What is a trademark and why register it?
A well-established trademark is a brand.
You can read how to register a trademark here.
TM registration is:
- Protecting the rights and interests of the true owner;
- the ability to prevent third parties from illegally using the mark for goods and services;
- If necessary, the possibility of selling or transferring ownership.
To explain why to register a trademark, let’s take three situations as an example.
An enterprise has long and productively worked in the market of certain goods or services, producing high quality products, but their name is not registered anywhere. At one point, a competitor appears who has registered the company’s mark. He presents all the documentation on the ownership of the TM and has the right to file a lawsuit against the true owner, who has become a victim of unfair competition.
2. Unknowingly or intentionally commercially using another’s TM is fraught with liability before the law for infringement of the rights of the legitimate owner of the trademark.
3. The company has been working on the market for a long and productive time, but for certain reasons decided to split into two (three…five…-teen) firms, which claim the same market niche, because each former partner (most often companies are divided due to troubles between business partners) considers itself the legal successor of a trademark, logo or slogan. In this case, only a court will help the case, if the TM was registered to a legal entity.
Apart from the mentioned problems that may arise, it is also important to remember:
- you can’t advertise unregistered TMs;
- if the TM is registered, it is possible to counteract unscrupulous competitors who may cause commercial and reputational losses by producing low-quality counterfeit products.
A registered trademark offers a number of advantages:
- use TM images in business documentation, the Internet;
- to do franchising;
- have the right to prohibit third parties from using the trademark;
- register .UA domains.
You can read how to register a .UA domain here.
Trademark registration in Ukraine: stages
Step 1: Identity verification
Before submitting documents, it is worth checking the logo for uniqueness in the Ukrpatent database. Thanks to this check, it will be possible to be sure that the trademark submitted for registration does not violate anyone’s rights and there are no similar or identical TM designations.
Step 2: Application
Having collected all the papers, it is possible to start drawing up the application, which is submitted by a legal entity or individual in person to the State Enterprise “Ukrainian Institute of Intellectual Property” (SE UIIP). One application is filed for one trademark, and if the applicant wants to obtain rights, for example, for a logo in different colors, it is necessary to submit two applications.
Goods or services applied for registration are designated according to the International Classification of Goods and Services: classes 1 to 34 are goods and 35 to 45 are services.
For two months from the date of application, the fee is payable (it is non-refundable in case of rejection).
Once you pay the application fee (see below for how much – see below), the Institute will send you a notification that it has assigned an application date or that additional information is needed if the document is incorrect.
Step 3: appraisals
In order to register a trademark, it is necessary to pass two examinations: formal and qualified. During the formal examination, the following is checked:
- fidelity of filling out the application;
- the presence of all the papers;
- fidelity of execution of payment documents;
- conformity with the declared class(es) of the ICTU.
The results on compliance with the legislation are sent to the applicant. If necessary, a request for additional information is sent, which must be responded to within two months.
A qualified expert examination establishes the uniqueness of the mark submitted for registration. The result of the examination is sent to the applicant, who has two months to respond.
Step 4: publishing
The applicant received a positive answer – there are three months to pay the state duty for the certificate, which you will receive, and for the fact that they will publish information about the issuance of the certificate for the trademark in the gazette.
Step 5: Registration
Simultaneously with the publication, data on the new TM is entered into the state register, i.e. trademark registration takes place.
Step 6: Presentation of the certificate
The last step in a long journey is to obtain a certificate from the State Intellectual Property Service. The certificate is valid for ten years from the date of application. If an extension is necessary, you should apply six months before the expiration date of the certificate.
Is it possible to register a trademark yourself?
If you decide to register a trademark, you don’t have to contact a patent attorney – you can do it yourself:
1. First, it is necessary to know for sure that the registered mark is unique. To do this, it is necessary to check the registered designations in the Ukrpatent database and determine the degree of similarity. It is also necessary to remember about the procedure of international registration of TM under the Madrid system. In this way it is possible to check already registered TMs.
2. Secondly, it is necessary to draw up the application correctly. For correct drawing up of the application it is worth to familiarize with the Rules of drawing up the application: the application should be drawn up in the Ukrainian language (using the rules of transliteration, if a foreign company is registered), use a form of the established form, with a clear indication of the color scheme and class of ICCTP.
3. payment of state duties. It is necessary to be extremely careful when filling in the details for payment.
Correctly completing items 2 and 3 of this list does not guarantee trademark registration.
It is important to specify all your contact information correctly, as Ukrpatent informs about each of its actions and decisions only in writing.
How much it costs to register a trademark in Ukraine
The final cost of trademark registration depends on many factors:
The cost of registration with patent attorneys will vary slightly.
Popular mistakes when registering a TM in Ukraine
When deciding to register a brand, you need to prepare thoroughly to avoid repeating the popular mistakes discussed below.
I don’t know the target – there’s a landmark somewhere….
First, it is necessary to clearly define the purpose of registration: for a domain, production of goods or provision of services. If the applicant intends to use the logo and the name separately, the verbal and pictorial meaning should be registered separately (this will provide additional opportunities for combining and disposing of them separately).
Decide on the final image of the TM: no changes can be made, but a new trademark can be registered.
A classes – 45
The applicant’s inattention to the classes of ICTU often occurs if his main goal is to register a domain in the .ua zone. The state gives three years for the applicant to use his TM according to the declared goods or services. In this case, there may be an interested person who will take your labor in court and use it for the declared purpose.
If you can’t find it, you’ve lost it
A preliminary search for identical trademarks or similar trademarks is a prerequisite before starting the procedure. This will save the applicant time and money: we remind you that in the event of refusal, no one will refund money.
Tamara and I are a couple
The law allows registration of a mark for several owners, but often when common views on the conduct of business diverge and subsequent joint management becomes impossible – court proceedings begin. And if no consensus can be reached (one owner sells the rights to the trademark to another), both owners will lose their rights to the mark.
I overslept
Very often applicants forget to reply to letters from Ukrpatent. If specialists offer to specify something, for example, class, it is not a problem. But it is a disaster if the applicant was sent a request for additional information, and he forgot to respond. In this case, the application is considered withdrawn.
Possible reasons for rejection and how to resolve them
The most frequent refusals are received by those trademarks that used in their name names not subject to registration:
Also those who want to register communist and national-socialist symbols, which are banned on the territory of Ukraine, will be refused:
Trademark registration: results
If you are going to produce some goods or provide services, it is worth registering a trademark to protect your rights. It is not difficult to do this yourself – you need to prepare yourself in advance by reading the legal framework. It is easier to do it through a patent attorney – then you only need to read the agreement on the provision of services. It is even easier to register through the branding agency KOLORO. We will go through all stages – from idea to promotion of ready-made business: we will create a logo and corporate identity of the company, come up with a slogan, register a trademark, conduct an advertising campaign and develop a website or online store. All the best – for the best only with us! Write and call:
