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Natalia Vadimivna Lemeshchuk, lawyer, patent attorney of Ukraine
Published: Bulletin of the Odessa Bar Association, 2015, No. 4

Attention! The information contained in this article may change due to changes in national or international legislation!

 

One of the most common mistakes made by applicants who are new to design patenting or brand registration is their desire to obtain a “world patent” or trademark registration “worldwide” with a single application. Unfortunately, such an opportunity does not exist, since the territorial principle of patenting/registration of industrial property objects operates in the field of intellectual property, which means that legal protection is provided only in the state on whose territory the corresponding protection document, patent or certificate, is issued.

At the same time, over the past decades, the world community has done a lot to make it easier for applicants to protect intellectual property objects abroad, to reduce the cost of obtaining rights to them and, in many cases, to further maintain their validity. As a result, in addition to the national principle of registration and protection, established by the Paris Convention for the Protection of Industrial Property back in 1883, regional and international protection systems were created, with unified requirements for application documents and the registration procedure, which to a greater or lesser extent resolves the issue of territorial protection limitations.
In the framework of this article, we will briefly dwell on all three known systems and try to analyze their attractiveness for Ukrainian applicants. For convenience, we will successively consider these systems for the most sought-after objects of industrial property – trademarks, industrial designs and inventions (utility models).

1. National security system
Article 4 of the Paris Convention on the Protection of Industrial Property (hereinafter – the “Paris Convention”), which has been in effect for Ukraine since 1991, provides a “national regime” of protection, which means that foreign citizens of the countries participating in the Paris Convention have the same protection of industrial property rights, as well as own citizens of one or another country. This norm also establishes the right of priority – the so-called “conventional priority” – which means the right of a foreign applicant to request protection in one or more participating countries, while keeping the date of filing the application in his country, provided that the application in the participating country of Paris Convention is submitted within six months – for trademarks and industrial designs, and twelve months – for inventions and utility models.

Today, 176 states and regional organizations are members of the Paris Convention, which enables Ukrainian applicants to request protection in almost any territory of the world. In case of successful registration, the applicant receives a security document (patent or certificate), which, in accordance with the territorial principle, confirms the legal protection of the object in this state. The terms and conditions of the protection document are regulated by the Paris Convention and the legislation of the country in which the protection was obtained.
The cost of patenting/registration includes the fees established by the patent office of the respective state, as well as the services of a national representative, whose participation is usually mandatory. In some countries, the patenting/registration procedure can be carried out directly by the foreign applicant. Thus, in accordance with the Agreement between the Government of Ukraine and the Government of the Russian Federation on cooperation in the field of industrial property protection of 30.06.1993, applicants and patent attorneys of both countries can directly conduct cases in patent offices, when submitting applications for the issuance of security documents, obtaining security documents and maintaining their validity. A similar provision is contained in the Agreement between the Government of Ukraine and the Government of the Republic of Belarus on cooperation in the field of industrial property protection dated October 20, 1993. According to US law, the mandatory participation of a representative is not required for the registration of trademarks and for obtaining patents, if the applicant is an individual. In the USA and South Africa, there is also a procedure for filing an inexpensive preliminary patent application (provisional application), which can be carried out without the involvement of a professional representative and allows the applicant to establish priority for his development; within 12 months, a final application must be submitted on the basis of the preliminary application, while in South Africa the final application is submitted with the participation of a patent attorney. However, as practice shows, the possibility of not involving a specialist is sometimes to the detriment, and not to the benefit of the applicants, since an incorrectly completed application cannot always be corrected at the next stages of paperwork; moreover, it is impossible to make any substantive changes after the decision to issue a security document has been made.
The national registration system remains relevant for the applicant if he intends to obtain protection of an object of industrial property on the territory of one or two states. For example, some Ukrainian applicants may be interested in object protection only in the Russian Federation and the Republic of Belarus, except for Ukraine, or only in Poland. In this case, obtaining protection directly in the country in which the applicant is interested, according to the rules of the Paris Convention, may be justified. This system of protection is also used in cases where the countries of interest to the applicant have not joined the systems of regional or international protection, when PCT applications are transferred to the national phase and in case of refusal by the European office to register a single Community Trademark, which will be discussed further.

