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In order for a trademark to be registered, it must meet the requirements established by the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”.

The main conditions for granting legal protection to a trademark:

• compliance with the requirements of public order, principles of humanity and morality;
• presence of a trademark of distinctiveness (a trademark must perform a distinctive function, i.e. individualize in the minds of consumers the product or service for which it is used);
• absence of deception (the trademark should not mislead the consumer regarding the true manufacturer of the product or the place of production of the product).

A trademark cannot be registered:

• which is the simple name or simple description of the goods or services for which it is applied for registration;
• identical or similar to a previously registered or previously applied trademark in the name of another person to such an extent that it can be confused with such a trademark;
• identical or similar to the brand name of a well-known company in Ukraine to such an extent that it can be confused with such a name;
• which reproduces the names of famous works of literature, science, art or surnames, pseudonyms, portraits of famous people in Ukraine without their consent.

Failure to comply with the specified requirements may be grounds for the patent office to refuse registration, so we strongly recommend contacting our specialists for a preliminary search and analysis of the trademark for compliance with the terms of protection.

According to the Civil Code of Ukraine and the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, a registered trademark gives its owner the exclusive right:

 

• use the trademark to denote the services provided or goods produced (by applying it to the product, packaging, label, patch, tag), place the trademark on signs, in any types of advertising, in accompanying documentation, use on Internet sites, in the national domain name.UA;
• prohibit other persons from unlawfully using the same or similar designation;
• give the right to use the trademark to other persons (issue licenses or enter into license agreements);
• fully or partially transfer (assign) rights to the trademark.

 

In the event that a registered trademark is illegally used by third parties without the permission of the owner, the specialists of our firm will provide legal assistance in pre-trial and judicial protection of rights.

 

Exclusive intellectual property rights granted by the state as a result of trademark registration are confirmed by a certificate of Ukraine for a sign for goods and services.

 

The certificate is issued after the registration of the trademark in the State Register of Certificates for Marks for Goods and Services and the publication of information about it in the official bulletin “Industrial Property”. The validity period of the certificate is 10 years, counted from the date of filing the trademark application. The validity period of the certificate can be extended for another 10 years an unlimited number of times.

 

It is important to remember the territorial principle of trademark protection: the certificate is valid only in the country whose competent authorities issued this certificate. The certificate of Ukraine for a sign for goods and services is valid only on the territory of Ukraine. Therefore, if trademark protection is required abroad, other registration procedures should be used (see International Trademark Registration).

 

Registration of a trade mark (trademark) in Ukraine begins with the registration and submission of an application to the authorized department – “Ukrainian Institute of Intellectual Property” (Ukrpatent). The application materials must contain, in particular, an image of the trademark and a list of goods and services for which it applies for registration.

 

In the process of registration, a trademark goes through several legal stages:

• registration of primary documents;
• establishment of the application submission date;
• formal examination;
• qualification examination;
• preparation for state registration and publication;
• issue of a certificate for a sign for goods and services.

For actions related to filing a trademark application and obtaining a certificate, it is necessary to pay fees and state duty established by law.
Currently, the term of trademark registration is about 18-22 months, and at the request of the applicant, it can be accelerated to 7-8 months (with an additional fee).

 

After passing the stage of setting the date of application submission, Ukrpatent issues a notice (the so-called “priority certificate”) in which the date of submission of the application for registration is fixed. From this date, the applicant has the right to indicate the symbol “TM” next to the image of the trademark as a warning that it is in the process of registration and for this period it is granted temporary legal protection.
In case of non-compliance of the application with the formal requirements (for example, incorrectly prepared application materials, unpaid or partially paid application fee) and provided that these inconsistencies have not been eliminated within the established period, Ukrpatent sends a notification that the application is considered withdrawn.

 

In case of non-compliance with the terms of protection of the trademark, Ukrpatent sends a notice of a possible refusal of registration and provides a deadline for preparing a motivated response together with evidence in favor of trademark registration. If a reasoned answer is not sent within the set deadline, Ukrpatent will make a final decision to refuse registration of the trademark.
If the trademark meets the conditions of protection, Ukrpatent makes a positive decision on the registration of the trademark. In this case, it is necessary to pay the established fees and customs duties for publication of information on trademark registration and obtaining a certificate.

 

Specialists of the Patent Law Firm “Lex Intels” will take all necessary actions regarding the registration of a trademark in Ukraine:

• competently, taking into account the maximum protection of your business, will determine the MKTP classes;
• conduct a preliminary search for similarity and identity of the trademark, as well as analyze the applied trademark for compliance with other conditions of protection;
• qualitatively prepare the materials of the trademark registration application and submit them for registration using the electronic service;
• provide legal support for the application in the process of its examination, including, at the request of the client, order accelerated trademark registration;
• calculate and pay the fees and duties required for trademark registration, obtain and provide you with a trademark registration certificate.

According to the legislation of Ukraine only a registered trademark gives its owner an exclusive right:

• give permission to use your trademark to third parties;
• prohibit the unauthorized use by third parties of the same or similar trademark;
• get a domain name in the .UA zone (for a word or combined trademark).

Thus, the registration of a trademark will allow its owner to officially enter into a license agreement for the use of the trademark and receive remuneration (royalties) under the agreement or to apply to the court / law enforcement authorities in case of violation of trademark rights by third parties.

 

However, a registered trademark also has other advantages:

• only in relation to a registered trademark can you put the ® sign, which means that this trademark has been granted legal protection by the state;
• a registered trademark becomes a kind of guarantee of the quality of manufactured products and increases consumer confidence in it;
• only a registered trademark can be the object of property valuation and the subject of an agreement on the transfer (purchase) of rights to it;
• a registered trademark can be a contribution to the authorized capital of the company, its intangible asset, which is credited to its balance sheet (and accordingly increases the value of the company).