A signed assignment means nothing in Ukraine until it is entered in the register. The transfer takes effect from the date of the register entry, not the date of the contract — and everything that follows from that catches foreign counsel out more often than any other point of Ukrainian practice.

Assignment or licence

A licence leaves the proprietor in place. Another party is permitted to use the mark — in a defined manner, in a defined territory, for a defined period.

An assignment transfers the exclusive rights outright. The assignee becomes the proprietor and the assignor retains no control.

Where a certificate is held jointly, no co-owner may grant a licence or assign the rights without the consent of the others. Each may use the mark independently, but may dispose of it only jointly — a frequent surprise for partners who registered a mark together.

Ukrainian law also allows a partial assignment — for part of the goods and services covered by the certificate. A client may keep manufacturing and assign retail under the same mark.

Formal requirements

Both contracts must be made in writing and signed by the parties. For an assignment the statute prescribes no mandatory content, though in practice the parties, the mark, the scope of rights transferred and the consideration should be identified.

For a licence the requirements are set out expressly: the licence must state the manner of use, the territory, the term, the rights and obligations of the parties, and — the condition most often omitted — a provision on quality control of the licensee's goods and services.

That last point is not a formality. If use by a licensee makes the mark misleading as to quality, origin or the identity of the producer, the registration itself can be terminated. A careless licensee can sink the mark, and it is the proprietor who answers for it.

One further limit: a licence cannot outlast the certificate. If renewal falls due in two years, a five-year licence requires the renewal to be dealt with first.

Why the register entry decides everything

The Office does not register the contract itself — it registers the fact of the transfer of rights, which is published in the bulletin and entered in the register. The proprietor is whoever the register says it is, and the rights pass on the date of the entry.

A contract signed and filed in a drawer therefore means nothing to third parties. The practical consequences:

• the assignee cannot renew the certificate, oppose a third-party application or sue as proprietor — for the Office the proprietor is still the assignor;
• the mark remains formally attributed to the assignor, who continues to receive correspondence from the Office;
• due diligence before an acquisition or a loan will show the old position, which can delay the transaction;
• the assignor could in theory assign the same mark again to another party, who would then appear in the register.

The same applies to licences: particulars of a licence are also entered in the register, and without that entry the licensee cannot establish its rights against third parties.

Once the entry is made, the new proprietor receives an extract from the state register, which forms part of the certificate and evidences the change.

The most common structural problem

A recurring situation: the mark is registered in the name of the founder as an individual, while the trading entity is the company. There is no contract between them.

Formally that is use of the mark without the proprietor's authorisation, which creates exposure on transfer-pricing and royalty questions and weakens the position in any dispute.

The statute provides the answer directly: use of the mark by another person with the proprietor's consent counts as use by the proprietor. A licence therefore makes the company's trading count towards the proprietor's use requirement — and defeats a non-use challenge. Without a contract it does not count.

Three points raised after signature

Rights in a pending application can be assigned too. There is no need to wait for the certificate, and the official fee is lower at that stage.

Foreign registrations are separate. A contract under Ukrainian law changes the proprietor only in the Ukrainian register. International registrations require a separate recordal through WIPO.

Quality provisions protect the proprietor, not the licensee. They are the mechanism by which the proprietor keeps the registration safe from the licensee's conduct.

Working with us

We draft assignments and licences under Ukrainian law, file the recordal with the Office and confirm the register entry. More on how we work with IP firms.