The legal position of the Grand Chamber of the Supreme Court on the recognition of a trade mark as well-known has been embodied in a draft law

The Ukrainian National Office of Intellectual Property and Innovations (UANIPIO) has recently presented a draft Law of Ukraine “On Trade Marks”, which was published for public consultation on 15 July 2026. The draft embodies the legal position formulated by the Grand Chamber of the Supreme Court as early as 2024 in a case concerning the recognition of a trade mark as well-known.

Thus, in its resolution of 17 April 2024 in case No. 910/13988/20 (the “Citramon” case), the Grand Chamber of the Supreme Court concluded that the recognition of a trade mark as well-known is not an independent remedy, but a condition for granting protection to a person, in particular by declaring invalid the registration (certificate) of a trade mark belonging to another person. The recognition of a trade mark as well-known by a court in adversarial proceedings has inter partes effect, that is, only as between the parties to the dispute.

A more detailed account of this legal position, its reasoning and its significance for the protection of rights in well-known trade marks can be found in the English-language article by Judge of the Grand Chamber of the Supreme Court Kostiantyn Pilkov “A Court’s Inter Partes Recognition of a Trademark as Well-Known as Part of the Reasons for the Judgment and Not the Declaratory Judgment Itself: Comment on the ‘Citramon’ Case” – https://ajee-journal.com/a-court-s-inter-partes-recognition-of-a-trademark-as-well-known-as-part-of-the-reasons-for-the-judgment-s-and-not-the-declaratory-judgment-itself-comment-on-the-citramon-case.

In the article the author analyses the judicial mechanism for recognising a trade mark as well-known and the question of a proper and effective remedy. In particular, he discusses the approach under which, in disputes concerning a well-known trade mark and a registered trade mark belonging to another person, the proper remedy is not a free-standing declaratory judgment recognising the trade mark as well-known, but a declaration that the registration of the other trade mark is invalid, coupled with an order requiring UANIPIO to enter a record of its cancellation. At the same time the court must establish that the claimant’s trade mark is well-known, since this is a necessary precondition for the application of such a remedy.

This approach preserves the inter partes effect of court judgments. It also prevents the circumvention of the time-limit provided for by Article 6bis of the Paris Convention for the cancellation of a trade mark registered in good faith by another person.

The draft Law of Ukraine “On Trade Marks” and the related draft laws have been prepared in implementation of Objectives 16 and 17 of Section 7 “Intellectual Property Law” of Cluster 2 “Internal Market” of the National Programme for the Approximation of the Legislation of Ukraine to the Law of the European Union (EU acquis), approved by Resolution of the Cabinet of Ministers of Ukraine No. 438 of 1 April 2026, taking into account the comments and proposals of the European Commission and of the expert of the international technical assistance project “EU4IP: Strengthening Intellectual Property Rights in Moldova and Ukraine”.

The full text of the draft Law of Ukraine “On Trade Marks” is available at the following link – https://me.gov.ua/Documents/Detail/069daa8e-d656-47b0-aabc-4d441cc539c0?lang=uk-UA&title=ProktZakonuUkrainiproTorgovelniMarki.

Further details of the draft laws on trade marks may be found at: https://portal.nipo.gov.ua/uk/news/Ministry-Economy-draft-laws-trademarks-discussion.