The problem of proving the use and non-use of a trademark arises in the context of disputes on revocation of a Ukrainian trademark certificate

The article contains a practical analysis of the challenges faced by parties in Ukrainiancourt when proving the use or non-use of a trademark in a dispute on the revocation (earlytermination) of the Ukrainian trademark certificate. From the theoretical and practical pointof view, the problem arises due to the absence of a direct legal provision and well-establishedcourt practice regarding the sufficient scope and manners of a trademark use, when each ofthe parties must prove the opposite facts before the court — use and non-use of the trademarkin question. Thus, the essence of such litigation revolves around the plaintiff’s need to provethe non-use and the defendant’s need to prove the use of the trademark in question. In general,the following questions arise: Is the trademark certificate owner (the defendant) obliged touse the trademark to label goods (proving its real, genuine use) for each good under the Niceclassification? Additionally, how many of the manners of using the trademark, as listed inlaw, are sufficient to confirm real (genuine) use? These questions arise in every court case,since this is not directly regulated in the laws of Ukraine. Consequently, the parties oftenrefer to Article 198 of the Association Agreement between the EU and Ukraine regarding«genuine use» as opposed to «formal/symbolic use» of the trademark.In a result of conducted research and made analysis, it appears that the subject of proof insuch cases is the defendant’s (or licensee’s) use (or non-use) of the trademark for eachgood/service listed in the trademark certificate, and the use must be demonstrated in at leastone of the manners listed in Art. 16(4) of the Law of Ukraine «On Protection of Rights toMarks for Goods and Services» dated 15.12.1993 No.3689-XII. Therefore, a proper and admissibleevidence of trademark use may include presenting the court with the labeled good, aswell as any documents, writings, papers, which demonstrate use of a trademark in, at least,one manner per each good/service for which a trademark is registered. Article contains withextracts from the numerous court decisions to provide for examples of written documents,submitted by parties in alike cases, as evidence of trademark use (non-use). Theoretical conclusionsand practical recommendations are summarized based on analysed court decisions.