 

2. Regional systems of registration and protection
The regional system envisages the unification of several states with the aim of creating a single system of providing legal protection to objects of industrial property; it also provides for the creation of a single department that ensures the reception, consideration of applications and issuance of security documents.
Today there are five regional organizations operating on the basis of the principles of registration and protection of industrial property objects that are uniform for several countries:
– European Patent Organization, which ensures the issuance and protection of European patents for inventions (European (Unitary) patent);
– the European Community of Trademarks and Industrial Designs, which ensures the registration of Community trade marks and Community designs;
– Eurasian Patent Organization, which unites the CIS countries and ensures the issuance and protection of Eurasian patents for inventions;
– African Intellectual Property Organization, which unites the French-speaking countries of Africa for the purpose of registration and protection of inventions, industrial designs and trademarks;
– The African Regional Organization of Industrial Property, which unites most of the English-speaking countries of Africa and ensures the registration and protection of inventions and industrial designs.
Due to a number of objective reasons, our applicants are currently interested in the systems operating in the European Union, so let’s dwell on them in a little more detail.

 
2.1. European patent
The European Patent Organization was created on the basis of the European Patent Convention, which was adopted in 1977; today, the organization unites 38 European states, including countries that are not members of the European Union (for example, Norway, Switzerland, Turkey). The headquarters of the European Patent Office is located in Munich (Germany).
The application is submitted in English, French or German, for Ukrainian applicants – with the mandatory participation of a representative certified by the European Patent Office. Applications are accepted in Munich, Berlin and The Hague. An electronic application form is also provided, under such circumstances the application fee is almost halved. The application is subject to a formal examination, patent search, publication and substantive examination, after which the department may make a decision to issue a European patent. Within three months after obtaining a patent, it is necessary to carry out a procedure for its confirmation (validation) in the member states of the European Patent Convention, which are of interest to the applicant, for which it is necessary to contact the patent attorneys of the relevant countries.
The term of protection granted by the patent is 20 years, which are counted from the date of filing the application.
Obtaining a European patent has both its advantages and disadvantages. The advantages, first of all, should include:
– significant cost savings when submitting a single application in one language, with the participation of one representative, and paying a single fee compared to submitting applications in each European country of interest to the applicant (today, the amount of the fee paid when submitting an application is from 1 650 euros and above, and depends on the scope of the application and some other circumstances);
– in case of receiving a negative search report, the applicant has the option to refuse the further patenting procedure and not to pay the examination fee;
– the procedure of the European Patent Office allows the applicant, depending on his plans, to a certain extent to influence the terms of obtaining a patent due to the period of publication of the application, the period for submitting a request for examination and the period for paying fees for issuing a patent (the period for obtaining a patent can be from 3 up to 5 years).
The main disadvantages include:
– the European Office conducts a fairly strict examination, according to the protectionability criteria established for inventions, therefore, the applicant must be sure not only of the novelty, but also of the inventiveness level (non-obviousness) of his technical development or technology, otherwise the money may turn out to be wasted;
– the obtained patent should be confirmed (validated) in the member states of the European Patent Convention, which may lead to significant costs for payment of national fees and services of national patent attorneys, payment of translation of published materials into the relevant state language;
– patent maintenance fees are also paid separately in each state in which the patent was validated, which entails additional costs.
Ukrainian applicants should remember that the submission of a European patent application must be preceded by the submission of an application to the national patent office (Ukrpatent), in accordance with Art. 37 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”.

 
2.2. Community industrial design
The Office for Harmonization in the Internal Market, located in Alicante (Spain), is the agency that ensures the granting of rights to industrial designs in the territory of the European Union. According to the procedure established by this agency, the applicant can obtain protection in all member states of the European Union. Today there are 27 European countries. An application for registration of a Community industrial design is submitted directly to the Office for Harmonization. The applicant can be a person who lives/stays in the territory of the European Union or in the territory of any of the countries participating in the Paris Convention. For Ukrainian applicants who want to use this procedure, the participation of a European patent attorney certified by the department is necessary.
A patent for an industrial design of the Community provides product protection for 5 years, with the possibility of its extension several times, up to 25 years in total.
If the owner of the industrial design has already started or plans to conduct its activities in the territory of several countries of the European Union, this procedure has undoubted advantages:
– submission of a single application in one of the five European languages allows to obtain protection at once in all the countries of the European Union, which significantly saves the applicant’s money;
– a single fee of 350 euros is paid for registration, namely, the filing fee is 230 euros; fee for publication – 120 euros (this fee is indicated for the registration of one industrial design);
– the standard term of registration is about 1.5 months; at the same time, the procedure allows submitting requests for a significant postponement of publication, which may be of interest to the applicant for commercial reasons;
– the provided legal protection is automatically extended to all new EU members without the need for the applicant to take any legal action in the event of the accession of new states to the EU.
Risks/disadvantages for the applicant:
– The Office for Harmonization conducts only a formal examination of an application for registration of an industrial design of the European Union, an examination for novelty and originality is not conducted. In order not to face significant costs and compensations related to the violation of the rights of third parties, the applicant must conduct a preliminary patent information search and make sure that his product is really new and original;
– drawing up and submitting an application for an industrial design directly to the Office for Harmonization requires the participation of a European patent attorney for applicants who do not live in EU countries. However, if the registration of the industrial design of the Community is carried out as part of the international registration under the Hague system (see below), then in this case the applicant can interact with the patent attorney of his country.

 

2.3. Community trade mark
The registration of Community trade marks, as well as the registration of industrial designs of the Community, is carried out by the Harmonization Office in Alicante. Similarly, the Ukrainian applicant has the right to submit applications, since he lives (or conducts business) in a country participating in the Paris Convention, provided that a certified European patent attorney is involved.
A trademark is registered for 10 years, the specified term can be extended for a 10-year period an unlimited number of times.
Advantages of this registration procedure:
– submission of a single application in one of the five European languages allows to obtain protection at once in all 27 countries of the European Union, with automatic extension of protection to all new EU members;
– the application does not require prior national registration or national submission, as provided by the Madrid system (see below);
– a single application fee is paid, which amounts to 900 euros, if no more than three classes of the International Classification of Goods and Services are applied for, + 150 euros for each class over three;
– the standard term of registration is about 8 months;
Risks / disadvantages of this system for the applicant:
– if the registration of a trademark was refused in at least one of the countries of the European Union, this entails an automatic refusal of registration in all countries of the European Union. However, the applicant is given the opportunity to convert the application according to the national procedure in those countries of the European Union where no objection to registration was filed;
– registration and submission of the application by the Ukrainian applicant directly to the Office for Harmonization of the Internal Market, as well as further administration of the application, is carried out only with the participation of a European patent attorney. At the same time, the Community trademark can be registered under the Madrid system, which will allow interaction with the Ukrainian attorney.

 
3. International systems of registration and protection
Such systems are based on international agreements, the participants of which can be various states located on different continents, regardless of whether these states are members of regional agreements. Moreover, the regional organizations listed in section 2 of this article are also parties to one or more agreements that define international protection systems. These agreements are administered by the World Intellectual Property Organization – WIPO in Geneva (Switzerland); the WIPO International Bureau is located there itself, where all applications submitted within the framework of the international protection system are received.
For ease of understanding, we list the described international systems and the treaties establishing them in the table:
Table 1
Conditional
system name
Objects

Name of the agreement Year and city of conclusion Year
entry into force for Ukraine
The Hague System Industry
samples The Hague Agreement on the International Protection of Industrial Designs
The Hague Act
Geneva Act 1925, The Hague

1960, The Hague
1999, Geneva
2002
2003
Madrid System Trademarks Madrid Agreement on the International Registration of Marks
Protocol to the Madrid Agreement on the International Registration of Marks 1891, Madrid

1989, Madrid 1991

2000
System
PCT Inventions Patent Cooperation Treaty (PCT)
1971, Washington 1991

The listed international treaties establish a minimum of formalities that are the same for all its participants, which allows you to request protection in many countries and regions. An undoubted advantage of such international protection systems is the possibility for the applicant, interacting only with the attorney of his country, to submit one application and pay all the necessary fees once, at the stage of submitting the application.
We will briefly consider the mechanisms of registration and protection of objects within the framework of these systems.

 
3.1. The Hague system
According to the procedure of the Hague system, a Ukrainian applicant can submit an international application in English or French directly to the WIPO International Bureau, which registers the received application and sends its copies to the patent offices of the countries (or regional associations) specified by the applicant. Within the established period, the patent offices of these countries have the right to refuse to recognize the international registration. If such a refusal does not come, then the industrial design is considered registered in the territory of the state indicated by the applicant. International registration of industrial designs is valid for 5 years, with the possibility of several extensions for another 5 years, for a total term of up to 15 years (for some countries – up to 25 years).
There are currently 65 countries and regional organizations participating in the Hague Security System.
Advantages:
– the applicant can submit one application in English or French in more than 60 countries, including the European Union, which is a member of this system, without involving registered European attorneys and patent attorneys of the countries specified in the application;
– the fee is paid once upon submission of the application; the basic fee for filing an application for one industrial design is 397 Swiss francs + 167 Swiss francs for the publication of an image + an average of 60 Swiss francs for specifying each country in which the applicant wishes to obtain protection (unless that country has set individual, higher fees);
– the procedure of the Hague system allows to register several industrial designs within the framework of one application, provided that these industrial designs belong to the same class of the International Classification of Industrial Designs;
– the protection of industrial designs granted under the Hague system is identical to the protection granted under the national registration procedure.
Disadvantages of this system:
– countries such as Canada, China, India, Australia, the Russian Federation, the Republic of Belarus, Kazakhstan, and Latin American countries have not yet joined the Hague Agreement. If the applicant (owner) of an industrial design is interested in its patenting on the territory of the specified states, he should resort to the national procedure.

 
3.2. Madrid system
According to the procedure of the Madrid system, Ukrainian applicants submit one international application through the national patent office of our country, which then forwards this application to the WIPO International Bureau (Geneva). The International Bureau registers and publishes the received application and sends its copies to the patent offices of the countries indicated by the applicant. A prerequisite for this procedure is the registration of the trademark in the country of origin, the so-called basic registration, or at least the submission of an application for registration in the country of origin of the trademark, the so-called basic application. International trademark registration is valid for 10 years, with the possibility of an unlimited number of extensions for another 10 years.
There are currently 97 states and regional organizations participating in the Madrid Security System.
Advantages of the Madrid system:
– the applicant can submit one application in English or French in almost a hundred countries of the world, including the European Union, which is a member of this system, without the involvement of national attorneys, and receive protection identical to the protection provided by the national registration procedure;
– the fee is paid once upon submission of the application; the basic fee is 653 Swiss francs for a trademark applied for in black and white or 903 Swiss francs for a trademark applied for in color + 100 Swiss francs for each country in which the applicant wishes to obtain protection ( if the indicated country has not established individual, higher fees) + 100 Swiss francs for each class of the International Classification of Goods and Services over three;
– as a result of the clearly established deadlines for consideration of applications by patent offices and on the condition of timely payment of the fee, the applicant receives information about the protection of his trademark in the countries indicated by him (or about the previous refusal of protection) in about a year, which is not always possible according to the procedure of national registrations. So, for example, the term of trademark registration in the Russian Federation, the Republic of Belarus, and the Republic of Kazakhstan can last from one and a half to three years;
– in the future, the international registration can be territorially expanded by submitting applications indicating other states that were not indicated by the applicant from the very beginning.
However, this protection system has certain risks and disadvantages for the applicant:
– dependence on national registration for 5 years – international registration is canceled if the basic registration was terminated or the basic application was rejected in the country of origin (for example, trademark registration was refused in the applicant’s country or the registration made there was recognized as invalid);
– the list of member states of the Madrid system is smaller than the list of member states of the Paris Convention. For example, Canada, the United Arab Emirates, and most Latin American countries are not members of the Madrid system; protection in these countries must be obtained through a national procedure in each individual state.

 

3.3. PCT system
The mechanism of patent protection based on the PCT Treaty is significantly different from the international system of protection of industrial designs and trademarks: if a single application is submitted under the Hague and Madrid systems, on the basis of which registration of the object is carried out and protection is granted in the states specified in the application, then in within the framework of the PCT system, only the filing of a patent application is possible, the further procedure is carried out directly in the state or region of interest to the applicant. Based on this, the patenting procedure under the PCT Treaty is traditionally divided into “international” and “national” phases.
Schematically, it happens as follows: no later than 12 months from the date of submission of the national (priority) application, the Applicant submits a PCT patent application through the patent office of his country or directly to the International Bureau of WIPO, where the date of submission of the application is set, an international search is conducted by a competent search authority and the application is published together with the results of the international search. At the request of the applicant, the authorized search body may also conduct an international examination. At the request of the applicant, the authorized search body may also conduct an international preliminary examination. An international application is considered to have been submitted to all states and regional organizations that are parties to the PCT Treaty.
The international phase ends after 30 months (in some countries – after 31 months) from the date of filing of the priority application, before the end of which the applicant must move to the national phase, i.e. submit, usually with the participation of a national attorney, a PCT application to the patent offices of countries/organizations that he is interested, with a translation into the working language of the department, in accordance with the prescriptions established there and payment of the prescribed patent fees. Further examination of the patent application and the procedure for issuing a security document are carried out in full accordance with the legislation of the state (organization) to which the application is submitted.
For Ukrainian applicants, the languages of the PCT application are Russian or English, correspondence between the applicant and the national office and the International Bureau is carried out in these languages; international search bodies – the Federal Institute of Intellectual Property (Rospatent) or the European Patent Office (EPO). When applying for a PCT, it is necessary to pay an application fee and an international search fee, which depends on the international search authority chosen by the applicant.
We can be proud that starting from February 16, 2016, Ukrpatent becomes the 20th agency in the world competent to conduct international search and international preliminary examination for PCT applications, which, in certain cases, is not only convenient for our applicants, but also significantly raises the image of the state in the world system of intellectual property.
Having very briefly considered the rather difficult procedure for the protection of inventions under the PCT Treaty, we will try to analyze its advantages and answer the question why, with all its complexity and, in a certain sense, half-heartedness (because the applicant never receives the coveted “world patent”), it nevertheless, it is in great demand in the modern world:
– after submitting one properly executed PCT application and one-time payment of the prescribed fee, the applicant requests legal protection in all states/organizations that are members of the PCT Treaty, and today there are 142 states, including the European Patent Organization and the Eurasian Patent Organization;
– in contrast to the 12-month period for submitting applications established by the Paris Convention, foreign countries interested in the applicant, under the PCT procedure, this period is 30 months (and for some PCT participants – 31 months); in this way, the applicant gets an additional year and a half to conduct marketing research of foreign markets, search for investors or partners, and based on the collected information, to finally decide on the need for patenting in one or another country;- this same additional postponement of one and a half years allows you to collect the necessary funds for the payment of fees and services of a lawyer for the transfer of the PCT application to the national phase, which is much more convenient than the procedures based on the Paris Convention (with a preclusive 12-month period for submitting applications to national agencies) ;
– the PCT procedure provides an opportunity to make changes to the submitted application at least twice, which can become very relevant in case of making non-obvious mistakes in the priority application, or in case new properties of the technology object described in the priority application are discovered in the process of testing or operation;
– within the framework of the PCT system, significant benefits are provided for Ukrainian natural person applicants. Yes, the discount on the PCT application fee for Ukrainian applicants is 90%, that is, out of the established $1,384, our applicants pay only $138.40. The discount on the fee for conducting an international search by the European Patent Office is 75%, that is, from the established 1875 euros, our applicants pay only 468.75 euros;
– in the future, when moving to the national phase, the applicants are also provided with benefits from the payment of fees, depending on which search authority conducted the international search and whether or not an international preliminary examination was conducted.

Briefly summarizing the proposed review, I would like to emphasize that in the field of intellectual property, as in life, there are no ready-made recipes. The author of this article tried to clearly show that each of the existing protection systems has both its advantages and disadvantages, and each object of industrial property, before it is declared as a subject of legal protection, must be carefully and comprehensively analyzed. in particular, taking into account its existing or potential commercial value, regions of use, the presence of analogues existing in these regions that discredit novelty or originality, or identical or similar means of individualization. When making a final decision, it is also necessary to take into account which examination system – in-person, verification or delayed – is established in the department that considers applications and carries out registration/issues security documents.

