Non-use of a Trademark: The Supreme Court Clarifies Conditions for Loss of Rights

In Ukraine, legislation provides for the possibility of early termination of a trademark certificate if it has not been used, without valid reasons, for a period specified by law. In such cases, the certificate owner must prove either the actual use of the trademark or the existence of circumstances that objectively prevented its use.

The Supreme Court, specifically the panel of judges of the First Judicial Chamber of the Cassation Civil Court, recently heard a dispute concerning the early termination of a Ukrainian trademark certificate due to five years of non-use. The Court analysed the procedure for applying Part Four of Article 18 of the Law of Ukraine "On Protection of Rights to Marks for Goods and Services," relevant provisions of the Civil Code of Ukraine, the Association Agreement between Ukraine and the EU, and the practice of the Grand Chamber of the Supreme Court regarding grounds for cancellation of trademark registration.

Essence of the Case

A company, initially the rights holder of the relevant trademark registration applications, and subsequently replaced by its successor during the cassation review, lodged an appeal with the court. The plaintiff sought the early and complete termination of a Ukrainian certificate for a combined trademark, registered in 2008 for services in classes 35 and 45 of the International Classification of Goods and Services. Furthermore, the plaintiff requested that the Ukrainian National Intellectual Property and Innovation Office be compelled to implement corresponding changes to the State Register of Trademark Certificates and to publish information regarding the termination of the certificate in the official bulletin.

The plaintiff asserted that the trademark owner had not used the registered mark for the services for which it was registered for at least the preceding five years. According to the company, such continuous non-use constitutes an independent ground for early termination of the certificate under Part Four of Article 18 of the Law of Ukraine "On Protection of Rights to Marks for Goods and Services."

Additionally, the company reported that in May 2024, it filed four applications with UKRNOIVI for the registration of similar trademarks for services in classes 35 and 45 of the Nice Classification. The existence of a valid certificate for a previously registered trademark, which the plaintiff claims is not actually used, creates obstacles to registering new designations and poses a risk of refusal due to the presence of an identical or similar mark registered to another person. Even if new trademarks are registered, the previous owner could subsequently demand recognition of such certificates as invalid, citing their earlier intellectual property rights.

According to the plaintiff, this situation formed the basis of their legitimate interest in seeking legal protection for their own trademarks through the courts and ensuring their continued use in Ukraine.

The trademark owner opposed the claim, arguing that before the full-scale invasion, they used the disputed trademark in business activities related to providing security systems and advertising services. After the occupation of Mariupol, where these activities were conducted, the use of the trademark became impossible due to military aggression by the Russian Federation. To support this, the defendant referred to a letter from the Chamber of Commerce and Industry of Ukraine regarding force majeure circumstances. They also noted that the trademark was used through a domain name, business correspondence, and the activities of legal entities of which they are a beneficiary. The defendant stated an intention to resume use of the mark once the consequences of the war are eliminated. Furthermore, the defendant insisted that the plaintiff had not proven a violation of their rights and therefore had no right to file such a claim.

Decisions of the Courts of First and Appellate Instances

The Pechersky District Court of Kyiv fully upheld the claim. The court prematurely terminated the Ukrainian trademark certificate for all services in classes 35 and 45 of the Nice Classification for which it was registered. It also obliged the Ukrainian National Intellectual Property and Innovation Office to enter the relevant information into the State Register of Trademark Certificates of Ukraine, make an official publication about the termination of the certificate, and issue the corresponding order. In addition, the trademark owner was charged with court fees.

The court of first instance concluded that the plaintiff had provided proper and admissible evidence of the defendant's direct non-use of the trademark for more than five years without valid reasons. Conversely, the defendant failed to prove either the actual use of the disputed trademark or the existence of valid reasons for its non-use. Under these circumstances, there were legal grounds for the early termination of the certificate.

