Trademarks: positions of Supreme Court and the problems of legal regulation

The article is dedicated to the legal analysis of individual provisions of the legislation on trademarks. The author analyzes the legal positions of the Supreme Court regarding the resolution of disputes about trademarks. It has been established that the legislation of Ukraine on trademarks and geographical indications has been significantly updated in recent years, and it reflects the main approaches to the legal regulation of these relations, which are laid down in the legislation of European countries. It has been established that the requirement to recognize a trademark as well-known cannot be considered in the actual claim proceedings, since in this case the court decision will be valid only for the parties to the case, while the recognition of a trademark as well-known is important for an indefinite circle of persons, since the acquisition of intellectual property rights to a trademark as well-known entails the emergence of an absolute right, which will have force and significance in relations with any third parties. It is proven that despite significant reform of the legislation on the protection of trademark rights, judicial practice (primarily the practice of the Supreme Court) continues to reveal gaps in the legal regulation of these relations, as evidenced by numerous legal conclusions of the Supreme Court, which are quite often relevant, but debatable due to the fact that the Supreme Court, when resolving a specific dispute, partially takes on the functions of the legislator, not only applying a certain legal norm, but also providing its expanded interpretation. It is proven that the Supreme Court claims that it is the perception of trademarks by the average consumer that plays a decisive role in their comparison and evaluation, and this conclusion of the Supreme Court could form the basis of the updated legal regulation of the relations under study. It is established that the Supreme Court, by its decision, expanded the circle of persons who have the right to appeal in court the decision of the IP office, indicating that the right to appeal the disputed decision of the IP office in court cannot be made dependent on whether the plaintiff exercised his right to file objections to the application, since the decision to register/refusal to register a trademark is made based on the results of the qualification examination, during which the compliance of the declared designation with the conditions for granting legal protection is checked, and not depending on the presence or absence of objections to the application of interested persons. It is established that the calculation of the five-year period of non-use of a trademark does not depend on the change of the owner (authorized user) of the trademark. It is substantiated that the fact of transfer of rights to a trademark under a contract, although subject to state registration, does not affect the moment of acquisition of intellectual property rights by the acquirer under the contract. It is substantiated that only the person specified in the trademark certificate has intellectual property rights to a trademark, and these trademark rights cannot be an object of joint property of spouses according to the general rule; the law distinguishes such institutions as property rights and other property rights (Book 3 of the Civil Code of Ukraine) and intellectual property rights (Book 4 of the Civil Code of Ukraine). It is established that special legislation in the field of intellectual property does not contain provisions on the application of the presumption of community of property of spouses with respect to objects of intellectual property rights. It is established that during 2020-2025, Ukraine took significant steps to reform the legislation in the field of intellectual property in general and in relation to trademarks in particular, which brought the legislation in this area closer to EU standards.