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Invalidation of trademark registrations

Updated: November 2026
 
A foreign company enters the Ukrainian market and finds that its brand, or a similar sign, is already registered to a local company. Or a competitor has registered a name the whole industry uses. Such registrations block sales, customs clearance and listings on online marketplaces, so they are challenged in court. The prospects depend on the grounds, on evidence as at the application date, and on naming the right defendants.
 
Grounds for invalidity
The grounds are set out in art. 19 of the Law of Ukraine “On protection of rights to marks for goods and services” (in Ukrainian) and art. 499 of the Civil Code of Ukraine (in Ukrainian).
 
A registration is declared invalid in whole or in part where, in particular:
  • the sign did not meet the conditions for protection at the application date. For example, it lacked distinctiveness, was descriptive or misleading, or was identical or confusingly similar to an earlier registered or well-known mark of another person;
  • the certificate contains elements of the image or goods and services that were not in the application;
  • the application was filed in breach of the rights of others, including in bad faith or without the owner’s consent, for example a distributor registering its supplier’s mark.
Foreign brand owners can also rely on the Paris Convention for the Protection of Industrial Property (in Ukrainian). It protects well-known marks (art. 6bis) and marks registered in the country of origin (art. 6quinquies).
 
An example from Supreme Court practice: the registration of “Furacilin” was declared invalid because, when the application was filed in 1997, the name was already in common use for the drug by various manufacturers. It therefore could not identify the goods of a single producer (Commercial Cassation Court, 26 February 2026, case No. 910/16718/20). The application date was decisive: later circumstances do not affect the outcome.
 
Court or the IP office
A trademark registration can be invalidated only by a court. The Appeals Chamber of UKRNOIVI hears invalidity applications for patents and industrial designs, but no such procedure exists yet for trademarks. While a mark is still pending, however, a third party can file an opposition with UKRNOIVI against the application. This is faster and cheaper than going to court later, so competitors’ applications are worth monitoring.
 
If the owner has not used the mark in Ukraine for five consecutive years, early termination of the registration can be sought (art. 18 of the Law). This is a separate tool. It suits cases where the registration itself is hard to challenge but the mark is in fact unused.
 
Proceedings
Disputes between companies are heard by commercial courts (art. 20 of the Commercial Procedure Code of Ukraine (in Ukrainian)). The defendants are the registered owner and UKRNOIVI as the National IP Office. The claimant must show its interest: for example, that it uses the sign, holds an earlier mark, or that the registration obstructs its business.
 
The court assesses similarity from the perspective of the average consumer of the goods concerned. It compares the sound, appearance and meaning of the signs, together with how closely the goods are related. A forensic IP expert examination is usually ordered in such cases. The expert’s opinion does not bind the court, but in practice it often decides the case, so the questions for the expert and the supporting materials need careful preparation.
 
Evidence must relate to the application date, not to the date of the claim. This covers catalogues, invoices, customs declarations, advertising, publications and correspondence with distributors. A foreign claimant will need an apostilled or legalised power of attorney, a trade register extract and translations of documents.
 
Together with the claim, the court can be asked to bar any transfer or licensing of the mark, so that the owner cannot move it to another person while the case is pending.
 
Effect of the judgment
A registration declared invalid is treated as never having taken effect. The invalidity is entered in the State Register and published in the official bulletin “Industrial Property”. Where a registration is invalidated only in part, protection remains for the other goods and services.
 
Invalidation by itself does not stop sales of infringing products. An infringement claim is therefore often brought in parallel or afterwards, seeking a ban on use of the sign, withdrawal of goods from circulation and damages.
 
Firm experience
  • Sale of Zelmotor products banned in Ukraine. The firm acted for B&B Trends of Spain, owner of the Zelmer trademarks. Courts at three instances found the signs “zelmotor” and “zelmotor professional” confusingly similar to Zelmer for identical and related goods. Selling, offering for sale and otherwise placing Zelmotor products on the market in Ukraine was banned. On 6 August 2024 the Supreme Court upheld these decisions.
Our services
  • analysis of the contested registration and of the grounds for invalidity;
  • gathering evidence as at the application date, including for well-known and earlier-used signs;
  • oppositions against trademark applications before UKRNOIVI;
  • claims for full or partial invalidation of trademark registrations;
  • early termination of registrations for non-use;
  • preparation of questions and materials for forensic IP examinations;
  • trademark infringement claims;
  • representation of foreign rights holders before commercial courts at all instances.