the CTBT by diluting its distinctiveness.

Thus, the legal regime of a well-known trade mark expressly provides for the possibility of protection against actions leading to brand dilution. This allows the owners of such brands to maintain their uniqueness and commercial value, preventing the gradual loss of their identifying power under the influence of the actions of third parties who seek to capitalise on someone else’s reputation or simply use similar designations without malicious intent, but objectively contributing to the weakening of TM. This is an important element of preserving the long-term value of the brand as an intangible asset.

Subsection 2.3: Enhanced reputational value

Obtaining the status of a well-known trade mark is not only a significant strengthening of legal protection, but also a significant factor contributing to the increase of reputational value of the brand and the company-owner as a whole. The very fact of official recognition of a well-known brand by a competent state body (the Appellate Chamber of UKRNOIVI or the court) serves as an objective confirmation of its high level of popularity, consumer confidence and market significance.

Such recognition can be considered as a kind of state “quality mark” for the brand, which has several positive consequences for its reputation:

1. Confirmation of success and leadership: The official status of DVTM indicates that the brand has achieved an outstanding level of recognition and acceptance in the Ukrainian market due to its quality, marketing efforts and long-term presence. This positions the company as a successful and stable player in its industry.
2. Increased consumer confidence: Information that a brand is recognised as well known can positively influence consumer perceptions by building their trust in the quality of the goods/services labelled with the mark. It is associated with reliability and stability.
3. Increased prestige: The status of a well known brand name unquestionably adds prestige to both the brand itself and the company that owns it. This can be used in marketing and PR communications to reinforce the image.
4. Improved bargaining power: A high reputation backed by official CTM status can be an additional argument in negotiations with partners, investors, distributors, as it indicates significant market capital of the brand.

Thus, although the main purpose of obtaining CTM status is to strengthen legal protection, its significant positive impact on the company’s intangible assets, in particular on its reputation and prestige, should not be underestimated . This becomes an additional competitive advantage and evidence of a high level of market recognition of the brand.

Subsection 2.4: A stronger position in disputes

In addition to enhanced protection and protection against dilution, the status of a well-known trade mark (WTM) provides its owner with a significantly stronger legal position in the event of litigation and other trademark enforcementdisputes. This is an important practical advantage that can save time, resources and increase the chances of a successful resolution of the dispute.

The main aspects that strengthen the position of the DVTM owner in disputes:

1. Availability of official recognition: The decision of the UKRNOIVI Appeal Chamber or court to recognise a mark as well known is an official document confirming the high degree of its fame, distinctiveness and reputation as of a certain date. In any further legal disputes this document will serve as a strong evidence, which is difficult to refute the opponent. The court will not need to re-establish the fact that the brand is widely known – it has already been confirmed by the competent authority.
2. Presumption of broader protection: Since the law expressly provides for broader protection for DITMs (including dissimilar goods/services), it is easier for the owner to justify its claims for cessation of infringements that might not be considered as such in the case of a conventional TM. This provides a significant advantage in court in proving the defendant’s wrongdoing.
3. Greater weight in assessing the risk of confusion: Even in cases involving homogeneous goods/services, high brand awareness may influence the court’s assessment of the likelihood of consumer confusion. Consumers are presumably more sensitive to the use of signs similar to well-known brands, which may make it easier to prove infringement.
4. Psychological and negotiation factor: The existence of CTBT status can have a deterrent effect on potential infringers. In the event of a dispute, this status strengthens the owner’s negotiating position, often allowing the conflict to be resolved at the pre-trial stage on more favourable terms. Opponents realise the higher risks and potential costs of litigation against the owner of a DVTM.

Thus, the status of a well-known trade mark not only expands the scope of rights, but also greatly facilitates their defence in practice, providing the owner with tangible advantages in court and other dispute resolution procedures. This makes investment in obtaining this status strategically justified for companies seeking to securely protect their valuable brands.