Natalia Vadimivna Lemeshchuk, lawyer, patent attorney of Ukraine
Published: “Bulletin of the Odessa Bar Association”, 2008, No. 3

 

With the entry into force of the Civil and Economic Codes of Ukraine, a new object appeared in intellectual property law – “commercial name”. It replaced the “brand name” mentioned in Article 27 of the Civil Code of the Ukrainian SSR, which on this issue had a deferential nature to the legislation of the USSR. As you know, the legislation that would regulate the legal protection of brand names was never developed (obviously, due to the needlessness of this object in the era of advanced socialism), therefore the Regulation on the firm, approved by the Resolution of the CEC and Radnarkom of June 22, 1927, continued to apply . This provision existed until recently and became invalid only on January 1, 2004 in connection with the adoption of the CCU and GCU.

The authors of the new codes replaced the term “brand name” with the term “commercial name” for reasons of principle. They assumed that the subject of the right to a firm can only be a legal entity, while the subjects of the right to a commercial name can be both legal entities and natural persons-entrepreneurs. However, as time shows, three articles of the Civil Code (Articles 489-491 of the Civil Code), one article of the Economic Code (Article 159 of the Civil Code) and accompanying references in some other laws and international treaties (Article 6 of the Law of Ukraine “On Protection rights to signs for goods and services”, Article 4 of the Law of Ukraine “On Protection from Unfair Competition”, Article 8 of the Paris Convention on the Protection of Industrial Property) is categorically not enough for this necessary and interesting object of intellectual property to begin to to really “work”. It is not enough for legal entities, nor for individual entrepreneurs, nor for legal scholars – theoreticians and practitioners.

 

This article brings to the attention of colleagues the coverage of problematic issues of the use of the right to a commercial name in Ukraine, a comparative analysis of the legal protection of commercial (brand) names in some countries of the near and far abroad, aspects of the international legal protection of brand names, as well as the prospects for the development of national legislation on this matter question.

 

The first and main problem of using a commercial name in Ukraine is related to the fact that neither the national legislation nor the Paris Convention for the Protection of Industrial Property of 1883, which entered into force for our country on December 25, 1991 (hereinafter – the “Paris Convention “), the definition of “commercial (brand) name” is not given. As a result, scientists and practitioners have been debating for more than a year: whether a commercial name is the official name of a legal entity or whether a commercial name is a pseudonym for entrepreneurial activity.
Proponents of the first of these positions claim that the commercial name must completely coincide with the full name of the legal entity. In turn, in the structure of the commercial name, they distinguish the so-called “corpus”, which indicates the type of enterprise, its organizational and legal form, and an auxiliary part, which indicates the proper name of the legal entity. Upon careful examination, it turns out that this point of view is borrowed from Russian scientists, who are starting from the principles of the company name, laid down in the Regulations on the company: truthfulness, novelty, distinctiveness, stability of the company (see, for example, Sergeev A.P. The right of intellectual property in the Russian Federation. – Moscow: Prospect, 2003. – P. 574).
 
Their opponents consider the commercial name as a peculiar pseudonym of a business entity. In their opinion, the commercial name serves not to individualize the enterprise, but to individualize the business, which is carried out in a certain place, using a certain integral property complex and which is characterized by a certain quality of goods/services, a culture of production/service, qualified hired personnel, etc. At the same time, a “pseudonym”, unlike the name of a legal entity, can be alienated during the sale of a complete property complex, which is used for conducting this activity. It is this possibility of alienation of the commercial name, its transfer to another business entity, that constitutes, in their opinion, the fundamental difference between the name of a legal entity and a commercial name.
The second problematic issue of this object is directly related to the first and consists in the fact that the law does not define what commercial name an individual entrepreneur can have: should it be only his own surname and first name or can the entrepreneur use it as a commercial name names, other designations, so-called “fictitious names”, for example, “Jeanette Recruitment Agency”, “La Rose Beauty Salon”, “Scat Vulcanization”, etc. The norm of Art. 159 of the Economic Code of Ukraine, which establishes that a citizen-entrepreneur has the right to declare his surname or first name as a commercial name, unfortunately, does not allow us to draw an unequivocal conclusion on this matter. Also, as well as the norm of Art. 4 of the Law of Ukraine “On Protection from Unfair Competition”, which provides for the addition of some distinctive element to one’s own name.

