The article analyzes the legal regime of well-known trademarks in Ukraine with due regard to international obligations arising from Ukraine’s participation in the fundamental multilateral agreements, as well as national law enforcement practice. Particular attention is paid to clarifying the essence of the concept of “well-known trademark” and characterizing the specifics of its legal protection in accordance with the provisions of the Paris Convention for the Protection of Industrial Property Rights and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which provide fundamental international standards for the protection of such objects. The author outlines the main stages of transformation of Ukrainian legislation in the field of trademark protection, in particular, analyzes the provisions of the Law of Ukraine “On Protection of Rights to Trademarks for Goods and Services” relating to the procedure for recognizing a trademark as well-known. The authors consider the mechanisms for implementing such a procedure administratively through the Appeals Chamber of the National Intellectual Property Authority, whose functions are performed by the State Organization “Ukrainian National Office of Intellectual Property and Innovations” (hereinafter – UKRNIPI), as well as in court proceedings. The author analyzes the main criteria that are taken into account when assessing the degree of familiarity of a designation among consumers, taking into account the duration and geography of its use, sales volumes, advertising activity, availability of registrations in different jurisdictions, etc. Based on the analysis of current decisions of the Appeals Chamber of the National Intellectual Property Authority, in particular, in cases concerning the VELMART trademark, the author reveals the practical application of the relevant criteria and peculiarities of approaches to recognizing verbal and combined signs as well-known. The author concludes that in the context of European integration, the implementation of the provisions of Directive (EU) No. 2015/2436, which sets high standards for the protection of well-known brands, is of particular importance. Such harmonization with the EU legislation will help to increase transparency of procedures, predictability of law enforcement and strengthen investors’ confidence in the legal system of Ukraine.
Kronda et al. (Mon,) studied this question.