III. Criteria for recognising a TM as well known

After a detailed consideration of the advantages offered by the status of a well-known trade mark (WFTM), a natural question arises: how can a trade mark obtain such recognition? Obviously, this special legal regime is not granted automatically only on the basis of the owner’s subjective opinion about the popularity of his brand. Ukrainian legislation and the practice of its application establish a clear list of criteria, compliance with which must be proved in order to recognise a brand as well-known.

This section of the article is devoted to the analysis of these criteria. Understanding these requirements is key for any company considering initiating a procedure to recognise its brand as well-known. Here we will look in detail at the factors that are taken into account by the competent authority (the UKRNOIVI Appeal Chamber or the court) when making a decision. These include the intensity and duration of use of the brand, the degree of its familiarity among consumers, the geography of its presence on the market, the amount of advertising and promotional investment, and the value associated with the brand. Knowledge of these criteria will enable an objective assessment of the chances of success and proper preparation of the evidence base.

Subsection 3.1: Intensity of use

One of the fundamental criteria, which is taken into account when deciding on the recognition of a trade mark as well-known, is the intensive use of of this mark on the territory of Ukraine. This criterion reflects the activity of use of the mark in economic turnover and its real presence on the market. It is not enough to simply register a mark or use it occasionally; significant, consistent and widespread use is necessary to acquire well-known status.

Intensive use refers to a combination of factors such as:

• Volumes of sales of goods/services: Significant volumes of sales of goods or provision of services under a given brand are an important indicator of its market presence and intensity of use.
• Scale of activity: The use of the brand is not limited to a narrow segment or local market, but covers a significant part of the territory of Ukraine or the relevant market sector.
• Market share: A noticeable market share of the goods/services under the brand also indicates the intensity of its use.
• Stability and continuity: The use of the brand should not be occasional, but stable and continuous over time.

In addition to intensity, an equally important aspect is the duration of use of the mark. Although the law does not set a minimum period of use required for a mark to be considered well-known, practice suggests that marks that have been used for a significant period of time are favoured. Prolonged use helps to anchor the brand in the minds of consumers and build its reputation.

Theintensity and duration of use is assessed comprehensively. A short period of use may be compensated for by an extremely high intensity (e.g., in the case of viral marketing or rapid market penetration). Conversely, prolonged but not overly intensive use may also be taken into account. The key is to prove that the use of the brand was significant enough in volume and/or duration to have contributed to its widespread familiarity among the relevant range of consumers. Evidence may include data on sales, distribution geography, production capacity, duration of market presence, etc.

Subsection 3.2: The degree of familiarity among consumers

The central element that defines the very essence of a well-known trade mark is, of course, its high degree of awareness among the relevant circle of consumers in Ukraine. It is this criterion that distinguishes the DVTM from ordinary brands and is a direct evidence of its market power and reputation. It is not enough to use a brand intensively; it is necessary to prove that this use has led to a significant part of the target audience knowing it and associating it with specific goods/services and their manufacturer/supplier.

Determining the degree of familiarity of aTM is a complex task that requires objective evidence. It is assessed how well the brand is familiar tothe relevant group of consumers, i.e. those persons who are actual or potential buyers of goods / services of this type, or those involved in the channels of their distribution.

The most common and convincing method of proving a high degree of TM awareness is conducting representative surveys of consumers. Such sociological surveys, conducted by specialised companies, aim to establish:

• Level of spontaneous brand knowledge (when the respondent names the brand himself/herself when asked about certain products/services).
• Level of brand knowledge with prompting (when the respondent is shown/named the brand and asked if it is familiar to him/her).
• Correctness of brand association with specific goods/services.
• Correctness of brand association with a specific manufacturer/company.
• The proportion of respondents in the target group who demonstrate knowledge of the brand.

The results of such consumer surveys, properly framed and interpreted, are key evidence when considering an application to recognise a brand as well-known. Although the legislation does not set a specific percentage threshold of fame, practice shows that recognition rates should be high enough to convince the UKRNOIVI Appeal Chamber or the court.

