Is it True That Non-Use of a Trademark for Five Years Can Lead to Its Early Termination?

Business owners sometimes temporarily suspend their operations, including producing and selling goods. Such inactivity can have serious repercussions, including early termination a trademark certificate and prohibiting its use.

What is a Trademark?

A trademark is a sign used to identify the goods or services of a specific producer or provider among similar offerings from other businesses. It can include words, letters, numbers, images, colour combinations, or other elements.

Use of a Trademark

Under Ukrainian law, the use of a trademark includes:

Affixing it to any goods for which the trademark is registered, the packaging containing such goods, related signage, labels, patches, tags, or other attached items. This also includes storing these goods with the trademark to offer them for sale and offer, selling, importing, and exporting them. Using it to provide any service for which the trademark is registered. Utilizing it in business documentation, advertising, and online.

Early Termination of a Trademark Certificate

According to Article 18, Part 4 of the Ukrainian Law " On the Protection of Rights to Trademarks for Goods and Services" if a trademark is not used in Ukraine for all or part of the goods and services listed in the registration certificate continuously for five years from the publication date of the certificate, or if its use is suspended for a continuous period of five years from any date after this publication, any person may apply to the court for the early termination of the trademark certificate, either in whole or in part. The EU–Ukraine Association Agreement, in Article 198, states that the Parties shall provide that a trademark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the relevant territory in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

In practice, this means that if a trademark is not used continuously in Ukraine for five years from the certificate's publication date or if its use is suspended for five years from any date after this publication, any person may seek the certificate's early termination through the courts.

The key issue in cases of early termination due to non-use is proving, with proper, credible, admissible, and sufficient evidence, that the trademark has not been used. However, such a claim can only be successful if the certificate holder does not provide valid reasons for the non-use of their trademark.

Valid Reasons for Non-Use

Valid reasons for non-use may include:

Government prohibitions, sanctions, or other legal restrictions; Inability to market products due to production facilities being located in temporarily occupied territories or areas of active conflict; Force majeure circumstances, such as natural disasters; Existing court orders prohibiting the sale of products. War can also be considered a valid reason for non-use, even if the business is not directly in a combat zone. Judicial practice supports this approach.

Evidence of Trademark Use

In court proceedings, the trademark holder must provide evidence of use. Such evidence may include:

Samples of goods bearing the trademark; Documents proving the sale or offer of goods (catalogues, price lists); Cash receipts, invoices, and other documents containing information about the product name and place of purchase; For non-resident trademark owners, customs declarations and other customs documents.

"Interested Party" in Legal Disputes

In such legal disputes, an "interested party" typically files a claim for the early termination of the trademark certificate. After winning the case, this party often registers the trademark in their name and uses it in business activities. As a result, the previous owner loses their rights to the trademark. This highlights the risks for trademark owners who need to use their marks appropriately over extended periods.

Restoration of Trademark Use

A trademark certificate cannot be terminated if its use is restored before the early termination claim is filed. However, if the restoration of use began less than three months before the claim was filed, and the certificate holder was aware of the potential claim, this may not prevent termination.

Consequences of Early Termination

If your trademark certificate is terminated, you lose the right to use it on your products. This can significantly impact your business, as a trademark is a crucial product and service identification element.

Conclusion

The concept of early termination of trademark certificate is designed to encourage active trademark use in commercial activities and uphold the principle of "genuine use of trademarks." The possibility of early termination is a legal tool to prevent the monopolization of marks not used for identifying goods and services.

Therefore, a trademark certificate can be early terminated if:

The trademark has not been used for five years; The owner does not provide evidence of use; There are no valid reasons for non-use, such as government prohibitions, force majeure circumstances, war, or ongoing court disputes. In case of early termination, the interested party may register and use the trademark in their name, resulting in the previous owner's loss of rights.

Prepared by MORIS counsel Mykola Kotenko and paralegal Maryna Lekar.