Artex Ukraine Ip Client Manual Eg

ARTEX UKRAINE
INTELLECTUAL PROPERTY
CLIENT MANUAL
TERMS AND CONDITIONS, GENERAL OVERVIEW, DOCUMENT REQUIREMENTS FOR

INTELLECTUAL PROPERTY SERVICES IN UKRAINE
ARTEX UKRAINE
Full-Service Intellectual
Property Firm
Brovary Office: Suite 90, 93 Sholom Aleihem St.

07400, Brovary, Kyivska Obl. Ukraine
Kyiv office: Suite 104, 5 Tampere St.
02105, Kyiv, Ukraine
Webpage: www.artex.ua
Email: info@artex.ua
Phone: +380.50.358.85.68
Phone: +380.50.384.91.38
UKRAINE
Intellectual Property Client Manual
TABLE OF CONTENTS
TERMS AND CONDITIONS.............................................................................................3
Services......................................................................................................................................................................3
Engagement..............................................................................................................................................................4
Representation .........................................................................................................................................................4
Staffing ......................................................................................................................................................................4
Facilities.....................................................................................................................................................................5
Billing.........................................................................................................................................................................5
Confidentiality..........................................................................................................................................................5
PATENT SERVICES ...........................................................................................................6

Filing Application for Patent for Invention: National Procedure ..................................................................6
Filing Application for Patent for Invention: National Phase of PCT International Application...............6
Filing National Application for Utility Model ....................................................................................................7
Annual Maintenance of Patent for Invention/Utility Model...........................................................................8
Recordal of Change of Name/Address of Applicant/Holder of Patent .......................................................8
Recordal of Assignment of Application/Patent for Invention or Utility Model..........................................9
Recordal of Patent License Agreement .............................................................................................................10
Patent Searches ......................................................................................................................................................11
INDUSTRIAL DESIGN SERVICES ................................................................................ 12

Filing Ukrainian Application for Industrial Design .........................................................................................12
Annual Maintenance of Patent for Industrial Design .....................................................................................13
Recordal of Change of Name/Address of Applicant/Holder of Patent .....................................................13
Recordal of Assignment of Industrial Design Application/Patent...............................................................14
Recordal of Industrial Design License Agreement ..........................................................................................15
TRADEMARK SERVICES ................................................................................................ 17

Filing Application for Trademark/Service Mark..............................................................................................17
Renewal of Trademark Registration Certificate................................................................................................18
Recordal of Change of Name of the Applicant/Holder of Registration .....................................................18
Recordal of Trademark Assignment...................................................................................................................19
Recordal of Trademark License Agreement .....................................................................................................20
Trademark Searches ..............................................................................................................................................21
GEOGRAPHICAL INDICATIONS SERVICES..............................................................24

General....................................................................................................................................................................24
Filing National Application for Registration/Use of Geographical Indication ..........................................24
Filing Application for Registration/Use of International Geographical Indication...................................25
Renewal of Registration of Geographical Indication ......................................................................................26
COPYRIGHT AND RELATED RIGHTS ........................................................................27

Filing Application for Registration of Copyright or Related Rights .............................................................27
Recordal of Agreement related to Copyright or Related Rights....................................................................27
INTELLECTUAL PROPERTY ENFORCEMENT, LITIGATION .............................29

Administrative Enforcement: Suppression of Unfair Competition.............................................................29
Administrative Enforcement: Border Control ................................................................................................30
Intellectual Property Litigation............................................................................................................................31
ARTEX UKRAINE, 2010 - 2014
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TERMS AND CONDITIONS

We are pleased that you have decided to retain our firm with respect to intellectual/industrial
property services of your firm/client.
This section gives a brief outline of the
intellectual/industrial property services we provide and explains the terms on which we discharge
and bill our work.
Services
Our firm provides a full scope of intellectual property services, including:
Filing and prosecuting through to registration applications for inventions, utility models,
industrial designs, trademarks and service marks, geographical indications, copyright and
related rights.
Post-registration administrative services, including annual maintenance of Patens for

inventions, utility models, industrial designs and renewal of Registration Certificates for
trademarks and geographical indications.
Effecting any allowed types of recordals (such as assignment and license agreements, name
changes, other allowed voluntary amendments) related to any applied for or registered objects
of industrial property, copyright and related rights.
Conducting trademark/service mark and patent searches, domain name and corporate name
availability searches, providing other types of information services related to intellectual
property.
Asserting border control of intellectual property objects.
Suppression of unfair business practices (unfair competition), including unauthorized use of

intellectual property assets, counterfeiting, passing-off, parallel imports, etc., through
administrative (antimonopoly) mechanisms.
Litigation of cases related to various types of infringements upon intellectual property rights
and other disputes involving intellectual property.
Structuring transactions involving intellectual property assets including, inter alia, drafting and
negotiating agreements related to the transfer of technology, know-how, other subject matter
of intellectual/industrial property rights, building and management of franchising networks,
etc.
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Registration of various forms of intellectual/industrial property subject matter in CIS and

