Genuine Use of a Trademark in Ukraine: What Rights Holders Must Know About Non-Use Cancellation

In Ukraine, a trademark registration does not confer permanent rights if the mark is not genuinely used in commerce. The legal mechanism for removing dormant registrations – cancellation proceedings based on non-use – is increasingly active in Ukrainian courts. For both domestic and foreign rights holders, understanding how Ukrainian courts assess genuine use is now a commercial priority, not merely a legal technicality.

This article examines the legal framework, the concept of genuine use as courts have developed it through case law, how the five-year non-use period is calculated (including the landmark 2025 ruling that ownership changes do not reset the clock), and the defences available to rights holders who face cancellation claims – including the specific question of whether wartime conditions excuse non-use.

📋 Scope note: Any person may petition a Ukrainian court for early termination of a trademark certificate if the mark has not been used in Ukraine for a continuous five-year period without valid reasons. The burden of proving genuine use falls on the certificate holder.

Part I | The Legal Framework

1.1 National law

The core provision is Article 18(4) of the Law of Ukraine on the Protection of Rights to Marks for Goods and Services (Law No. 3689-xii): if a trademark is not used in Ukraine – in whole or in part with respect to the goods or services specified in the certificate – for a continuous period of five years from the date of publication of the certificate, any person may apply to a court for early termination of the certificate.

Article 17 of the same Law imposes a duty of good-faith exercise of rights flowing from the certificate. Non-use of a trademark without valid reason for the prescribed period is treated as a failure to meet this duty.

What Ukrainian national law does not contain is an explicit definition of ‘genuine use’. This gap has been filled by courts through the interpretation of statutory provisions in light of Ukraine’s international obligations – a process that is ongoing and that constitutes one of the most active areas of trademark jurisprudence in Ukraine today.

1.2 International framework

Two international instruments directly govern the genuine use requirement for Ukrainian trademark registrations.

The EU–Ukraine Association Agreement (Articles 197 and 198) provides that if an owner does not begin genuine use of a registered trademark for the goods or services for which it is registered within five years of the completion of the registration procedure, the trademark may be made subject to sanctions in the absence of proper reasons for non-use. Registration shall be liable to revocation if, within a continuous five-year period, it has not been put into genuine use in the relevant territory for the goods or services in respect of which it is registered and there are no proper reasons for non-use.

Article 19 of the trips Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) provides that if use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless the owner shows valid reasons based on the existence of obstacles to such use.

⚖️ Key distinction: Ukrainian law applies a five-year non-use period (stricter than the trips minimum of three years). The Association Agreement with the EU incorporates the same five-year standard. Both instruments treat the absence of ‘proper reasons’ or ‘valid reasons’ as a condition for cancellation.

Part II | Genuine Use: What Courts Require

2.1 The concept in case law

Because ‘genuine use’ appears in the EU–Ukraine Association Agreement and in the trips Agreement but not in the national trademark statute, Ukrainian commercial courts have developed the concept through their decisions – drawing on the Association Agreement and, increasingly, on case law of the Court of Justice of the EU.

In Case No. 910/19358/23, the Commercial Court of Kyiv (judgment of 31 January 2024) stated explicitly that the defendant had not provided adequate evidence and had not proved genuine use of the trademarks in Ukraine during the five years preceding the date of the cancellation claim – and on that basis the court upheld the cancellation petition.

In Case No. 910/13819/24 (judgment of 7 May 2025), the same court repeated the approach: the failure to demonstrate genuine use of the trademarks in Ukraine during the five-year pre-filing period rendered the cancellation claim well-founded and subject to being upheld.

2.2 The standard of proof

Courts assess evidence of genuine use holistically. The Supreme Court (Commercial Court of Cassation) has confirmed in multiple rulings – including Cases No. 910/8180/17 (29 May 2019), 910/4947/18 (4 July 2019), and 910/10906/22 (30 November 2023) – that the mere conclusion of contracts, including licensing agreements, regarding the disposal of property rights to a mark cannot be treated as use of that mark.

The evidentiary standard that emerges from case law requires that the evidence demonstrate actual economic circulation of goods or services under the trademark. Courts consider not only the existence of individual documents but their content, authenticity, manner of procurement, and the connections between them. A single document or two is generally insufficient; the rights holder must present a coherent picture of commercial activity.

Courts also consistently reject certain categories of evidence as inadequate, regardless of volume. Preparatory measures, the completion of documentation, and registration actions taken immediately before the filing of a cancellation claim are disregarded. Documents that do not directly confirm commercial activity under the mark are treated as insufficient.

Evidence type	Courts’ approach	Notes
Invoices, supply contracts, distribution agreements	✅ Accepted – if they show commercial use of the mark	Must cover the five-year non-use period
Advertising and marketing materials	✅ Accepted – if dated and linked to the mark	Digital campaigns, print, conference materials
Licensing agreements (alone, without use evidence)	❌ Insufficient – contracts ≠ use	Supreme Court: Cases 910/8180/17, 910/4947/18, 910/10906/22
Registration actions / preparatory measures	❌ Insufficient – not commercial use	Especially if taken immediately before cancellation filing
Single document or two	⚠️ Usually insufficient	Courts require a coherent body of evidence

Part III | Calculating the Five-Year Period

3.1 Starting point and continuity

The five-year period of non-use runs from the date of publication of the certificate of registration (or, for international registrations, the date of publication of the notification of protection in Ukraine). The period must be continuous – courts draw a sharp distinction between genuine commercial use and preparatory or formalistic acts that do not indicate active commercial engagement with the mark.

3.2 The landmark 2025 ruling: ownership change does not reset the clock

The most significant recent development in Ukrainian trademark non-use law is the Grand Chamber of the Supreme Court’s ruling of 5 March 2025 in Case No. 910/8781/23. This decision resolved a longstanding divergence in case law and established a binding principle.