The district court also recognised that the plaintiff had a legitimate interest in pursuing the case, as they had filed applications for the registration of their own trademarks. The court determined that the existence of a previously registered but unused trademark hindered the realisation of the plaintiff's intellectual property rights and business activities related to providing services in classes 35 and 45 of the Nice Classification. The court applied provisions of the Civil Code of Ukraine, the Law of Ukraine "On Protection of Rights to Marks for Goods and Services," the Association Agreement between Ukraine and the European Union, the Paris Convention for the Protection of Industrial Property, and also considered the practice of the Grand Chamber of the Supreme Court and the Supreme Court in this category of disputes.

The Kyiv Court of Appeal upheld the lower court's decision. The court concurred that the trademark owner had not used the trademark for more than five years without valid reasons prior to the plaintiff's court application. This constitutes sufficient legal grounds for early termination of the certificate, in accordance with Article 198 of the Association Agreement and Article 18 of the Law of Ukraine "On Protection of Rights to Marks for Goods and Services".

The appellate court observed that the plaintiff had investigated the actual use of the disputed trademark and provided adequate evidence of its non-use. Conversely, the defendant failed to refute this evidence through the established procedural channels and did not demonstrate either actual use of the trademark or the existence of valid reasons for its non-use. The court further agreed that the plaintiff had a legitimate interest in pursuing legal action, and that the question of trademark identity or similarity was not pertinent to the evidence in this case, as the dispute exclusively concerned the early termination of the certificate due to non-use of the mark.

Legal Position of the Supreme Court

The Supreme Court noted that the subject of the dispute in case No. 757/39111/24-c was the early termination of the Ukrainian trademark certificate under part four of Article 18 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services” due to non-use. In reviewing the decisions of the lower courts, the cassation court examined the correct application of substantive and procedural law within the scope of the arguments raised in the cassation appeal and concluded that there were no grounds to satisfy it.

The Court drew attention to the fact that the legal regulation of the disputed relations is governed not only by the provisions of the Civil Code of Ukraine and the Law of Ukraine “On Protection of Rights to Marks for Goods and Services,” but also by the Association Agreement between Ukraine and the European Union, which forms part of national legislation, as well as by international treaties in the field of intellectual property rights protection. Therefore, when interpreting part four of Article 18 of the Law, its grammatical meaning, systemic connections, and purpose in the context of implementing European legislation must be taken into account.

The Supreme Court reiterated that the Law of Ukraine “On Protection of Rights to Marks for Goods and Services” was amended in order to fulfil Ukraine’s international obligations under the Association Agreement and to bring national legislation into line with European Union law. Accordingly, the provisions of Article 18 of this Law must be applied with due regard to Articles 197–200 of the Association Agreement, EU Directive 2015/2436, Council Regulations (EC) No. 207/2009 and No. 2017/1001, as well as the Paris Convention for the Protection of Industrial Property.

The Court specifically referred to the legal position of the Grand Chamber of the Supreme Court set out in its ruling of March 5, 2025, in case No. 910/8781/23, according to which early termination of a certificate is a consequence of non-use of a trademark for a continuous five-year period. This period begins on the date of publication of information on the issuance of the certificate or the granting of legal protection to the international registration. At the same time, the legislation does not contain provisions providing for the start of a new five-year period in the event of a change of the trademark owner or the person entitled to use it.

The Supreme Court emphasized that, under part four of Article 18 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services,” any person has the right to apply to a court with a claim for early termination of a certificate if the trademark has not been continuously used in Ukraine for five years in respect of all or part of the goods or services for which it is registered. At the same time, it is the certificate owner who must prove either the actual use of the trademark or the existence of valid reasons for its non-use.

The panel of judges agreed with the conclusions of the lower courts that the plaintiff had proved the non-use of the disputed trademark, while the defendant had failed to provide proper and sufficient evidence of its actual use in respect of services in Classes 35 and 45 of the Nice Classification during the five-year period preceding the court application. The courts established that the business activities carried out by the defendant and the activities of legal entities of which he is a beneficiary did not cover the services for which the disputed trademark was registered, and that the case file contained no confirmation of the use of this trademark by such legal entities, including on the Internet.