Europe through a developed network of associates in these countries.
Providing general advice on any legal issues related to the protection, use and enforcement of
intellectual/industrial property rights in Ukraine and CIS.
Engagement
You agree that by instructing us to take over general representation of your firm/client or to
carry any specific assignment you engage our firm to effect such representation and to carry out
such actions on you firm's/client's behalf. You further agree that you will provide us with any
and all information and documents, as well with any reasonable assistance, as may be required to
discharge your assignments in a proper and timely manner.
Representation
You agree that by engaging us for intellectual property services your firm/client intends to be
represented at the State Department of Intellectual Property of Ukraine (the "Ukrainian PTO")
and other relevant authorities by patent attorney(s) employed by our firm, and that you/your
client will execute and provide us with any and all necessary documents (such as Powers of
Attorney, revocation letters, etc.), as well as any other reasonable assistance as may be required to
continue, assume or transfer prosecution of the intellectual property matters of your firm/client
by our firm.
Staffing
Intellectual property services we provide will be discharged by the members of the IP Practice
Group of our firm. The matters for which you retain our firm will be directly supervised by
Mr. Alexander Molotai (alexander.molotai@artex.ua) the head of our IP Practice Group, assisted
by other members of the firm. All members of our IP Group are high-skilled professionals in
the sphere of intellectual property law and intellectual property management. We provide our
intellectual/industrial property services in the CIS, Baltic States and Europe through our wellestablished network of agents in these countries, whose reliability and professionalism has been
proven by years of practice.
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Facilities
In order to secure that our services are provided in accordance with the best professional
standards, we have developed our own electronic document processing system (including
electronic generation, searching, emailing and faxing of documents) and IP-oriented case
management and billing system. This allows us to tune our services to the needs of our most
demanding clients.
Billing
We usually bill our intellectual property services on a per case basis as described in our Schedules
of Fees and Charges. Although, in specific matters we may issue our bills on a monthly basis, as
may be agreed between us and our clients. Both the Schedules and our hourly rates are adjusted
from time to time. You will be properly notified of any such adjustment.
As a rule, we require prepayment of those invoices, which include any scheduled substantial
disbursements (such as official fees, state duties, etc.). However, we are open to discussing any
specific settlement arrangements with our clients.
Confidentiality
Client matters are kept in the strictest confidence. As a result, the particulars of your intellectual
property matters as well as the identity of your competitors or their activities may be known only
to the attorneys and staff directly involved in your intellectual property services and the partner
managing or billing your matters.
If required, we may consider negotiating any supplementary confidentiality/conflict of interest
arrangements with our clients.
We thank you for the opportunity to be of your service, and look forward to working with you.
Yours sincerely,
ARTEX UKRAINE
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PATENT SERVICES
Filing Application for Patent for Invention: National Procedure
Procedure: After filing, national Patent Applications are subject to examination, consisting of two
phases: formal and substantive. In a straightforward case, formal examination is to be completed
within six (6) months from the filing date. Applications are published after eighteen (18) months
of the priority date. Request for substantive examination is to be filed within three (3) years after
the filing date of the application. Term of substantive examination is not limited by law. After
substantive examination is completed, the Applicant is to pay the Granting Fee, whereupon the
Patent is entered in to the State Patent Register, published in the Official Gazette and a Letters
Patent is issued to the Applicant.
Document Requirements: In order to file a national Ukrainian application to obtain a patent for
invention, we are to be provided with the following documents and information:
1. Client's instructions to file an application for a Patent for Invention.
2. Specification, Claims, Abstract, Drawings (if any).
3. Filing particulars, namely:
a. full name, country/state of incorporation, address of the applicant(s);
b. full name, country/state of residence, address of the inventor(s).
4. Certified copy of the priority document (in the event of Paris Convention priority claim).
5. Power of Attorney issued by the Applicant.
Filing Application for Patent for Invention: National Phase of PCT International
Application
Procedure: PCT International application is to be filed for national phase within thirty-one (31)
month from the priority date. After filing, Patent Applications are subject to examination,
consisting of two phases: formal and substantive. In a straightforward case, formal examination
is to be completed within six (6) months from the filing date. Applications are published after
eighteen (18) months of the priority date. Request for substantive examination is to be filed
within three (3) years after the filing date of the application. Term of substantive examination is
not limited by law. After substantive examination is completed, the Applicant is to pay the
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Granting Fee, whereupon the Patent is entered in to the State Patent Register, published in the
Official Gazette and a Letters Patent is issued to the Applicant.
Document Requirements: In order for a PCT international patent application to enter national
phase in Ukraine, we are to be provided with the following documents:
1. Client's instructions to enter a national phase in Ukraine for a PCT International
Application.
2. Copy of a published PCT International Application with International search Report.
3. PCT related forms especially PCT/IPEA/409 with annexes (if available).
4. Ukrainian translation of all abovementioned documents. All necessary translations can be
prepared by our office.
Filing National Application for Utility Model
Procedure: Examination procedure consists of formal examination only. In a straightforward
case, Notice of Allowance for a utility model is to be issued within six (6) months from the filing
date. Thereafter, the Applicant is to pay the Granting Fees, whereupon the Patent is entered into
the state register and Letters Patent is issued to the Applicant. Patents for Utility Models are not
published in the Official Gazette.
Document Requirements: In order to file a Ukrainian application for a utility model we are to be
provided with the following documents:
1. Client's instructions to file application for Utility Model.
2. Specification, Claims, Abstract, Drawings (2 copies).
a. full name, country/state of incorporation, address of the applicant(s);
b. full name, country/state of residence, address of the inventor(s).
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5. Ukrainian translation of the abovementioned documents. All necessary translations can be

prepared by our office.
Annual Maintenance of Patent for Invention/Utility Model
Procedure: Ukrainian Patent for Invention is valid for twenty (20) years. Patent for Utility Model
is valid for ten (10) years. To maintain validity of a Patent for the above term, holder of Patent
for Invention/Utility Model is to pay annual maintenance fee (annuity).
Document Requirements:
In order to effect annual maintenance of a Patent for
Invention/Utility Model, we are to be provided with the following documents:

1. Client's instructions to proceed with payment of annuity in respect of a Patent.
2. Power of Attorney issued by the holder of a Patent.
Recordal of Change of Name/Address of Applicant/Holder of Patent
Change of Name/Address in Application: Recordal of change of name/address with respect to a
pending Patent Application is evidenced by an Examiner's notice confirming the change of
name/address (usually issued within one (1) month after the filing date of respective request).
No other document is issued to the Applicant. Nor the change of name/address in respect of a
pending Patent Application is published in the Official Gazette.
Change of Name/Address in Granted Patent: Change of name/address with respect to a
Granted Patent becomes valid for third parties after it is recorded in the Patent Register and
published in the Official Gazette. Recordal of change of name/address with respect to a
Granted Patent is evidenced by an Addendum Patent and is published in the Official Gazette.
Publication and issuance of an Addendum Patent are effected within 2 3 months after the filing
date of respective request.
Document Requirements: In order to effect recordal of a change of name/address with respect
to a pending patent application or a Granted Patent, we are to be provided with the following
documents:
1. Client's instructions to effect recordal of change of name/address.
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2. Documents, evidencing change of name/address (statutory documents, extract from the

trade register, certificate of change of name/address, certificate of re-registration, merger
documents, etc.). The documents may be provided in the original, or in a copy. Copies
of documents are to be certified by an authority issuing the same or notarized.
3. Power of Attorney issued in the new name of the Applicant/holder of Patent.
Recordal of Assignment of Application/Patent for Invention or Utility Model
Application Assignment: Assignment of a pending Patent Application is evidenced by a notice of
the Examiner to the same effect (usually issued within one (1) month from the date of respective
request). No other assignment document is issued to the Applicant. Nor the assignment of a
pending Patent Application is published in the Official Gazette.
Patent Assignment: Assignment of Granted Patent becomes valid for third parties after it is
recorded in the Patent Register and published in the Official Gazette. Assignment of Granted
Patent is evidenced by an Addendum Patent and is published in the Official Gazette.
If assignment documents filed with the Ukrainian PTO are acceptable for recordal, the Ukrainian
PTO issues a Decision on Recordal of Assignment (within two (2) months from the date of
respective request). Thereafter, the Ukrainian PTO publishes the assignment in the Official
Gazette and issues an Addendum Patent evidencing the assignment. Publication and issuance of
the Addendum Patent are effected within one (1) month upon receipt of the Decision.
In order to effect recordal of assignment of a Patent
Application/Granted Patent in Ukraine we are to be provided with the following documents:

1. Client's instructions to effect recordal of assignment.
2. Assignment Document.
Substantial Requirements: For an assignment document to be acceptable for recordal it is to
specify (1) the parties and their respective addresses, (2) subject matter of the assignment,
(3) number(s) of Patent Application(s) / Patent(s) covered, (4) title(s) of respective
invention(s)/utility model(s).
Formal Requirements: Assignment Document may be filed for recordal in the original or in
a notarized copy.
Assignment document is to be signed by duly authorized
representatives of the Assignor and the Assignee, indicate full names and positions of
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such representatives, and be sealed with corporate seals of the Assignor and the Assignee
or notarized.
NOTE: It is important to make sure that the name and address of the Assignor stipulated in an assignment
document are identical to the name and address of the applicant/holder of Patent as currently recorded in
the Patent Register. Otherwise, it will be required to record respective change of the applicant's/holder's
name and/or address before proceeding with the recordal of such assignment.
3. Power of Attorney issued by the Assignor or the Assignee.

We will be pleased to assist you in structuring any specific Patent assignment transactions and
drafting relevant assignment documents.
Recordal of Patent License Agreement
Procedure: In Ukraine, patent licenses become valid for third parties only after respective license
agreements are recorded in the Patent Register and published in the Official Gazette. Recordal
of a license agreement in the Patent Register is evidenced by a Decision of the Ukrainian PTO on
Recordal of License Agreement (issued within (2) two months after filing date of respective
request). Publication of license recordal in the Official Gazette is effected within one (1) month
upon issuance of a Decision.
An acceptable Patent license agreement may cover both pending Patent Applications and
Granted Patents. However, a license agreement may be recorded in the Patent Register only with
respect to Granted Patents. Therefore, for a license agreement to be recordable, it is to cover at
least one Granted Patent.
Sub-licenses may be recordable in the Patent Register only when (1) they are issued by a holder of
exclusive license and (2) respective exclusive license agreement is recorded at the Patent Register.
Document Requirements: To record a Patent license agreement we are to be provided with the
following documents:
1. Client's instructions to effect recordal of license agreement.
2. License Agreement.
Substantial Requirements: To be acceptable for recordal, a license agreement or a notarized
extract therefrom is to specify (1) full names of the parties and their respective addresses,
(2) subject matter of the license, (3) number(s) of Patent(s), (4) title(s) of the
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invention(s)/utility model(s), (5) scope of rights granted under the license agreement
(allowed manner and scope of use of licensed objects), (6) type of license (exclusive or
non-exclusive), (7) validity term of the license agreement, (8) territory for which the
license is granted.
Formal Requirements: A license agreement may be provided for recordal in the original or in
a notarized copy. License agreement is to be signed by duly authorized representatives of
the Licensor and the Licensee, indicate full names and positions of such representatives,
and be sealed with corporate seals of the Licensor and the Licensee or notarized.
NOTE: It is important to make sure that the name and address of the Licensor stipulated in a license
agreement are identical to the name and address of the holder of respective Patent as currently recorded in
the Patent Register. Otherwise, it will be required to record change of the holder's name and/or address
before proceeding with the recordal of such license agreement.
3. Power of Attorney issued by the Licensor or the holder of an exclusive license.

We will be pleased to assist you in structuring any specific patent licensing transactions and
drafting relevant license documents.
Patent Searches
The
only
publicly
available
source
of
information
regarding
Ukrainian
Patent
Applications/Patents is the Ukrainian Official Gazette, which is only available in a hardcopy.

Therefore, the most reliable and up-to-date search results may be obtained by ordering patent
search at the Ukrainian PTO. Patent search services are provided by the Ukrainian PTO on the
basis of a separate contract, the amount of which depends on the scope and complexity of the
patent search query. We charge our services related to conducting patent searches on the basis of
the hourly fee of the attorney/employee involved in such work.
To conduct a Patent search in Ukraine we are to be provided with the following information:
1. Client's instructions to conduct Patent search.
2. Proposed criteria for a search query.
3. Any other information, that may be essential for conducting a search (such as purpose of
the search, etc.).
4. Power of Attorney (for proprietor searches only).
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INDUSTRIAL DESIGN SERVICES

Filing Ukrainian Application for Industrial Design
Procedure: After filing, Industrial Designs Applications undergo formal examination only. The
term of examination is not limited by law. However, according to the established practice, in a
straightforward case an Application for Industrial Design progresses through to granting of
Patent within 10 12 months from the filing date. After examination is completed, the Granting
Decision is issued. Thereafter, the Applicant is to pay the Granting Fee, whereupon the Patent is
entered into the State Register, published in the Official Gazette, and the Patent document is
issued to the Applicant. Industrial Design Patent is issued for the term of ten (10) years which
may be extended for the additional period of five (5) years upon request of the holder of Patent.
Document Requirements: In order to file a Ukrainian national Industrial Design Application, we
are to be provided with the following documents and information:
1. Client's instructions to file an Industrial Design Application.
a. full name, country/state of incorporation, address of the applicant;
b. full name, country/state of residence, address of the author(s).
3. Photographs or drawings of the industrial design:
a. 13 x 18 cm photographs or, preferably, 18 x 24 cm (photographs of smaller size
are acceptable for small objects), or A4 format drawings or perspective view
(6 copies);
b. photographs or drawings of each other view (2 copies of each view).
4. Formal description. If required, formal description may be drafted by our office.
6. Document evidencing participation in an exhibition (in the event of exhibition priority
claim).
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Annual Maintenance of Patent for Industrial Design

Procedure: Ukrainian Industrial Design Patent is valid for ten (10) years and may be extended for
the additional period of five (5) years upon request of the holder of Patent. To maintain validity
of a Patent for the above term, holder of an Industrial Design Patent is to pay annual
maintenance fee (annuity).
Document Requirements: In order to effect annual maintenance of an Industrial Design Patent,
we are to be provided with the following documents:
1. Client's instructions to proceed with payment of annuity in respect of a Patent.
2. Power of Attorney issued by the holder of a Patent.
Recordal of Change of Name/Address of Applicant/Holder of Patent
pending Industrial Design Application is evidenced by an Examiner's notice confirming the
change of name/address (usually issued within one (1) month after the filing date of respective
request). No other document is issued to the Applicant. Nor the change of name/address in
respect of a pending Application for Industrial Design is published in the Official Gazette.
Change of Name/Address in Granted Patent: Change of name/address with respect to an
Industrial Design Patent becomes valid for third parties after it is recorded in the Industrial
Designs Register and published in the Official Gazette. Recordal of change of name/address
with respect to an Industrial Design Patent is evidenced by an Addendum Patent and is published
in the Official Gazette. Publication and issuance of Addendum Patent are effected within 2 3
months after the filing date of respective request.
Document Requirements: In order to effect recordal of change of name/address with respect to
a pending Industrial Design Application or an Industrial Design Patent, we are to be provided
with the following documents:
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3. Power of Attorney issued in the new name of the Applicant/holder of Industrial Design
Patent.
Recordal of Assignment of Industrial Design Application/Patent
Application Assignment: Assignment of a pending Industrial Design Application is evidenced by
a notice of the Examiner to the same effect (usually issued within one (1) month from the date of
respective request).
No other assignment document is issued to the Applicant.
Nor the
assignment of a pending Industrial Design Application is published in the Official Gazette.

Patent Assignment: Assignment of Granted Patent becomes valid for third parties after it is
recorded in the Register of Industrial Designs and published in the Official Gazette. Assignment
of Industrial Design Patent is evidenced by an Addendum Patent and is published in the Official
Gazette. If assignment documents filed with the Ukrainian PTO are acceptable for recordal, the
Ukrainian PTO issues a Decision on Recordal of Assignment (within two (2) months from the
date of respective request). Thereafter, the Ukrainian PTO publishes the assignment in the
Official Gazette and issues an Addendum Patent evidencing the assignment. Publication and
issuance of the Addendum Patent are effected within one (1) month upon receipt of the Decision.
Document Requirements: In order to effect recordal of assignment of an Industrial Design
Application/Patent in Ukraine we are to be provided with the following documents:
(3) number(s) of Industrial Design Patent(s)/Application(s) / Patent(s) covered, (4)
title(s) of the Industrial Design(s).
a notarized copy.
or notarized.
document are identical to the name and address of the applicant/holder as currently recorded in the
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Industrial Designs Register. Otherwise, it will be required to record respective change of the
applicant's/holder's name and/or address before proceeding with the recordal of such assignment.

We will be pleased to assist you in structuring any specific industrial design assignment
transactions and drafting relevant assignment documents.
Recordal of Industrial Design License Agreement
Procedure: In Ukraine, industrial design licenses become valid for third parties only after
respective license agreements are recorded in the Industrial Designs Register and published in the
Official Gazette. Recordal of a license agreement in the Industrial Designs Register is evidenced
by a Decision of the Ukrainian PTO on Recordal of License Agreement (issued within (2) two
months after filing date of respective request). Publication of license recordal in the Official
Gazette is effected within one (1) month upon issuance of a Decision.
An acceptable industrial design license agreement may cover both pending Industrial Design
Applications and granted Industrial Design Patents. However, a license agreement may be
recorded in the Industrial Designs Register only with respect to granted Patents. Therefore, for a
license agreement to be recordable, it is to cover at least one granted Industrial Design Patent.
Sub-licenses may be recordable in the Industrial Designs Register only when (1) they are issued
by a holder of exclusive licenses and (2) respective exclusive license agreement is recorded at the
Industrial Designs Register.
To record an industrial design license agreement we are to be
provided with the following documents:

1. Client's instructions to effect recordal of license agreement;
(2) subject matter of the license, (3) number(s) of Industrial Design Patent(s), (4) title(s)
of the Industrial Design(s), (5) scope of rights granted under the license agreement
(allowed manner and scope of use of licensed objects), (6) type of license (exclusive or
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non-exclusive), (7) validity term of the license agreement, (8) territory for which the
license is granted.
agreement are identical to the name and address of the holder of respective Industrial Design Patent as
currently recorded in the Industrial Designs Register. Otherwise, it will be required to record change of the
holder's name and/or address before proceeding with the recordal of such license agreement.

We will be pleased to assist you in structuring any specific industrial design licensing transactions
and drafting relevant license documents.
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TRADEMARK SERVICES
Filing Application for Trademark/Service Mark
Procedure: In Ukraine, Trademark Application may be filed in multiple classes and may combine
classes of goods and services. It is not required to file any proofs of use or intention to use the
mark to file a Trademark Application. After filing, Trademark Applications in Ukraine undergo
two stages of examination: formal and substantive. According to the existing practice, in a
straightforward case, Trademark Application progresses through to registration within 24 - 28
months from the filing date of the application. After substantive examination is completed, the
Applicant is to pay Granting Fee, whereafter the trademark is entered into the State Trademark
Register, published in the Official Gazette and a Certificate of Registration is issued to the
Applicant. Trademark Registration Certificate is issued for the term of ten (10) years and is
renewable for an unlimited number of subsequent ten-year periods.
Accelerated Examination: Examination of Trademark Application may be accelerated in six (6)
months after filing date of the application. The Ukrainian PTO charges additional tariff for
accelerated examination. In an accelerated examination procedure registration of a trademark
may be obtained within 8 9 months from the filing date of the application.
Document Requirements: In order to file an application for a trademark/service mark in Ukraine,
we are to be provided with the following information and documents:
4. Client's instructions to file an application.
5. Reproduction of the trademark:
a. black and white prints - 10 specimens;
b. color prints - 15 specimens;
c. word or device mark - size 8 x 8 cm;
d. label - size 14 x 14 cm;
NOTE: Required number of prints may be produced locally by our office on the basis of a
sample provided by you.
6. Name, country/state of incorporation, and address of the Applicant.
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7. List of goods and/or services and respective International Classes. If necessary, experts
of our firm will assist you in drafting the list of goods and/or services to be claimed.
8. Certified copy of the priority document (in the event of Paris Convention Priority claim).
Renewal of Trademark Registration Certificate
Procedure: As mentioned above, Trademark Registrations are granted in Ukraine for the term of
10 years and are renewable for an unlimited number of subsequent ten-year periods. It is not
required to file any proofs of use of a trademark to effect renewal of a Trademark Registration.
Upon renewal of a Trademark Registration, the Ukrainian PTO issues an Addendum Trademark
Registration Certificate evidencing the renewal (usually within 2 3 months upon filing of a
request for renewal).
Document Requirements: In order to renew a Trademark Registration for the next ten-year term,
we are to be provided with:
1. Clients instructions to carry out the renewal action.
2. Power of Attorney issued by the holder of Registration.
Recordal of Change of Name of the Applicant/Holder of Registration
pending Trademark Application is evidenced by an Examiner's notice confirming the change of
name/address (usually issued within one (1) month after the filing date of respective request).
No other document is issued to the Applicant. Nor the change of name/address in respect of a
pending Trademark Application is published in the Official Gazette.
Change of Name/Address in Registration:
Change of name/address with respect to a
Trademark Registration becomes valid for third parties after it is recorded in the Trademark
Register and published in the Official Gazette. Recordal of change of name/address with respect
to a Trademark Registration is evidenced by an Addendum Trademark Certificate and is
published in the Official Gazette.
Publication and issuance of an Addendum Trademark
Certificate are effected within 2 3 months after the filing date of respective request.
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Document Requirements: In order to effect recordal of a change of name/address with respect

to a pending Trademark Application or a Trademark Registration, we are to be provided with the
following documents:
3. Power of Attorney issued in the new name of the Applicant/holder of registration.
Recordal of Trademark Assignment
Application Assignment: Assignment of a pending Trademark Application is evidenced by a
notice of the Examiner to the same effect (usually issued within one (1) month from the date of
respective request).
No other assignment document is issued to the Applicant.
Nor the
assignment of a pending Trademark Application is published in the Official Gazette.

Registration Assignment: Assignment of Trademark Registration becomes valid for third parties
after it is recorded in the Trademark Register and published in the Official Gazette. Assignment
of Trademark Registration is evidenced by an Addendum Trademark Certificate and is published
in the Official Gazette. If assignment documents filed with the Ukrainian PTO are acceptable
for recordal, the Ukrainian PTO issues a Decision on Recordal of Assignment (within two (2)
months from the date of respective request). Thereafter, the Ukrainian PTO publishes the
assignment in the Official Gazette and issues an Addendum Trademark Certificate evidencing the
assignment. Publication and issuance of the Addendum Trademark Certificate are effected
within one (1) month upon receipt of the Decision.
Document Requirements: In order to effect recordal of a trademark assignment in Ukraine we
are to be provided with the following documents:
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An Assignment Document (Assignment Agreement or an acceptable notarized extract

therefrom, Assignment Deed) may cover one or more trademarks and may relate to
pending applications and grated registrations.
(3) number(s) of trademark application(s) / registrations(s) covered, (4) list of
goods/services for which the trademark(s) is/are assigned.
a notarized copy.
or notarized.
document are identical to the name and address of the applicant/holder of registration as currently
recorded in the Trademark Register. Otherwise, it will be required to record respective change of the
applicant's/holder's name and/or address before proceeding with the recordal of such assignment.

We will be pleased to assist you in structuring any specific trademark assignment transactions and
drafting relevant assignment documents.
Recordal of Trademark License Agreement
Procedure: In Ukraine, trademark licenses become valid for third parties only after respective
license agreements are recorded in the Trademark Register and published in the Official Gazette.
Recordal of a license agreement in the Trademark Register is evidenced by a Decision of the
Ukrainian PTO on Recordal of License Agreement (issued within (2) two months after filing date
of respective request). Publication of license recordal in the Official Gazette is effected within
one (1) month upon issuance of a Decision.
An acceptable trademark license agreement may cover both pending Trademark Applications and
Trademark Registrations (whether under national or Madrid Agreement procedure). However, a
license agreement may be recorded in the Trademark Register only with respect to registered
trademarks. Therefore, for a license agreement to be recordable, it is to cover at least one
Trademark Registration.
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UKRAINE
Sub-licenses may be recordable in the Trademark Register only when (1) they are issued by a
holder of exclusive license and (2) respective exclusive license agreement is recorded at the
Trademark Register.
Document Requirements: To record a trademark license agreement we are to be provided with
the following documents:
1. Client's instructions to effect recordal of license agreement.
(2) subject matter of the license, (3) number(s) of trademark certificate(s) or international
registration(s), (4) list of licensed goods/services and respective international classes,
(5) scope of rights granted under the license agreement (allowed manner and scope of use
of licensed trademarks), (6) type of license (exclusive or non-exclusive), (7) validity term
of the license agreement, (8) territory for which the license is granted, and (9) Licensor's
guarantees to the effect that quality of goods/services manufactured/provided under the
license agreement will not be inferior to that of the holder of licensed trademark(s).
agreement are identical to the name and address of the holder of respective trademark registration as
currently recorded in the Trademark Register. Otherwise, it will be required to record change of the
holder's name and/or address before proceeding with the recordal of such license agreement.

We will be pleased to assist you in structuring any specific trademark licensing transactions and
drafting relevant license documents.
Trademark Searches
Our firm may conduct the following types of standard trademark searches in Ukraine:
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1. Search for identical trademarks in all classes.

2. Search for identical and similar trademarks in specified classes.
3. Search for the trademarks filed/owned by a specific entity (proprietor search).
According to the results of the search, you may wish us to provide you with our legal opinions
regarding registrability of specific marks and their availability for registration in Ukraine.
Terms: Trademark Searches in Ukraine are conducted on the regular (10 business days) and
urgent (5 business days) basis.
To conduct a trademark search in Ukraine we are to be provided with express instructions to
conduct a search, specifying the following:
1. Search for identical trademarks in all classes:
a. reproduction of the mark to be searched;
b. term of search (regular or urgent);
c. whether a legal opinion is requested.
2. Search for identical and similar trademarks in specified classes:
a. reproduction of the mark to be searched;
b. international classes to be searched (or list of goods/services);
c. term of search (regular or urgent);
d. whether a legal opinion is requested.
3. Proprietor search:
a. name of the entity, on which the search is to be conducted;
b. term of search (regular or urgent);
c. Power of Attorney issued by the entity, on which the search is to be conducted.
In addition, our standard trademark searches may be tailored according to the specific needs of
our clients by supplementing them with:
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1. Availability searches for a domain name within .UA TLD zone, including 2nd level
domains within .UA zone (such as .com.ua, .org.ua, geographical 2nd level domains).
2. Corporate name availability searches.
3. Mass media & advertisement monitoring (including printed media, television, outdoor
advertising).
4. Researches into use of marks in Ukraine in retail/wholesale, internet, exhibitions, etc..
5. Other trademark-related investigations.
We usually deliver our search reports and respective opinions in electronic form by email. Upon
client's request, we may forward our reports by facsimile, via mail or international courier.
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UKRAINE
GEOGRAPHICAL INDICATIONS SERVICES

General
Geographical Indications and Appellations of Origin are protected in Ukraine by way of
registration. At the present time Ukrainian PTO has developed full legislative base, including
relevant laws and regulations necessary for obtaining protection of Geographical
Indications/Appellations of Origin.
Examination Authority of the Ukrainian PTO accepts
applications for registration of Geographical Indications/Appellations of Origin.
However,
examination of such applications is suspended due to the lack of practical knowledge of

Ukrainian experts.
Filing National Application for Registration/Use of Geographical Indication
Procedure: After filing, applications for registration of Geographical Indications/Appellations of
Origin undergo examination on formal and substantive grounds (term of examination is not
limited by law). After examination is completed, the application is published in the Official
Gazette for opposition purposes. After publication, any interested third parties may file their
oppositions against registration of the published application within six (6) months from the
publication date. If no oppositions are filed within the above term, the Ukrainian PTO issues
Granting Decision, whereafter it effects registration and publication of Geographical
Indication/Appellation of Origin, and issues a Registration Certificate. Registration Certificate
for Geographical Indication/Appellation of Origin is valid for ten (10) years and is renewable for
an unlimited number of subsequent ten (10) year periods.
In order to file a national application for Geographical
Indication/Appellation of Origin we are to be provided with the following documents:

1. Client's instructions to file application for Geographical Indication/Appellation of Origin.
2. Name, place of incorporation and address of the Applicant.
3. Title of Geographical Indication/Appellation of Origin.
4. Official opinion of an authorized government body regarding borders of the geographical
object concerned.
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5. Official opinion of an authorized government body regarding connection between

geographical object and unique properties, qualities, reputation or other characteristics of
the goods.
6. Specification of goods for which the Geographical Indication/Appellation of Origin is to
be filed.
7. Samples of use of the Geographical Indication/Appellation of Origin (on labels, product
packing, etc.).
8. Documents evidencing that the applicant is engaged in manufacture of relevant goods
within the geographical territory concerned.
Filing Application for Registration/Use of International Geographical Indication
In
order
to
file
application
for
Registration/Use
of
International
Geographical
Indication/Appellation of Origin, such Geographical Indication/Appellation of Origin is to be

granted protection in the country of origin.
Procedure for filing application for registration/use of Geographical Indication/Appellation of
Origin is basically the same as for national application.
In order to file application for international Geographical
Indication/Appellation of origin, we are to be provided with the following documents and

information:
1. Client's instructions to file application for Geographical Indication/Appellation of Origin.
2. Name, place of incorporation and address of the Applicant.
3. Title of Geographical Indication/Appellation of Origin.
4. Samples of use of the Geographical Indication/Appellation of Origin (on labels, product
packing, etc.).
5. Specification of goods for which the Geographical Indication/Appellation of Origin is to
be filed.
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UKRAINE
6. Document, evidencing registration of the Geographical Indication/Appellation of Origin

in the country of origin.
7. Document, evidencing the Applicant's right to use the Geographical Indication/
Appellation of Origin concerned.
8. Ukrainian translation of all relevant documents into Ukrainian. All necessary translations
may be prepared by our office.
Renewal of Registration of Geographical Indication
Procedure: Registration Certificate for Geographical Indication/Appellation of Origin is issued
for the term of ten (10) years and is renewable for unlimited number of subsequent ten (10) year
periods upon presentation of documents evidencing that respective goods are manufactured
within the specified geographical territory.
Document requirements: In order to file for renewal of a Geographical Indication/Appellation
of Origin, we are to be provided with the following documents/information:
1. Client's instructions to effect the renewal action.
2. Document, issued by an authorized government body and evidencing that the applicant is
engaged in manufacture of relevant goods within the geographical territory concerned
and that the properties of such goods comply with the properties specified in the
registration.
3. Power of Attorney issued by the holder of registration.
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UKRAINE
COPYRIGHT AND RELATED RIGHTS

Filing Application for Registration of Copyright or Related Rights
Procedure: In Ukraine, registration of copyright and related rights is not mandatory. However,
in the event of a copyright dispute Copyright Certificate will be considered by court as a
presumption of authorship. In order to obtain a Copyright Certificate, author of a respective
copyright object is to file application for registration of copyright. Decision on registration of
copyright is issued within one month from the date of filing of application. On the basis of a
decision, information on registration of copyright is entered into the State Register of Copyright
and Related Rights and is published in the Official Gazette. Copyright Certificate is issued within
one (1) month from the date of registration and is valid throughout the whole term of copyright
protection, constituting in Ukraine seventy (70) years.
Document Requirements: In order to file application for registration of copyright/related rights,
we are to be provided with the following documents and information:
1. Client's instructions to file application for registration of copyright/related rights.
2. Full name, address and citizenship of the Author(s).
3. Sample of the copyright object to be registered.
4. Documents evidencing the fact and the date of first publication of the copyright object (if
published).
5. User guide for computer programs or databases.
6. Name, location (address), architectural characteristics and parameters, time and place of
creation for works of architecture and sculptures.
7. Power of Attorney issued by the Author(s).
Recordal of Agreement related to Copyright or Related Rights
Procedure: In order to obtain a Certificate of Registration of Copyright-Related Agreement, a
party to such agreement is to file respective application. Decision on registration of copyrightrelated agreement is issued within one month from the filing date application. On the basis of
such decision information on registration of copyright-related agreement is entered into the State
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UKRAINE
Register of Copyright and Related Rights and is published in the Official Gazette. Thereafter,
within one (1) month from the date of registration the Decision of forwarded to the applicant.
In order to file application for registration of copyright-related
agreement, we are to be provided with the following documents/information:

1. Client's instructions to file application for registration of copyright-related agreement.
2. Original or notarized copy of the copyright-related agreement to be registered.
3. Sample of the copyright object to which the agreement relates.
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UKRAINE
INTELLECTUAL PROPERTY ENFORCEMENT, LITIGATION

Administrative Enforcement: Suppression of Unfair Competition
Legislation: Unfair competition cases are handled in Ukraine by Antimonopoly Committee
pursuant to the Laws of Ukraine "On Protection against Unfair Competition", "On Protection of Economic
Competition" and Regulations "On Resolution of Disputes Related to Violation of Economic Competition
Legislation".
Actions Qualified as Unfair Competition: Unauthorized use of a third party company and trade
names, trademarks and service marks, other insignia, as well as advertisements, packing design,
names of literary and artistic works, periodicals, geographical indications, which may lead to
confusion with the activity of their lawful holder which has priority over their use.
Powers of Antimonopoly Committee:
Upon review of application, the Antimonopoly
Committee shall be authorized to:

1. Impose penalties upon infringing parties.
2. Require compensation of direct damages caused by infringement.
3. Rule on confiscation of any infringing objects.
4. Require destruction of any infringing objects.
5. Require to effect publications disproving any inaccurate or untrue information.
6. Make submissions to relevant government authorities regarding: cancellation of licenses,
approvals, commencement of criminal and civil proceedings.
Procedure: Lawful holder of any infringed rights as mentioned above is to file a complaint with
the Antimonopoly Committee or its local subdivision. In order to file such a complaint, we are
to be provided with the following documents and information:
1. Client's instructions to commence an antimonopoly proceedings.
2. Description of circumstances related to the infringement.
3. Information and documents evidencing the infringement (such as, inter alia, samples of
goods, labels, packaging, advertisements, periodicals, etc.).
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UKRAINE
4. Documents and information confirming applicant's priority of use and registration of

infringed intellectual property (such as, inter alia, copies of registration certificates, license,
supply or purchase agreements, samples of goods, labels, packaging, advertisements,
periodicals, etc.).
Administrative Enforcement: Border Control
Legislation: As of April 2001 the Ukrainian Customs Service has established border control of
intellectual property objects in compliance with the provisions of the Tax Code of Ukraine,
which have been further detailed in the Cabinet of Ministers Regulations "On the Procedure for
Registration and Transit across the Customs Border of Ukraine of Goods Containing Intellectual Property
Objects". The above regulations allow lawful holders of intellectual property to assert border
control over possible infringement upon their exclusive intellectual property rights in Ukraine,
such as counterfeiting, copying, parallel imports, passing off, etc.
Registration Procedure: In order to assert border control of intellectual property object a lawful
holder thereof is to file an appropriate application for registration of goods containing intellectual
property in a special register maintained by the Ukrainian Customs Service. Thereafter, the
Customs Service reviews the application (within 30 days) and adopts respective decision.
After payment of the official registration duty, the Customs Service enters relevant information
into the Register and issues a Registration Certificate. The border control is effected as of the
date indicated in the Registration Certificate.
Document Requirements: In order to file an application for asserting border control of goods
containing intellectual property we are to be provided with the following information and
documents:
1. Client's instructions to file application for asserting border control of intellectual property.
2. Extract from respective register (trademark, patent, design, copyright, etc.) regarding the
object concerned.
3. Indemnity Letter to the Customs Service (form to be provided upon request).
4. Reproductions and samples of goods containing intellectual property.
5. Detailed description of goods containing intellectual property object concerned.
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6. Reproductions and samples of any infringement products (if applicable).

7. Detailed description of any infringement products (if applicable).
8. Any known information regarding possible sources of any infringement products (if
applicable).
Intellectual Property Litigation
Members of our IP Group have collected extensive practical experience in litigation of various
forms of disputes involving intellectual property.
In particular, we have been involved in
prosecution of disputes regarding:

1. Premature termination of trademark registrations on the grounds of non-use or lack of
use (both national and Madrid Agreement registrations);
2. Cancellation of Trademark Certificates on the grounds of non-compliance with
protectability requirements;
3. Invalidation of Patents for Inventions/Industrial Designs on the grounds of noncompliance of patentability requirements (such as novelty).
4. Infringement upon exclusive rights of trademark and trade name holders (including claim
of liquidated damages and loss of profit);
5. Infringement upon exclusive rights of patent holders (including claim of liquidated
damages and loss of profit);
6. Copyright infringement (artistic and literary works, computer programs);
7. Execution of and performance under intellectual property license agreements;
8. Cyber squatting and unauthorized use of trademarks on the Internet.
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ARTEX UKRAINE

TERMS AND CONDITIONS, GENERAL OVERVIEW, DOCUMENT REQUIREMENTS FOR

Brovary Office: Suite 90, 93 Sholom Aleihem St.

Intellectual Property Client Manual

PATENT SERVICES ...........................................................................................................6

INDUSTRIAL DESIGN SERVICES ................................................................................ 12

TRADEMARK SERVICES ................................................................................................ 17

GEOGRAPHICAL INDICATIONS SERVICES..............................................................24

COPYRIGHT AND RELATED RIGHTS ........................................................................27

INTELLECTUAL PROPERTY ENFORCEMENT, LITIGATION .............................29

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

TERMS AND CONDITIONS

This section gives a brief outline of the

Post-registration administrative services, including annual maintenance of Patens for

Asserting border control of intellectual property objects.

Suppression of unfair business practices (unfair competition), including unauthorized use of

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

Registration of various forms of intellectual/industrial property subject matter in CIS and

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

5. Ukrainian translation of the abovementioned documents. All necessary translations can be

In order to effect annual maintenance of a Patent for

Invention/Utility Model, we are to be provided with the following documents:

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

2. Documents, evidencing change of name/address (statutory documents, extract from the

Application/Granted Patent in Ukraine we are to be provided with the following documents:

Assignment document is to be signed by duly authorized

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

3. Power of Attorney issued by the Assignor or the Assignee.

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

3. Power of Attorney issued by the Licensor or the holder of an exclusive license.

Applications/Patents is the Ukrainian Official Gazette, which is only available in a hardcopy.

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

INDUSTRIAL DESIGN SERVICES

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

Annual Maintenance of Patent for Industrial Design

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

No other assignment document is issued to the Applicant.

assignment of a pending Industrial Design Application is published in the Official Gazette.

Assignment document is to be signed by duly authorized

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

3. Power of Attorney issued by the Assignor or the Assignee.

To record an industrial design license agreement we are to be

provided with the following documents:

ARTEX UKRAINE, 2010 - 2014

Intellectual Property Client Manual

3. Power of Attorney issued by the Licensor or the holder of an exclusive license.

ARTEX UKRAINE, 2010 - 2014