Trademarks and Commercial Names: Trouble Aspects of Legal Regulation

Abstract

Trademarks and commercial names, their regulation drawbacks are investigated in the article. The main attention the authors pay to appearance right to trademarks and commercial names and their protection. Possibility to protect commercial names after their first using without procedure of registration that is provided by Paris Convention led to plenty claims and issues about its correct using and right owners. Also, it is forbidden to register as a trademark any sign which was ever used by any kind of entity or individual entrepreneur as a commercial name despite of how long ago it was. The law doesn’t anticipate that using should be constant and any kind of possibility to annul right on commercial name under its non-use for some period of time as it is done for trademarks (three years of non-use is the ground to annul right on trademark). Besides Ukrainian law protects name of the entity together with its legal form but exactly name, not the legal form, has an identifying role, that’s why the authors propose to provide legal norms, which will ban a possibility to register the same names for different entities despite of their legal form.
 In addition, Ukrainian and European legislation allow protecting trademarks under the ground of announcing them well known through courts. Such procedure isn’t provided for commercial names but the law doesn’t forbid to use the same commercial names by different entities in different kinds of activity. However, any entity may freely change or extend its activity without any special procedure and commercial names cannot be registered because there is no registration and even Paris Convention doesn’t provide different classes of products and services for commercial names as it is done for trademarks (Nice Classification under Nice Agreement). Ukraine has more than 25 kinds of legal forms of entities and their unions all of them may have the same name despite of kind and sphere of their activity, this leads to troubles with protection against unfair competition and troubles with identification of different entities. Thus, the authors propose to protect only registered trademarks and commercial names and to provide unique names and unique commercial names for every entity.
 Problems of domain names protection, defense against unfair competition and cybersquatting are investigated. In Ukraine exists ban for using in domain names the same or very similar signs with registered trademark in connection with the same or similar class of products and services. But there is no ban for using in domain names the same or very similar sign with existing commercial name. It needs revising both for protecting commercial name owners and consumer rights against mislead. It is also worth to provide a possibility to protest cybersquatting in meaning to protest the same with famous character or product trademark registration ones using of its sign preceded the trademark registration by another person than the person who registered it.