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Registration of a trademark/logo/trademark in Ukraine begins with the registration and submission of an application to the authorized department, to the “Ukrainian National Office of Intellectual Property and Innovation” – UKRNOIVI (previously, such department was 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;

– setting the application submission date;

– Formal examination;

– Qualification examination;

– preparation for state registration and publication;

– Issuance 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. At the same time, for submitting an application in electronic form, the legislation provides for a 20% discount on the application fee.

Currently, the term of trademark registration ranges from 18 to 24 months.

After passing the stage of setting the date of application submission, UKRNOIVI 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 place the TM symbol 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 inconsistency of the application with the formal requirements (for example, incorrectly prepared application materials, not paid or incompletely paid application fee) and provided that these inconsistencies are not eliminated within the set deadline, the applicant is sent a notice that that the application is considered withdrawn.

If there are no formal objections to the application or the applicant has removed them in a timely manner, the application moves to the stage of qualification examination, during which it is considered whether the trademark meets the conditions of protectionability, in particular, whether it does not contradict whether it complies with the norms of morality or the established social order, whether it performs distinguishing functions (it is not descriptive), whether it does not deceive consumers, or whether it does not violate the rights of third parties. If the TM does not meet such criteria, UKRNOIVI sends a notice of a possible refusal of registration and provides a deadline for preparing and submitting a reasoned response with arguments in favor of trademark registration. If a reasoned answer is not received within the prescribed period, the department makes a final decision to refuse registration of the trademark.

If the trademark meets the conditions of protection established by law, the Ukrainian National Intellectual Property Office makes a positive decision on trademark registration. After payment of the state duty and publication fee, a certificate is issued, which contains information about the owner of the TM, its image and a list of goods and/or services for which the TM is registered.

A Trademark Certificate is valid for 10 years and may be renewed indefinitely for further 10-year periods subject to payment of a renewal fee.

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 indicate the services or goods provided (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 improperly 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 registration of the trademark in the State Register of Certificates of Goods and Services of Ukraine and 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 ).

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”.

Basic conditions for granting legal protection to a trademark:

• compliance with the requirements of public order, principles of humanity and morality;
• the existence of a trademark difference (the 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 as to the true manufacturer of the product or the place where the product is produced).

Unable to register a trademark:

• which is the simple name or 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 the 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 the extent that it can be confused with such a name;
• reproduction of names of famous works of literature, science, art or surnames, pseudonyms, portraits of famous people in Ukraine without consent.

Non-compliance 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 legislation of Ukraine, only a registered trademark gives the exclusive right to its owner:

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

At the same time, a registered trademark has other advantages:

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