Recognition as a Well-known trademark

A well-known trademark (WKTM) is a trademark that has become widely known in society. It is associated with certain goods or services and evokes in consumers certain perceptions of the quality, prestige or other characteristics of these goods or services.

Benefits of a well-known trademark

• Raising the image and authority of not only the brand, but also the owner of WKTM;
• The ability to recognize a trademark as well-known on a specific date, i.e. “retroactively”;
• Prohibition on the use of a recognized trademark in other segments of goods and services, regardless of recognition classes; Protection applies to all 45 classes of the Nice classification;
• There is no expiration date and no renewal fees;
• A well-known trademark has a value much higher than a simple registered trademark;
• The owner of a well-known trademark has the right to demand a ban on the use of a designation, a component of which reflects a well-known trademark in all market segments.

In addition, recognition of the WKTM trademark may serve as the basis for increasing the amount of compensation that the copyright holder may demand from the infringer.

This is because a well-known brand is a more valuable asset than a brand that is not known to the general public. Therefore, the copyright holder of WKTM can demand higher compensation from the infringer for the damage caused.

Also, a well-known brand is associated by consumers with certain positive associations, such as quality, prestige and/or reliability. Therefore, recognition of the WNTM trademark can help increase sales of goods or services under which it is used.

Examples of well-known brands

Recognition of WKTM is carried out by decision of specialized government bodies in each country separately, i.e. on a territorial basis.

Here are examples of trademarks recognized WKTM in Ukraine:

As of December 2023 more than 230 trademarks are recognized as well-known in Ukraine. Among them are both international and Ukrainian brands.

• International brands – Famous brand in the world:
  • Coca Cola
  • Pepsi
  • McDonald’s
  • Adidas
  • Nike
  • Apple
  • Samsung
  • Canon
  • Nikon
• Ukrainian brands:
  • Roshen
  • Nemiroff
  • Kyivstar
  • Vodafone
  • PrivatBank
  • Socket
  • OLX
  • EconomClass 

The above trademarks are known to almost every resident of Ukraine and are associated with certain goods and/or services.

Criteria for recognizing a brand as well known

For a trademark to be recognized by WKTM, it must meet the following criteria:

• Widely known in society. A trademark should be known not only to specialists in a particular industry, but also to the general public.
• Association with certain goods or services. A trademark must evoke in consumers certain perceptions of the quality, prestige or other characteristics of the goods or services under which it is used.
• Exceptional consumer recognition. The brand must be so well known that consumers will associate it with certain goods or services even in the absence of any additional explanatory information.

The process of recognizing a trademark is well-known in Ukraine. Legislative norms.

The main international norm according to which it is possible to recognize a mark as well known is Art. 6 bis of the Paris Convention for the Protection of Industrial Property (Ratified by Ukraine).

The procedure for recognizing a trademark as well-known in Ukraine is carried out on the basis of Art. 25 of the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”. The decision to recognize WKTM in Ukraine may be by a court decision or by a decision of the Appeals Chamber of the Ukrainian IP Office. Considering that the latter has not yet been formed, in connection with the reform of the intellectual property system,We propose to consider the procedure for recognizing a well-known trademark in Ukraine in court.

To obtain a positive result, it is necessary to take the preparation of the evidence base very seriously and substantiate the application to the Ukrainian IP Office or claim in court.

Such evidence may include:

• Results of sociological research conducted among consumers;
• Data on the advertising activities of the copyright holder;
• Information about the number of goods or services sold under this brand;
• Information about the income of the copyright holder from the use of the trademark.

The most important argument for making a positive decision are the results of specialized sociological studies confirming brand recognition by specific social groups at the date of recognition of the trademark as well-known.

Therefore, it is important to entrust such research to a reputable marketing company in the market, whose report is trusted and listened to by the competent authorities.

Documents confirming the above facts must indicate relevant activity at least 3-5 years before the date on which the trademark is requested to be recognized as well-known. That is, if a trademark is recognized as of September 1, 2016, then the documents must be dated from 2013, 2014, 2014, 2015. Documents dated after 09/01/2016 will not be taken into account.

We guarantee high professionalism and quality of the legal services we provide for the recognition of WKTM in Ukraine and other European countries.

For more detailed information about the recognition of WKTM, write to us by email: info@sion-ip.com or contact us in Telegram