 

The following problem: the legislation on the names of legal entities (the Law of Ukraine “On State Registration of Legal Entities and Individual Entrepreneurs”, Requirements for writing the name of a legal entity or its separate subdivision, approved by the Order of the State Committee of Enterprise of Ukraine dated 09.06.2004 No. 65) is not aligned with the legislation about commercial names. Based on Article 27 of the Law of Ukraine “On State Registration of Legal Entities…”, there cannot be two enterprises or organizations with the same name in Ukraine, while Art. 489 of the CCU defines that persons may have the same commercial names, if this does not mislead consumers regarding the goods they produce and sell and the services they provide.

 

The list of problematic issues can be continued. Yes, the issue of maintaining a register of commercial names, the existence of which is provided for by Art. 159 of the Civil Code and Art. 489 of the CCU; it is not defined whether one person can have several commercial names, or whether this object can be provided as a commercial concession. The lack of clear definitions does not allow even to think about the possibility of inheriting the commercial name of an individual entrepreneur. Also, as a result of weak legislative regulation, cases of conflict of rights arise between owners of commercial names and owners of identical or similar word trademarks, between owners of commercial names and owners of identical or similar domain names.

 

So, there are a lot of debatable and practical issues that need to be resolved at the legislative level. But as can be seen from the above, in order to solve them, it is necessary to develop a principled position and, first of all, to decide on the essence of the commercial name: is it synonymous with the official name of the business entity or is the commercial name a business pseudonym? In this context, it seems logical to analyze the experience of regulating the rights to commercial (brand) names in other countries, as well as to familiarize yourself with the provisions of international norms. In recent years, specialists of the State Department of Intellectual Property, the Ukrainian Institute of Industrial Property, employees and graduate students of the Institute of State and Law have been studying these issues. Koretsky, other experts.

 
Here are some conclusions that can be drawn based on the results of studying this issue:

1. There are countries where the theory and practice of brand names adhere to the principle of “brand truth”. Legal entities are prohibited from acting in commercial relations under a name different from the registered name of the company (in particular, the Russian Federation, Germany, Austria).
For some other countries, the principle of “freedom of the firm” is characteristic: along with the official name of companies, the use of one or more fictitious names is allowed: “trade name” – in the USA, “business name” – in Great Britain, “nom commercial” – in France. Almost any word designation can be chosen as a brand name. Under such a condition, a business disclosure requirement may be imposed if the trade is carried out under a fictitious name. Thus, according to the UK Business Names Act 1985 (Business Names Act), every person using a business name must indicate, according to its legal status, the name of the corporation or each of the partners, or the individual name of the person ( entrepreneur), as well as the address for sending correspondence: in places where business is conducted and there are contacts with buyers and suppliers; in business correspondence; in invoices for the supply of goods or services; in invoices or receipts; in written demands for payment of monetary obligations.

 

2. Registration of brand names has legal significance only in China. In all other countries that are members of the Paris Convention, the right to a brand name arises from its use, as provided for in the Paris Convention. At the same time, in 63 of the 72 studied countries, along with trade registers of companies, registers of brand names are kept. These functions are entrusted to the bodies that carry out the registration of companies or to patent offices.

 

3. Unlike a company name, which is considered an object of intellectual property, the right to name companies is considered either as a personal non-property right (in the countries of the Romano-Germanic legal system) or as a company ownership right (in the countries of the Anglo-American legal system). The right to name the company arises upon signing the founding documents and registering the company. A company with a corresponding name is entitled to protection against the use of an identical or similar name by a third party. This is possible provided that the name is used in commercial activities.

 

4. In all countries, an individual engaged in business is the subject of the right to a corporate name (the controversy on this topic is being conducted only in Russia). Moreover, in some countries (even those that adhere to the principle of the truth of the firm, such as Germany), an individual entrepreneur may have several business names if he conducts business through several enterprises owned by him.