The Supreme Court thoroughly analyzed the evidence relied on by the defendant. The Court noted that the use of a domain name alone does not confirm the use of a trademark. For such use to be recognized, it is necessary to establish that the website actually functions, that the services for which the trademark is registered are actually offered or provided through it, and that the mark itself is used in the manner prescribed by law. The mere existence of a registered domain name, without confirmation of actual activity, is insufficient evidence of trademark use.

Similarly, the Court found insufficient the evidence consisting of correspondence, commercial offers, and documents of legal entities that are not owners of the disputed trademark. Such documents do not confirm the actual provision of services, the conclusion of relevant contracts, or the use of the registered trademark in business activities related to services in Classes 35 and 45 of the Nice Classification.

The Supreme Court separately assessed the defendant’s references to the military aggression of the Russian Federation and the letter of the Chamber of Commerce and Industry of Ukraine concerning force majeure circumstances. The Court noted that the general letter from the Chamber of Commerce and Industry of Ukraine confirms the existence of force majeure circumstances in the country, but is not sufficient evidence that those circumstances made it impossible to use a specific trademark for specific services. To confirm valid reasons for non-use, the certificate owner must prove a causal link between the relevant circumstances and the impossibility of using the trademark.

The Supreme Court concluded that the courts of first and appellate instances had correctly applied substantive law and properly evaluated all evidence in the case. The plaintiff proved the continuous non-use of the disputed trademark for more than five years, while the certificate owner failed to confirm either the actual use of the mark or the existence of valid reasons for its non-use within the meaning of part four of Article 18 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services.”

The Court noted that, in order to confirm the use of a trademark, the certificate owner must provide evidence of its direct and actual use specifically for the goods or services for which it is registered. The use of a domain name, commercial offers, correspondence, or the activities of other legal entities, without confirmation of the actual provision of the relevant services, does not constitute sufficient evidence of trademark use. The registration of a domain name alone does not indicate use of the mark where there is no evidence that the website was functioning and that services were actually provided through it using the registered trademark.

The Supreme Court also rejected the arguments of the cassation appeal that the plaintiff had no right to apply to the court. The panel agreed with the conclusions of the lower courts that the company had a legitimate interest in terminating the disputed certificate, since it had filed applications for registration of its own trademarks, and the existence of a previously registered but unused mark created obstacles to acquiring and exercising its intellectual property rights.

The arguments that force majeure circumstances related to the military aggression of the Russian Federation and the occupation of Mariupol alone excluded the possibility of early termination of the certificate were also not confirmed. The Supreme Court emphasized that the general letter of the Chamber of Commerce and Industry of Ukraine only certifies the existence of force majeure circumstances in general, but does not confirm that they specifically prevented the use of a particular trademark for particular services. For this purpose, the certificate owner must provide proper evidence of a causal link between such circumstances and the impossibility of using the mark.

Furthermore, the Supreme Court rejected the procedural arguments raised in the cassation appeal regarding the preparation of the appellate court’s ruling and the procedure for its signing, noting that they did not indicate unconditional grounds for setting aside the court decisions and did not affect the correctness of the resolution of the dispute on the merits. The panel also found no grounds to conclude that the lower courts had incorrectly applied the Supreme Court’s legal positions in similar legal relations.

In view of the above, the Supreme Court dismissed the cassation appeal and left unchanged the decisions of the Pechersky District Court of Kyiv and the Kyiv Court of Appeal. The Court confirmed that non-use of a trademark without valid reasons for five years is an independent ground for early termination of a certificate, and that the burden of proving actual use of the trademark or valid reasons for its non-use lies with the certificate owner.

The ruling of the cassation court enters into legal force from the moment of its adoption, is final, and is not subject to appeal.

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