The Grand Chamber held that the five-year period of continuous non-use of a trademark is not interrupted by a change of owner or authorised user. The certificate may be subject to early termination if, during a continuous five-year period, the trademark was not used in Ukraine in respect of the goods or services for which it is registered and there are no valid reasons for non-use – regardless of whether the mark changed hands during that period.

The Grand Chamber reached this conclusion through systematic interpretation of Article 18(4) of the Trademark Law and Articles 198 and 200 of the Association Agreement, supported by the case law of the Court of Justice of the EU (including the EUIPO judgment of 13 October 2021 in Case T-12/20), which confirms that the five-year use period includes use by all successive owners, not only the current one.

⚠️ Critical implication for acquirers: Anyone acquiring a trademark in Ukraine must assess the full use history since the certificate was published – not merely since the date of the transfer. A five-year non-use period that began under the previous owner continues to run after the transfer and cannot be restarted by the change of title. Due diligence on trademark acquisitions must now include a review of pre-acquisition use evidence.

The Supreme Court (Civil Court of Cassation, judgment of 4 June 2025, Case No. 757/13390/21) applied the same principle to emphasise the legislative purpose: the five-year non-use rule exists to incentivise owners to make actual use of their marks. Allowing the period to restart with each ownership transfer would render the rule ineffective and would enable bad-faith transfers designed to avoid expiry – an outcome directly contrary to the purpose of the legislation.

Part IV | Valid Reasons for Non-Use

4.1 What qualifies

Ukrainian law recognises that non-use may be excused by valid reasons. The two principal categories recognised in case law are force majeure circumstances – obstacles to use that are independent of the owner’s will – and regulatory restrictions, including import limitations, product licensing requirements, and other legislative or administrative conditions imposed on the goods or services in question.

The Commercial Court of Kyiv, in its ruling of 30 January 2025 in Case No. 910/5510/24, confirmed both categories and added a further recognised basis: the risk that the use of the mark by the petitioner or a third party would mislead consumers as to the origin or quality of the goods or services in question.

4.2 Wartime conditions and the non-use period

A question of acute practical importance is whether the ongoing state of martial law in Ukraine provides a valid reason for non-use, or otherwise extends or suspends the five-year period.

The Commercial Court of Kyiv addressed this directly in Case No. 910/5510/24 (ruling of 30 January 2025). The court held that the Law of Ukraine on Protection of Intellectual Property Rights Interests During Martial Law does not apply to disputes of this kind: during martial law, intellectual property rights established by law continue to operate and are exercised by IP rights holders in full. The mere existence of martial law does not, on its own, constitute a valid reason for non-use of a trademark.

⚠️ Wartime caution: The wartime IP protection law does not suspend the five-year non-use period for trademark cancellation proceedings. Rights holders who have not been using their marks due to wartime conditions should assess whether those conditions amount to specific obstacles qualifying as valid reasons – and should document that assessment and the underlying factual position with care.

Part V | Practical Guidance for Rights Holders

5.1 Maintaining registrations

The following practices, consistently applied, provide the most robust protection against cancellation claims based on non-use.

• Document use systematically. Maintain a structured archive of evidence: supply invoices and contracts with distributors and retailers; dated packaging samples and product photographs; advertising and promotional materials with their publication or broadcast dates; and statistical data on sales volumes under the mark.
• Ensure continuity of use. Even minimal but regular commercial use of a mark provides protection against cancellation. A gap in use – even a brief one – may be exploited if it coincides with a continuous five-year period.
• Use the mark for all registered goods and services. Non-use in respect of part of the registered specification may result in partial cancellation – limiting the scope of protection – even if use in respect of other goods or services is established.
• Monitor licensee use. Use of the mark by a licensee with the owner’s consent counts as use by the owner. Ensure that licensing arrangements are documented and that licensees actually use the mark in commerce.
• Conduct pre-acquisition due diligence. Before acquiring a trademark, review the complete use history since the certificate was published. The five-year clock runs from publication – not from the transfer date.

5.2 Responding to a cancellation claim

If a cancellation claim is filed, the rights holder must act immediately to compile and present evidence. Last-minute registration actions and preparatory measures will be disregarded. The focus must be on documenting genuine commercial activity that predates the filing of the claim and covers the five-year period in question.

If valid reasons for non-use exist – including force majeure or regulatory restrictions – these must be specifically pleaded and supported with evidence. The burden of establishing valid reasons lies with the rights holder.

Risk factors for certificate holders	Protective measures
No documented commercial use in five years	Maintain ongoing use records from day one of registration
Use only of similar but unregistered variants	Use the mark as registered; variants that materially differ may not count
Licensing agreements without actual use by licensee	Verify and document actual commercial use by all licensees
Ownership transfer – previous owner did not use mark	Pre-acquisition use audit – clock does not restart on transfer (Вп вс 05.03.2025)
Reliance on wartime conditions alone to excuse non-use	Assess and document specific obstacles; general martial law is insufficient

Conclusion

The standard of genuine use in Ukrainian trademark law is developing rapidly – driven by direct application of the Association Agreement with the EU, alignment with cjeu jurisprudence, and a series of significant Supreme Court rulings. The Grand Chamber’s March 2025 ruling that ownership changes do not restart the five-year period is the most consequential development for transactional practice: it affects the valuation and risk assessment of every trademark acquisition in Ukraine.

For rights holders – domestic and international alike – the practical message is consistent with European standards: a trademark registration is a right attached to use, not to paper. The most effective protection against cancellation is systematic, documented commercial use of the mark for all registered goods and services, maintained throughout the life of the registration.