Non-use of a trademark owner for 5 years is grounds for early termination of the certificate — Supreme Court

Non-use by the owner of a registered trademark for five years without valid reasons is grounds for early termination of the certificate for it in accordance with Article 18 of the Law of Ukraine "On Protection of Rights to Marks for Goods and Services." A person who has filed applications for registration of identical or similar marks as trademarks and who may be refused registration due to the existence of a previously registered certificate has a legitimate interest to apply to the court with a claim for early termination of such certificate.

On May 6, the Supreme Court, composed of a panel of judges of the First Judicial Chamber of the Cassation Civil Court, considered in simplified proceedings a cassation appeal of a person in the case filed by DANJAQ, LLC against the Ukrainian National Office of Intellectual Property and Innovation regarding the early termination of the Ukrainian certificate for a combined trademark and the obligation to perform certain actions.

To substantiate the claims, the plaintiff referred to the fact that the defendant had not used the disputed trademark for services in classes 35 and 45 of the Nice Classification for at least the last five years, for which it was registered, which according to part 4 of Article 18 of the Law of Ukraine "On Protection of Rights to Marks for Goods and Services" is grounds for termination of its legal protection.

The defendant objected, claiming that the mark was used through websites and business correspondence, and further use became impossible due to the Russian Federation's military aggression and occupation of Mariupol, where the defendant conducted business activities.

The court of first instance, whose conclusions were upheld by the appellate court, satisfied the claim, reasoning that the plaintiff proved the fact of actual non-use of the trademark for five years, while the defendant did not provide evidence of its actual use by him as the certificate owner, nor did he prove valid reasons for such non-use. The plaintiff demonstrated a legitimate interest related to filing applications for registration of similar marks.

The Supreme Court agreed with the courts' conclusions, noting that legal protection of a trademark cannot be used solely to restrict the activities of other entities. If a mark is not used continuously in Ukraine for five years from the date of publication of the certificate issuance information, any person has the right to demand early termination of its validity.

According to Article 18 of the Law "On Protection of Rights to Marks for Goods and Services" and provisions of Articles 197, 198 of the Association Agreement, a trademark is subject to termination if it is not used continuously for five years concerning the goods and services for which it is registered, in the absence of valid reasons for non-use.

The Supreme Court noted that the burden of proving the fact of trademark use lies with its owner. The use must be real and relate to the specific Nice Classification classes for which legal protection is granted. Formal actions (including domain registration or correspondence without confirmation of actual provision of goods or services) are not proper evidence of use.

The Supreme Court also emphasized that force majeure circumstances, including martial law, are not automatically valid reasons for non-use and must be assessed together with other evidence. Moreover, the five-year period of non-use is not interrupted by a change of the trademark owner.

In this case, the defendant did not prove actual use of the mark concerning the relevant Nice Classification classes, and the evidence submitted did not confirm real commercial use of the trademark.

The courts reasonably recognized the early termination of the certificate due to prolonged non-use of the trademark without valid reasons.

More details and the text of the Supreme Court ruling dated May 6, 2026, in case No. 757/39111/24 (proceeding No. 61-15800sv25) can be found at this link.

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