The following may be the subject of forensic examination and research related to trademarks and service marks:
- registered trademarks for goods and services;
- labels affixed to the products;
- labels accompanying the provision of services;
- commercial (brand names);
- domain names, etc.
Forensic examinations related to trademarks and service marks are ordered:
- when a court is deciding on a violation of the rights of the owner of a registered trademark for goods and services;
- upon a trademark registration being declared invalid due to an infringement of third-party rights;
- when a trademark registration is declared invalid due to the registered mark’s failure to meet the requirements for legal protection, etc.
When ordering expert opinions or studies related to trademarks and service marks, the following materials must be provided:
- a certified copy of the trademark registration certificate;
- an extract from the State Register of Registered Trademarks for Goods and Services;
- in cases involving the resolution of issues related to the infringement of a trademark owner’s rights—specimens of the goods or services on which the infringer’s mark is displayed;
- other materials, depending on the questions submitted to the expert for resolution.
The following may be the subject of forensic examination and research related to commercial (trade) names:
- commercial (brand names);
- registered trademarks for goods and services;
- labels affixed to the products;
- labels accompanying the provision of services;
- domain names, etc.
Forensic examinations related to trade names (brand names) are ordered:
- when a court is deciding on a claim regarding the infringement of the rights of the owner of a trade name;
- upon a trademark registration being declared invalid due to an infringement of third-party rights;
- when a court rules on a matter concerning the infringement of the rights of the owner of a registered trademark for goods and services, etc.
When ordering expert opinions or studies related to trademarks and service marks, the following materials must be provided:
- a certified copy of the certificate of state registration of the legal entity;
- a certified copy of the trademark registration certificate;
- an extract from the State Register of Registered Trademarks for Goods and Services;
- in cases involving the infringement of the rights of the owner of a trade name (brand name)—specimens of the items bearing the infringer’s mark;
- other materials, depending on the questions submitted to the expert for resolution.
Indicative list of issues to be addressed:
Disputes over the recognition of rights
1. Was the trademark for goods and services under Ukrainian Certificate No. 000 devoid of distinctiveness as of XX/XX/XXXX?
2. Does the trademark for goods and services under Ukrainian Certificate No. 000 consist solely of terms that are commonly used to designate certain types of goods and services?
3. Does the trademark for goods and services under Ukrainian Certificate No. 000 consist solely of terms or information that are descriptive when used in connection with the goods and services specified in the certificate or in relation to them?
4. Is the trademark for goods and services under Ukrainian Certificate No. 000 misleading?
5. Does the trademark for goods and services under Ukrainian Certificate No. 000 consist solely of designations that are commonly used symbols or terms?
Disputes over rights violations
1. Is the trademark for goods and services under Ukrainian Certificate No. 000 identical or similar to the trademark for goods and services under Certificate No. 111 to the extent that they could be confused?
2. Is the trademark registered under Ukrainian Certificate No. 000 such that it could mislead the public regarding the goods, services, or the entity (AAA) that manufactures the goods or provides the services?
3. Is the trademark for goods and services under Ukrainian Certificate No. 000 identical or similar to the trade name «ВВВ» to the extent that they could be confused?
4. Is the trademark for goods and services under Ukrainian Certificate No. 000 identical or similar to the indication of origin «ААА» to the extent that they could be confused?
5. Is the designation «ААА», as affixed to (specify where) or used in (specify where), identical or so similar that it could be confused with the trademark for goods and services registered under Ukrainian Certificate No. 000?
6. Is the trademark under Ukrainian Certificate No. 000 identical or similar to the designation «ААА», which had become well-known in Ukraine prior to the filing date of the application for the trademark under Ukrainian Certificate No. 000?
7. Does the trademark for goods and services under Ukrainian Certificate No. 000 reproduce the industrial design covered by Ukrainian Patent No. 111?
8. Does the trademark for goods and services under Ukrainian Certificate No. 000 reproduce the work «ААА», which is well-known in Ukraine, or parts thereof that have independent significance (a title, a quote, a character)?
9. Does the trademark for goods and services under Ukrainian Certificate No. 000 reproduce the artwork «ААА» or parts thereof?