Trademark Invalidation in Ukraine for Violation of Third-Party Rights: What Foreign Rights Holders and Businesses Need to Know

Obtaining a trademark registration certificate in Ukraine is often perceived as the final step in securing brand protection. In reality, a registered trademark is not immune from challenge. Under the Law of Ukraine on the Protection of Rights to Marks for Goods and Services (hereinafter – the “Law”), a trademark certificate may be declared invalid on several grounds – including where the application was filed in violation of the rights of third parties (Article 19(1)(c) of the Law).

While this ground is invoked less frequently than absolute or relative refusal grounds, it is a highly effective tool against bad-faith or unauthorized registrations – and one of particular relevance to foreign companies whose intellectual property rights may have been misappropriated in Ukraine. This article examines which third-party rights are protected under this provision and how Ukrainian courts have applied it in practice.

Infringement of Copyright

A trademark certificate may be invalidated where the mark incorporates a work protected by copyright – such as an original graphic, logo, illustration, typeface composition, or character – and the applicant lacked authorization from the author or the copyright holder to use it. This scenario most commonly arises where a mark was designed by an external designer, illustrator, or agency, and the intellectual property rights were not properly assigned.

Filing a trademark application that reproduces or adapts a protected work without authorization may constitute filing “in violation of the rights of another person” within the meaning of Article 19(1)(c) of the Law.

In such disputes, Ukrainian courts typically assess:

• authorship of the underlying work and the chain of title;
• whether economic (patrimonial) rights were assigned or licensed;
• whether the work was created within an employment or contractual relationship;
• whether the mark constitutes a reproduction or adaptation of the protected work.

Where sufficient evidence of copyright infringement at the application stage is established, the certificate may be declared fully invalid.

Infringement of Industrial Design Rights

Another basis for invalidation arises where a trademark application reproduces or substantially incorporates the appearance of a product protected as a registered industrial design belonging to a third party. This may include the shape of packaging, the design of a bottle or container, a label, or the distinctive appearance of the product itself.

The holder of a registered industrial design has the exclusive right to use it and to authorize its use by others. Filing a trademark application that reproduces the protected industrial design without the rights holder’s consent constitutes filing in violation of another person’s rights under the Law.

In such proceedings, courts typically examine:

• whether the industrial design registration is valid and in force;
• the scope of legal protection afforded by the registered design;
• whether the trademark application constitutes a reproduction or copy of the protected design.

Where the court determines that the trademark reproduces a protected industrial design without authorization, this constitutes grounds for full invalidation of the certificate.

Rights of the Original Goods Manufacturer: Distributor and Agent Cases

One of the most commercially significant scenarios involves a trademark application filed by a former or current distributor, agent, or business partner – without authorization from the foreign manufacturer or brand owner. This is a pattern frequently encountered where a foreign company’s mark has been registered in Ukraine by a local distributor acting in bad faith.

Case reference – фітолізин (“phytolisyn”), Case No. 21/442:

In this landmark ruling (Supreme Commercial Court of Ukraine, 10 February 2009), the courts found that the trademark application had been filed by a former distributor in violation of the rights of the foreign pharmaceutical manufacturer, which held rights to a similar designation in its home jurisdiction. The certificate was accordingly declared invalid.

Case reference – multigum / mastigum / flexigum, Case No. 910/23644/13:

In this decision (Supreme Commercial Court of Ukraine, 21 July 2015), the courts assessed the nature of the distributorship relationship and found that the registration of the marks in the distributor’s name was of a “technical” character and did not reflect the actual allocation of rights between the parties. The certificates were declared invalid.

These cases are directly instructive for foreign rights holders seeking to challenge unauthorized trademark registrations in Ukraine and to recover their brand assets through litigation.

Infringement of Geographical Indication Rights

A trademark application may also infringe the rights of holders of a registered geographical indication (GI) where the mark reproduces or imitates the protected GI and is held by a party that has no entitlement to use it. Under Ukrainian law, the right to use a GI is reserved exclusively for producers who manufacture, extract, or process raw materials for the relevant product within the designated geographical area, and whose product’s special quality, reputation, or other characteristics are attributable to that geographical origin.

In GI-related disputes, courts assess:

• whether the geographical indication is validly registered and in force in Ukraine;
• whether the applicant qualifies as an authorized user of the GI;
• the degree of identity or similarity between the trademark and the protected GI.

Where these conditions are met, the validity of the trademark certificate may be successfully challenged.

Other Third-Party Rights That May Be Infringed

The rights enumerated above do not constitute an exhaustive list. Other rights whose potential infringement should be carefully assessed before filing a trademark application in Ukraine include:

• the right to a personal name (where the mark incorporates the name of a real person without consent);
• the rights of a person depicted in a photograph or image;
• the rights to a trade name (commercial name) of a third party.

Conclusion: Trademark Registration Requires Legal Due Diligence

Trademark registration in Ukraine is not merely a matter of selecting a distinctive name or logo – it requires a thorough assessment of the legal “cleanliness” of the mark. A certificate obtained through a process that violated the rights of a third party remains vulnerable to invalidation, regardless of how long it has been registered.

For businesses – whether Ukrainian or foreign – the practical takeaway is clear: rights clearance should be conducted before filing, not after a dispute arises. Conducting preliminary IP clearance searches, properly structuring agreements with designers and business partners, and ensuring a complete chain of title is in place will cost significantly less than litigation and rebranding down the line.

A strategic and legally sound approach to trademark registration in Ukraine is the most reliable investment in the long-term stability and enforceability of your brand.