Supreme Court judge addresses specifics of resolving trademark rights disputes at international forum

Supreme Court Judge of the Civil Cassation Court Vasyl Krat spoke about the proper method of defence in cases of challenging documents and registering trademark rights, the importance of good faith, and the application of the limitation period in such disputes at the II International Forum “IP Practice 2025”, organised by the National Association of Patent Attorneys of Ukraine.

Vasyl Krat took part in the first session of the event, “The Battle Between Dispute Resolution Methods”, during which various options for resolving disputes over the invalidity of a trademark certificate were discussed (mediation, the Appeals Chamber of UKRNOIVI, and the courts).

During his presentation, the judge noted, inter alia, that a collision of civil rights is characteristic of situations in which the colliding rights arose lawfully. Consequently, such a collision cannot arise where one or another civil right has been infringed. In other words, a collision is inadmissible where a right of one person arises later than the right of another and infringes that earlier right.

In the context of the relationship between the concepts of invalidity of rights and invalidity of a trademark certificate, the speaker drew attention to the fact that in Book Four of the Civil Code of Ukraine the legislator introduced the concept of the “invalidity of intellectual property rights” (for example, Article 499 of the Civil Code of Ukraine). At the same time, at the statutory level, the law provides for the recognition of a trademark certificate as invalid (Article 19 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”).

Vasyl Krat also noted that the most appropriate legal construct for challenging trademark rights in court is the recognition of the trademark registration as invalid. This is justified by the fact that it is the registration of a trademark (national or international) that constitutes the rights-creating fact with which the acquisition of exclusive rights to a trademark is associated.

The judge cited conclusions from the ruling of the Civil Cassation Court of the Supreme Court of 16 June 2021 in case No. 760/20855/16-ц. The Court indicated that applying the invalidity of registration in the field of intellectual property as a remedy is effective in cases where the acquisition of an exclusive right is based on a registration system; in other cases, such a remedy does not put an end to the infringement of civil rights and interests and does not restore them.

And in its ruling of 17 November 2021 in case No. 757/30424/18-ц, the Civil Cassation Court of the Supreme Court stated that the exercise of the right to challenge a registration (certificate) is subject to the requirements of good faith and the prohibition of abuse of rights (Articles 3 and 13 of the Civil Code of Ukraine). It is obvious that a person who brings a claim seeking recognition of a Ukrainian certificate for a mark for goods and services as invalid must themselves act in good faith and refrain from abusing their rights, including by registering a particular sign as a mark for goods and services not for the purpose of individualisation, but for the purpose of preventing another entity from using that sign.

In addition, Vasyl Krat raised the issue of the application of limitation periods in the relevant disputes. He cited the Supreme Court’s conclusion that civil legislation establishes objective limits on the application of limitation periods. Such objective limits are established: (a) directly (Article 268 of the Civil Code of Ukraine: among the list of claims to which limitation periods do not apply, there is no claim for recognition of a trademark registration as invalid (or a certificate of trademark registration as invalid)); and (b) indirectly (taking into account the nature of the claim asserted). The nature of a claim seeking recognition of a trademark registration as invalid (or a certificate of trademark registration as invalid) does not preclude the application of a limitation period. The commencement of the limitation period must be determined in accordance with the rules set out in Part 1 of Article 261 of the Civil Code of Ukraine.