Ukraine: gambling ban won't excuse non-use

A proprietor whose registered services were illegal to supply for years has an intuitively strong answer to a non-use action: the law stopped me. The Ukrainian Supreme Court has now looked at that answer in a gambling case and found it insufficient, because the proprietor had filed its application after the prohibition was already in force and did nothing with the mark once the prohibition was lifted. The reasoning is narrow, but it is directly useful to anyone holding — or blocked by — a Ukrainian registration that covers a regulated line of business.

What was the dispute about?

Livescore Limited brought an action in August 2022 seeking early termination of a Ukrainian trade mark certificate for all of the class 41 services it covered, having been partially refused protection in Ukraine for its own international registration on the ground that its sign was confusingly similar to the defendant’s mark, registered in 2012.

The shape of the claimant’s interest matters, because it explains why these actions are brought at all. Livescore obtained protection in Ukraine in classes 9, 35 and 38, but was refused entirely for class 41. The earlier Ukrainian registration was, in other words, a live obstacle to the claimant’s own portfolio in a single class — and the non-use action was the route to removing it rather than a general policing exercise.

What is the statutory test the courts were applying?

Article 18(4) of the Law of Ukraine ‘On Protection of Rights to Marks for Goods and Services’ allows any person to apply to court for early termination of a certificate where the mark has not been used in Ukraine continuously for five years from publication of the certificate.

Two features of that provision are worth noting for portfolio purposes. First, standing is broad: the applicant is “any person”, so a challenger does not need to demonstrate a particular commercial injury before it starts. Second, the clock runs from publication of the certificate, which means the vulnerability of an old registration is a function of calendar time rather than of anything the proprietor has recently done or failed to do.

How did the two lower courts split?

The Pechersk District Court of Kyiv granted the claim in full by decision of 29 January 2024, but the Kyiv Court of Appeal, by ruling of 24 February 2025, set that decision aside as regards the class 41 services ‘casino facilities’ and ‘gambling services’, holding that the Law of Ukraine ‘On the Prohibition of Gambling Business in Ukraine’ constituted a proper reason for the non-use of the mark.

The appeal court’s position is the one most in-house readers would have predicted. If the state has prohibited the very activity described in the specification, non-use of a mark for that activity looks like compliance rather than neglect, and treating it as a ground for revocation looks like penalising the proprietor for obeying the law. The appeal court accordingly preserved the two gambling-specific services and let the termination stand for the rest.

Why did the Supreme Court reject the excuse?

The Supreme Court set aside the appeal court’s ruling and upheld the first-instance decision terminating the trade mark for those services, reasoning that the prohibition was foreseeable at the time the disputed mark was registered and therefore could not be a proper reason for non-use.

The dates carry the reasoning. The Law of Ukraine ‘On the Prohibition of Gambling Business in Ukraine’ entered into force in 2009. The application to register the disputed Ukrainian mark was filed in 2011 — that is, two years into a prohibition that was already on the statute book and already applicable to the services being claimed. On that sequence, the obstacle was not something that befell the proprietor after it had committed to the mark; it was a known condition of the market the proprietor chose to file into. A restriction the applicant knew about, or could have known about, before filing is not an intervening impediment at all.

The second half of the reasoning closes the escape route. The Law of Ukraine ‘On State Regulation of Activities Regarding the Organisation and Conduct of Gambling’ entered into force on 13 August 2020 and lifted the prohibition on gambling. The Supreme Court noted that the proprietor did not use the disputed mark after the prohibition was lifted. So even on the appeal court’s own logic, the excuse had an expiry date: once the legal impediment disappeared, continued silence was the proprietor’s own choice. With the action brought in August 2022, the period after the lifting of the ban was itself a period of unexplained non-use.

What broader principles did the Court invoke?

The Supreme Court emphasised the principle of genuine use, including the clearing of the State Register of certificates that have long been unused, and stated that trade mark protection may not be used to restrict the activities of other business entities.

Those two statements are worth reading together with the procedural facts of the case. The claimant was a party whose own application had been refused over the earlier mark; the defendant held a registration for services it had not supplied. The Court’s framing treats the register as an instrument of actual trade rather than a reservation system, and treats the effect on third parties — here, a refusal in class 41 — as part of the reason for allowing termination. For a challenger, that is a helpful articulation: the argument is not merely that the proprietor has been idle, but that the idle registration is doing work against someone who is trading.

What does the ruling not settle?

It does not decide whether an unforeseeable later prohibition — a restriction enacted after registration, for example, or wartime measures — would count as a proper reason for non-use, and it lays down no general evidentiary standard for proving proper reasons.

That limit is real and should temper how the case is used. The decision rests on two specific findings: that the ban predated the filing, and that nothing happened after the ban was lifted. Neither finding tells a proprietor what to prove where the impediment genuinely arose after the registration was in place and remained in force throughout the relevant five years. Nor does it indicate what quantity or kind of evidence — regulatory correspondence, licensing attempts, preparatory steps — a proprietor would need to put in to make a proper-reasons case succeed. Readers should also treat the citation with care: the material we reviewed reports two different dates for the Supreme Court ruling, so anyone intending to rely on the judgment in submissions or in an opinion should verify the case reference and date directly in the court register before quoting it.

What should IP managers do now?

Run a targeted review of Ukrainian registrations whose specifications cover regulated, licensed or previously prohibited activities, and sort them by the two dates the Supreme Court found decisive.

Where the restriction predates the filing date, the registration should be treated as vulnerable to a revocation action on this reasoning, with no realistic prospect of relying on the restriction as an excuse. Where a restriction existed but has since been lifted, the question becomes how long ago it was lifted: a gap of more than five years since the impediment fell away leaves the certificate exposed regardless of what happened during the prohibition itself. In either case there are three practical responses — begin genuine use in Ukraine for the services actually claimed, narrow the specification to what is being used or can be used, or refile for a scope that matches present commercial reality. Doing nothing while relying on the historic legal impediment is the one course this ruling forecloses.

The mirror-image exercise is just as valuable. Where a Ukrainian citation is blocking a filing or an extension of protection, check whether the cited registration covers activities that were prohibited or heavily restricted before the mark was applied for, and when any such restriction ended. On the reasoning above, marks of that description are candidates for removal rather than fixed obstacles to be designed around — and, as the claimant in this case found, the class in which you were refused may be recoverable through a non-use action instead of a coexistence negotiation.