In addition to data from consumer surveys, other evidence such as numerous publications in the media, awards at exhibitions, high positions in market ratings and the like can indirectly confirm the degree of recognition of theTM. However, it is the results of sociological surveys that are considered to be the most direct and objective evidence of the level of brand awareness of the target audience.

Subsection 3.3: Geography of use

Along with the intensity and duration of use, as well as the degree of familiarity among consumers, an important criterion in assessing the potential for recognition of a trade mark as well known is the geography of its use. This criterion concerns the territorial coverage of the brand’s presence in the Ukrainian market. It is logical that in order to achieve wide publicity, the brand must be available and visible to consumers in a significant part of the country.

The key here is to prove the fact that the brand is used specifically on the territory of Ukraine. International use or brand awareness abroad may be ancillary factors indicating the brand’s potential, but they do not replace the need to demonstrate active operation and recognisability within the Ukrainian market.

The ideal situation is when the use of the brand covers all or the vast majority of the territory of Ukraine. This can be confirmed by data on product distribution, service delivery network, regional sales, advertising campaigns covering the whole country, etc.. A wide geographical coverage directly contributes to achieving a high level of familiarity among consumers in different regions.

However, the lack of use of a brand in absolutely every locality of Ukraine is not always an obstacle to recognising it as well known. Depending on the specifics of the goods/services and market features, proof of intensive use and high awareness in key regions of the country (e.g. major cities, economically active regions) or within a specific market segment that geographically covers a significant part of territory of Ukraine may be sufficient. The main thing is that geography of use should be sufficient for the brand to become widely known among the relevant range of consumers in Ukraine.

Evidence confirming the geography of use, can be: contracts with distributors in different regions, sales reports with a breakdown by region, data on the location of retail outlets or branches, materials of regional advertising campaigns, participation in regional exhibitions and fairs, etc. Comprehensive analysis of these data allows us to assess the real scale of brand presence in territory of Ukraine.

Subsection 3.4: Advertising activities and costs

Achieving widespread brand awareness is rarely spontaneous. Usually, it is the result of purposeful and significant efforts to promote it on the market. Therefore, when assessing an application for recognition of a brand as well known, much attention is paid to the analysis of the applicant’s advertising activities and the amount of marketing expenditure, aimed at popularising the brand. This criterion is directly related to the degree of brand awareness among consumers, because it is the intensive advertising that is one of the key tools for the formation of this awareness.

The competent authority (the UKRNOIVI Appeal Chamber or the court) scrutinises the evidence that demonstrates the scale, duration and nature of the advertising activities carried out by the brand owner. Significant and consistent investment in advertising is regarded as an indicator of the owner’s serious intentions to develop the brand and demonstrates that it is actively working to increase awareness.

Evidence supporting active advertising activity may include a wide range of materials:

• Advertising campaign volumes and budgets: Documentary evidence of marketing expenditure on advertising for a specific period (preferably several years prior to the date for which the statement is claimed). This may include financial statements, statements, contracts with advertising agencies.
• Examples of advertising materials: Copies of commercials (TV, radio), layouts for print media, banners for online advertising, outdoor advertising materials (billboards, citylights), catalogues, brochures, etc.
• Media plans and placement reports: Documents showing where, when and with what intensity the advertising was placed (list of TV channels, radio stations, publications, websites, release schedules).
• Participation in exhibitions and fairs: Diplomas, photos of stands, catalogues of participants, confirming active presentation of the brand at profile events.
• Sponsorship activities: Evidence of support of cultural, sporting or other public events with the use of the trade mark.
• Internet promotion: Data on contextual advertising, activity in social networks, SEO-optimisation, publications on popular online resources.

Important is not only the mere fact of advertising, but also its scale, coverage of the target audience and duration. Significant marketing expenditures, carried out over a long period of time and using various communication channels, are a strong argument in favour of recognising a brand as well known. They demonstrate that the owner has worked systematically to make his brand recognisable to a wide range of consumers in Ukraine.

