Objects Potentially Protectable as Non-Traditional Trademarks
The Ukraine Trademark Law (Law of Ukraine On Protection of Rights in Trademarks and Service Marks) defines a trademark as a sign, capable of distinguishing goods and services of one entity from those of other entities.
Furthermore, according to the law, a trademark can be represented by any sign or combination of signs. The law further contains an inexhaustive list of such potentially protectable types of signs: words, (including names, letters, digits), graphic elements, colors and color combinations.
The Trademark Regulations (The Rules for the Drafting and Filing of Trademark and Service Mark Applications) broaden the list of matter potentially protectable as trademarks and provide a distinction (although rather vague) between conventional (traditional) and non-traditional trademarks.
Respective provisions of the Regulations can be construed as treating the types of trademarkable signs explicitly provided by the Law as being traditional or conventional. Non-traditional trademarks, according to the Regulations, may be represented by sounds, light, color or combination of colors. On the one hand, the list of non-traditional trademarks provided by the Regulations is not exhaustive. Thus, the conclusion can be made that there are no legislative limitations as to the type of object potentially registrable as trademarks provided that such insignia perform the principal function of distinguishing goods and services of one entity from those of other entities.
However, the Regulations stipulate that such non-traditional marks may only be registered in the event that there is a technical possibility to record such marks on the registry and effect official publication of such grant. The Ukraine National Registry of Trademarks is maintained in electronic form and has a capability of uploading certain types of multimedia files with trademark representations, if and when such files are being provided by applicants. However, the trademark is deemed to have been officially published when information regarding the grant of protection is represented in the UA PTO’s Official Gazette Industrial Property, the primary form of publication of which is in paper form (electronic representations of the Official Gazette on the website of the UA PTO are for information purposes only). Thus, due to technical restrictions only those non-traditional trademarks may be granted protection, which are capable of being represented graphically on paper.
Below are general guidelines of the UA PTO with respect to the peculiarities of the filing and examination process for the following types of non-traditional trademarks, stipulated in the Guidelines on Certain Issues Related to the Examination of Trademarks and Service Marks, published by the UA PTO Examination Authority.
A shape mark is defined as a three-dimensional figure or combination of the same. Shape marks are generally registrable in Ukraine. However, the Guidelines provide a reservation that shape marks may not be a mere representation of a widely known object and should be characterized by original (distinguishable) exterior. Moreover, the shape should not be defined exclusively by the functional application of the respective object filed as a trademark. As the result, shape marks often receive a provisional refusal action by the Examination Authority on the grounds of lack of distinctiveness, whose provisional refusal may be overcome only if the applicant is capable of convincing the examiner that such shape does not represent a commonly known object and that the shape is not solely defined by the function of the object claimed as a trademark. Acquired distinctiveness may also be a good supplementary argument in favor of registration of a shape trademark.
A sound mark is defined as a mark made of different sounds. The Guidelines distinguish two typical categories of sound marks: those that can be represented by musical symbols (music and melodies) and those that cannot be (various noises, e. g. engine sound, animal screams, etc.). Due to technical restrictions (graphic representation requirement) only the first type (music and melodies) are registrable in practice.
A color mark is defined as a color as such or a combination of several colors. By default, such marks are treated as non-distinctive. Thus, it is recommended that together with the application the applicant submits the evidence of acquired distinctiveness of such color mark.
A hologram mark is defined as marks consisting of rainbow (iridescent) hologram, that may contain reproduction of a graphic element or letters or their combination. A hologram is characterized by the feature, where the color and/or the reproductions may change depending on the angle of view. As per Singapore Treaty, representations of hologram marks must contain one or more images that enable one to get the full idea of the holographic effect. The office may also request the description of the hologram mark to be provided by the applicant. Hologram marks are not currently registrable due to technical restrictions of the publication method mentioned above and lack of regulations governing the requirements for the filing of hologram marks.
A motion mark is defined as a moving image consisting of a sequence of images representing motion of letters or graphic elements. Motion marks can be represented by several images that represent motion of the elements of the mark, written description of the motion and a sample of the motion in the form of a digital file. Just like hologram marks, motion marks are not registrable in Ukraine due to technical restrictions and lack of regulation.
A position mark is defined as a sign that has fixed position on the product. According to the Guidelines, a position mark should be represented by a single sketch or drawing demonstrating its special placement on the product. Provided that such mark is capable of being graphically reproduced and is characterized by a reasonable degree of distinctiveness, such marks may be registered in Ukraine.
A smell mark is defined as a smell capable of distinguishing goods or services of one manufacturer (service provider) from similar goods or services of other manufacturers (service providers). Smell marks are represented by a description of the aroma or mix of aromas allowing to clearly and unambiguously distinguish it out of other smells. Such types of smells as natural aromas of a product (including aromatic oils) and masking (functional) smells should be rendered non-registrable. Similar hologram marks and motion marks, smell marks cannot be registred in Ukraine due to technical restrictions.
The concept of a taste mark is very similar to that of smell marks. A taste mark is defined as as a taste or a flavor of tastes, by which one product (or service) of a particular manufacturer or service provider, can be distinguished from similar products or services of other manufacturers or providers of services. Natural tastes of products and functional tastes cannot be registered due to a lack of distinctiveness. For technical reasons, taste marks cannot be registered in Ukraine at present.
To sum up the above, certain (most common) types of non-traditional marks (such as colors or color combinations, shapes, sounds and position marks) may be protected in Ukraine under the laws and regulations currently in place, provided that the applicant takes into account and meets the specific requirements for the registration of such marks.
Other types of non-traditional marks, such as noises, motion marks, hologram marks, taste and smell marks, although not specifically excluded by law, are still not available for registration due to technical restrictions related to the maintenance of the national trademarks registry and the official publication process. In view of the growing demand for the protection of such marks, respective regulations and technical improvements are to be lobbied by the professional community in order to allow for the registration of such marks.
Aleksandr Molotai, partner and head of the IP practice, exclusively for the annual guide on Ukrainian law firms and legal practitioners — Ukrainian Law Firms 2019. A Handbook for Foreign Clients