Registration of a trademark in Ukraine

Obviously, in this age of ubiquitous advertising and rampant unfair competition, protecting your products by all legal means is more necessary than ever. According to a study of the world's largest criminal industries conducted by Forbes magazine, counterfeiting took an honorable second place - right after the profitability of drug trafficking... So whether it is worth fighting it is a rhetorical question. In Paris, for example, back in 1951, the French Union of Manufacturers opened the Museum of Counterfeit Products, which brings together all kinds of goods - from fashionable clothes and toys to masterpieces of world art, and, unfortunately, from the outside, fakes are absolutely indistinguishable from the originals.

A trademark (TM) is a globally accepted term that denotes the legally enforceable rights of an owner to a product or service. In Ukrainian legislation, the term "trademark" (not "trade mark"!) first appeared in 2004, with the adoption of the new Civil Code.

The most important step on the way to protecting your rights in the market is to register a trademark, which will help to distinguish a product from a number of similar ones, give it a recognizable "face", actively promote it through marketing, and in the event of threats from competitors and beyond, be able to defend your good name and product reputation in court, which will sooner or later have a positive impact on demand. Naturally, the registration process requires not only a lot of documents, certain investments and, what is very important, a lot of time, but also high professionalism, since the main task depends on it - whether the trademark will really protect the product and to the extent you expect. Therefore, turning to professionals (and they must have the status of a patent attorney, which not every lawyer involved in such registration has) seems to be the only correct course of action.

The Ukrainian Institute of Industrial Property (commonly known as UKRPATENT) deals with registration issues.

In order for the trademark registration to bring the desired result, we need to understand exactly what business goal you are pursuing before starting the trademark registration process (you just need to register the trademark; or you need urgent registration; or immediately after registration you need to transfer the rights to the trademark to a new company, etc.) The more precisely the purpose of the registration is explained, the more correctly we will fulfill it. In addition, we have an extremely important task ahead of us - to determine the classes of the Nice Classification of Goods and Services (ICGS) under which your trademark will be filed for registration, and since it is quite difficult for a layman to do this, we ask you to specify the goods and services, and we will determine their compliance with the classes together. It is worth emphasizing that the rights to a trademark will be valid only for specific goods and specific services in the classes where they are registered, and each class is plus UAH 1000 of the state fee for filing an application. Striking a reasonable compromise between the need to save money and the need to have the right rights is a time-consuming process. Unfortunately, once a trademark is registered and the application for it has been filed with Ukrpatent, the goods and services for that application cannot be changed, and the list cannot be expanded.

The type of trademark (verbal or combined), whether it will have a color, and the term of trademark registration are also very important. This will affect the cost in the most fundamental way.

What documents are required for registration of a TM (trademark) in Ukraine (Resolution of the Cabinet of Ministers of Ukraine No. 1716 dated 23.12.04 "On Approval of the Procedure for Payment of Fees for Actions Related to the Protection of Intellectual Property Rights"):

If the Applicant is a legal entity (residents of Ukraine shall submit all information only in Ukrainian) If the Applicant is a private entrepreneur, his/her personal data and certificate of registration in this capacity shall be indicated.

• name of the enterprise, indicating the form of ownership;
• company code;
• legal address;
• address for correspondence (with postal code);
• information about the head (position and name);
• a power of attorney (we send you a form - you fill it out, certifying it with the signature of the head and the company's seal) for an authorized patent attorney;
• the mark in computer form (color, font specified by you), in a certain form, the image of the TM can be sent in any graphic format, but CorelDRAW or AdobeIllustrator programs provide more accurate color reproduction on the printouts of the mark submitted for registration;
• Indication of the field of activity in which your mark will be protected - if the applicant does not need to verify and expedite the examination.

However, we are confident that a preliminary trademark search is an important and necessary step in the registration process, especially in cases where the verbal part of the mark contains commonly used words. A brand search can be conducted both against the database of already registered marks and against filed applications for registration.

Confirmation of payment of the state fee for filing and examination of an application for trademark registration in Ukraine, with the obligatory indication of the purpose of payment (depending on the number of applicants - one or more - this column is executed with a different digital code - 40100 or 40200).

All the data in the application is repeatedly checked by you, and only after filing an application with Ukrpatent, paying state fees and providing the original power of attorney in the application, your trademark rights become effective. Within 1-2 months after filing the application, we receive an official notification from Ukrpatent on the date of filing the application. Examination of a trademark application according to the standard procedure usually takes 12-15 months from the filing date. In the course of the trademark registration process, Ukrpatent may receive requests from the examination team to clarify, amend or supplement the application materials. In this case, we will inform you about it and, of course, advise you on all the issues that arise. There are also procedures for accelerated TM registration - from 4 to 8 months (it is worth using if you need to register your TM internationally). The trademark registration period is also affected by the fact that, in addition to the time for examination, it takes about a month to publish the trademark in the official bulletin "Industrial Property" of the State Intellectual Property Service. In the end, you get a ready-made Certificate of TM registration from us.

A long trademark registration does not mean that you cannot use it at this time or that it is not protected by law. After submitting the application, you have the right to put a ™ next to the trademark, short for trademark, which in world practice means that this TM has been submitted for registration. After receiving the certificate, you have the right to place the ® symbol (short for registered) next to the mark, which indicates that your trademark has already been registered.

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