Subsection 3.5: Value associated with the TM

The last but not least criterion that is taken into account when deciding whether a brand is recognised as a well-known brand is the value associated with the TM. This factor reflects the economic and reputational weight of the brand in the market, its ability to generate revenue and influence consumer choice. High value of a brand is often a direct consequence of its wide popularity, positive reputation and customer loyalty, which, in turn, confirms its status as a significant intangible asset.

Value here should be understood not only in terms of financial indicators, although they are certainly important. It is about comprehensive valuation, which includes:

• Market value of the brand: While determining the exact value of a brand is challenging, high valuations from independent experts or mergers and acquisitions can provide strong evidence.
• Goodwill (goodwill): The significant value associated with a brand is often linked to accumulated goodwill – positive perceptions of the company and its products by consumers, partners and investors.
• Licensing value: If a brand is successfully used under licensing agreements, the amount of royalties and the number of licensees may indicate its high value and market demand.
• Impact on company capitalisation: For public companies, a high brand value can have a positive impact on market capitalisation, which is also an indicator of brand value.
• Ability to generate a premium price: If the branded goods/services can be sold at a higher price than their peers precisely because of the strength of the brand, this is evidence of significant value.

Evidence to support the high value associated with a TM can include: brandvaluation reports , licensing revenue data, information on brand positions in international and national rankings (e.g. Brand Finance, Interbrand), financial statements demonstrating the impact of the brand on performance, expert opinions.

Thus, the demonstration of the significant value that is associated with a trade mark serves as additional evidence of its exclusive position in the market and complements other criteria, such as intensity of use and degree of fame, when justifying the need to grant it the special legal regime of a well-known trade mark.

IV. The procedure for recognising a TM as well-known in Ukraine

After we have considered in detail the criteria that a trade mark must meet in order to potentially be recognised as well-known, the logical next step is to analyse the very procedure by which this status can be officially obtained in Ukraine. It is important to realise that even if a brand objectively meets all the criteria, its recognition as well-known is not automatic. It is necessary to initiate and undergo a formal procedure established by law.

This section is devoted specifically to the description of the mechanism of recognising a trade mark as well-known. We will consider which state authority is authorised to make such decisions, what actions the applicant must undertake, in particular, what set of documents must be prepared and submitted, how the case is examined and what the possible outcomes of this procedure are. Knowledge of these procedural aspects is critical for brand owners who intend to obtain for their brand the enhanced legal protection afforded by the status of a well-known trade mark.

Subsection 4.1: Competent authority

The procedure for official recognition of a trademark as well-known in Ukraine involves an application to a specially authorised state body. According to the current legislation, the main body competent to make a decision on the recognition of a trademark as well known in an administrative procedure is Appeal Chamber of the National Authority for Intellectual Property and Innovation (UKRNOIVI).

It is the Appeals Chamber of UKRNOIVI that examines the applications of trade mark owners (or persons using the designation as a mark) and the evidence provided by them for compliance with the established criteria (which we considered in Section III). Based on the results of the examination, the Appeal Chamber takes a reasoned decision to recognise the mark as well known on a certain date or to refuse such recognition.

It is worth noting that the legislation also provides for the possibility of recognising a trade mark as well-known in court. That is, the owner of the brand may file a corresponding claim with the court. However, in practice, it is the administrative route through the UKRNOIVI Appeal Chamber that is more often used, as this procedure is specialised and adapted to deal with such specific intellectual property issues. The decision of the Appeal Chamber is an official act confirming the status of a well-known brand.

Subsection 4.2: Filing an application

The initiation of the procedure for the recognition of a trade mark as well-known begins with the filing of a relevant application with the National Authority for Intellectual Property and Innovation (UKRNOIVI) for its further consideration by the Appeal Chamber. This application is a formal document, which should contain a request to recognise a particular mark (or designation) as well-known in Ukraine in respect of certain goods and/or services as of a certain date.

However, the application itself is only a formal basis for opening proceedings. The key element of a successful case is a properly assembled and executed package of documents, which is attached to the application. It is these documents that serve as the evidentiary basis on which the Appeals Chamber will assess the mark’s compliance with the well-known criteria (discussed in detail in Section III).

Thedocumentation package should normally contain comprehensive evidence confirming:

• Intensity and duration of use of the mark:
  • Data on the volume of production and/or sale of goods/services under this brand in Ukraine (with dynamics by years).
  • Information on the geography of distribution of goods/services in Ukraine.
  • Documents confirming the date of commencement of use of the brand in Ukraine.
• The degree of awareness among consumers:
  • Results of sociological surveys of a relevant group of consumers regarding the level of knowledge and association of the brand (reports of specialised companies).
• Advertising activities and marketing expenses:
  • Examples of advertising materials (TV, radio, print, outdoor advertising, Internet).
  • Documents confirming the amount of expenditure on advertising and brand promotion (financial statements, contracts).
  • Media plans, reports on advertising placement.
  • Evidence of participation in exhibitions, sponsorship projects.
• Geography of use:
  • Evidence of brand presence in different regions of Ukraine (contracts with distributors, network data).
• Value associated with TM:
  • Information about positions in brand ratings.
  • Information on licence agreements (if any).
  • Brand valuation reports (if available).
  • Awards, diplomas, media publications covering the success of the brand.

It is important to emphasise that the package of documents should be as complete, convincing and properly executed as possible (with translations into Ukrainian if the documents are foreign). The quality and volume of the evidence provided directly affects the outcome of the consideration of application. The preparation of such a package is a complex process that often requires the involvement of qualified intellectual property lawyers. The application should also be accompanied by a document confirming the payment of the application fee.

Subsection 4.3: Consideration of the application

After submitting the application and the full package of documents to UKRNOIVI and passing the formal verification, the case is submitted for consideration to a collegial body – the Appeal Chamber. It is at this stage that a detailed substantive analysis of the evidence provided by the applicant and its comparison with the criteria for the recognition of a mark as well known, established by law, takes place.

The process of hearing a case before the Appeals Chamber usually involves the following stages:

1. Appointment of a panel: A panel of members of the Appeals Chamber, which specialises in trade mark matters, is formed to consider a particular application.
2. Examination of materials: The panel members scrutinise the application and the entire set of documents and evidence submitted. They analyse the information provided in relation to intensity of use, degree of publicity, promotional activity, geography of use and brand value.
3. Possibility of requesting additional information: If the Panel has questions or if the evidence provided appears insufficient to reach an informed decision, the Appeals Chamber may invite the applicant to submit additional material or explanations within a specified time limit.
4. Appointment of the hearing : As a rule, the hearing will take place at the Appeals Chamber with the applicant or his representative (e.g. patent attorney or Polikarpov Law Firm lawyer) present. The applicant is notified in advance of the date, time and place of the hearing.
5. Conduct of the meeting: During the meeting, the applicant (or his/her representative) has the opportunity to orally present his/her arguments, give explanations regarding the submitted documents and answer questions from the members of the collegium. Minutes of the meeting shall be kept.
6. Decision-making: After completion of the meeting and discussion of all materials of the case, the panel of the Appeal Chamber makes a decision on the merits of the application.

The whole process of consideration of the case is aimed at comprehensive, complete and objective study of all circumstances relevant to the recognition or non-recognition of the brand well known in Ukraine. The duration of the review may vary depending on the complexity of the case and the volume of materials submitted.

Subsection 4.4: Receipt of the decision

The final stage of the procedure of consideration of the application for recognition of a trade mark as a well-known trade mark is the adoption and receipt of the decision of the Appeal Chamber UKRNOIVI. After a comprehensive study of the submitted documents, evidence and holding a meeting, the panel of the Appeal Chamber makes a motivated decision on the merits of the claimed claims.

Two variants of such a decision are possible:

1. Positive decision: the Appeal Chamberrecognises the trade mark as well known in Ukraine in relation to the applicant and the goods and/or services indicated in the application as of a certain date. Such decision ofthe Chamber of Appealclearly states:
   • Image or verbal designation of the mark recognised as well-known.
   • Information on the identity of the owner of the mark
   • . List of goods and/or services in respect of which the mark is

   recognised as well-known.

   • Date on which the mark is recognised as well-known.
     This decision is an official document confirming the acquisition of a special legal status by the mark. Information on the recognition of the mark as a well-known mark shall be entered into the relevant list maintained by UKRNOIVI.
2. Negative decision (refusal): If the evidence provided is considered insufficient to prove that the mark meets the established criteria (e.g. high degree of publicity or intensity of use is not proven), the Appeals Chamber decides to refuse to recognise the mark as well-known. Such decision of the Appeals Chamber shall also be motivated, indicating the grounds for refusal.

The applicant shall receive a copy of the decision of the Appeals Chamber. In case of disagreement with the decision of refusal, the applicant has the right to appeal against it in court within the time limits established by law.

Thus, the receipt of the decision of the Appeal Chamber is the final point of the administrative procedure, which either officially confirms the status of a well-known mark with all the relevant advantages, or states that there are insufficient grounds for such recognition at the time of examination of the application.

V. Examples of well-known TMs in Ukraine

In order to better understand which brands have been able to achieve special legal status in Ukraine, it is useful to provide specific examples of TMs that have been officially recognised as well-known by the UKRNOIVI Appeal Chamber or a court. Although the full list of such brands is quite large and is constantly being updated, giving a few vivid examples will help to illustrate the diversity of brands that have received this status.

Recognition of a brand as well-known is possible both for Ukrainian brands and for international brands that are intensively used and widely known on the territory of Ukraine. Below are some examples of DVTM from different spheres of activity:

Examples of Ukrainian brands recognised as well known:

• “ROSHEN”: A well-known confectionery brand.
• “Svitoch”: Another popular Ukrainian brand of sweets with a long history.
• “Novaya Pochta”: The leader of the express delivery market in Ukraine.
• “Morshinskaya”: One of the most famous brands of mineral water.
• “Sandora”: A popular brand of juices and nectars.

Examples of international brands recognised as well known in Ukraine:

• “Coca-Cola”: A global brand of soft drinks.
• “McDonald’s: The world famous fast food chain.
• “Google: A leading search engine and technology company.
• “Mercedes-Benz”: A well-known manufacturer of premium cars.
• “Adidas” : A popular brand of sportswear and footwear.

These examples of DVTM demonstrate that a brand from any industry – from food and beverages to delivery services, technology or automotive – can achieve well-known status. The main factors are not the field of activity, but achieving a high level of familiarity among Ukrainian consumers and meeting the other criteria discussed earlier. The presence of both Ukrainian brands and international brands in this list emphasises the universality of this legal institution.

Conclusions

To summarise, it can be stated that the status of a well-known trade mark is a special legal regime that provides the owner with significantly broader and stronger tools to protect its brand compared to the standard registration procedure. The main advantages of this status include extended protection of rights that can extend even to heterogeneous goods and services, effective protection against brand dilution and unfair use of reputation, increased reputational value of the asset, and a significantly stronger position in potential disputes.

At the same time, as was demonstrated in the analysis of the criteria and procedure, obtaining the status of a well-known trade mark is a rather complex, lengthy and resource-consuming process. It requires the collection and submission of a large amount of convincing evidence confirming the high level of brand awareness among Ukrainian consumers, intensity of its use, significant marketing investments and market value.

Despite the complexity of the procedure, the desire to obtain the status of a well-known trade mark is quite justified for owners of strong and well-known brands who have invested significant resources in their development. This status is an important strategic tool to ensure a high level of legal protection for a company’s valuable intangible assets, protecting them from any form of unauthorised encroachment. While basic Trademark Registration: a necessity for your business is a fundamental step, recognising a brand as well known is a transition to a qualitatively new level of protection for your brand. Polikarpov Law Firm specialists are ready to provide qualified assistance at all stages of this process.