 

5. In the Model Law for Developing Countries on Trademarks, Trade Names and Acts of Unfair Competition, adopted in 1967 by the United International Bureau for the Protection of Intellectual Property (later reorganized into the World Intellectual Property Organization), a trade name is defined as name or designation that identifies the enterprise of a legal entity or an individual. The commentary to the Model Law states that the name of the owner, his pseudonym, some fictitious name, a description of the enterprise or any other designation may be part of the corporate name. This law allows an entrepreneur to use more than one business name, for example, the full name and its abbreviation, or a special name for a part of the enterprise.
All names in the event of their independent use must be protected by law to an equal extent. The comment also states that businesses can have identical names provided that this will not mislead the public, for example, in the case of sufficient distance from each other, when they are located in different parts of the country and each of them is known locally.
 
6. According to the Cartagena Agreement of 1993, an international regional agreement between the countries of Latin America (Bolivia, Colombia, Ecuador, Peru and Venezuela), a business name is any designation that identifies an economic activity, an enterprise or a commercial establishment. The business name may consist of the corporate designation of the enterprise (establishment), its business name, or another designation entered in the register of merchants or trading enterprises. It is determined that an enterprise (establishment) can have more than one brand name. The exclusive right to a brand name is acquired from the moment of first use and ends when such use ceases or when the activity of the enterprise (institution) ceases. In accordance with the internal legislation of the countries participating in the agreement, the owner of the brand name can register (deposit) it in the patent office. Such registration (deposit) is declaratory in nature.

 

The given comparative analysis once again confirms the fact that the legislation of Ukraine regarding the protection of brand names is regulated very weakly and needs fundamental changes. At the same time, you can go in two ways: 1) determine that the commercial name = the name of the legal entity, that is, choose the path followed by the countries of continental Europe, which adhere to the principle of “the truth of the firm”; 2) determine that the name of a legal entity is a personal non-property right, and a commercial name is the name under which entrepreneurial activity is carried out, that is, the property right of intellectual property; countries that adhere to the principle of “freedom of the firm” followed this path. In a similar way, the requirements for the commercial name of an individual entrepreneur should be defined – to establish the entrepreneur’s obligation to use only his first and last name or to provide for the possibility of choosing other verbal designations as commercial names.

 

Of course, the second way seems more complicated, but, in the deep conviction of the author of this article, it will fully correspond to reality and protect the rights of business entities as much as possible. “Hotel “Continental”, “Restaurant “Esterlita”, “Recruiting company “Department of Resources”, “Web design studio “Domino”, “Travel agency “Viter Mandriv” – these and thousands of other bright and interesting names do not coincide with the official name of a registered legal entity or generally carry out their activities through individual entrepreneurs. However, they are known on the market, have an established clientele and business reputation, that is, it is these names, and not the surnames of entrepreneurs at all, that are the objects of intellectual property rights. In addition, one should not forget that even within one administrative-territorial unit there are many namesakes, not to mention the whole country, therefore the commercial name “SPD Ivanov” not only does not individualize the entrepreneur, but also violates the requirement of the law on the inadmissibility of deception consumers

 

Implementation of the model based on the principle of “freedom of the firm”, according to the author of the article, is impossible without maintaining a register of commercial names, which, in order to avoid violation of Art. 8 of the Paris Convention, should not have a binding, law-making character. Such registration can be conventionally compared to the registration of rights to copyright objects: the author’s right to the work arises as a result of its creation, the performance of any special formalities is not required, however, to confirm authorship, state registration can be carried out at any time. This is convenient, because a document (certificate) appears that simplifies the procedure for disposing of the author’s property rights, registration of inheritance and eases the burden of proving authorship rights in the event of a legal dispute.
 
The maintenance of the register of commercial names can be entrusted to the bodies that carry out state registration of business entities, but it seems more logical that the patent office should deal with it. To indicate the subject of activity, you can use the existing classifiers – KVED or the International Classification of Goods and Services, which is used in the registration of trademarks. The fee for entry into the register should depend on the requirements of the business entity and the type of its activity: the use of a commercial name within one region (local use) should cost less than the use of a commercial name throughout Ukraine.

 

Despite all the initial complexity, such a register will have a large number of positive points:

a) will avoid the appearance in the same administrative territory of business entities with the same commercial names, capable of misleading consumers;

b) will facilitate the choice of names and commercial names for new business entities (by the way, more than 60 countries have registries of business names in online mode with paid access);

c) will help to check the novelty of trademarks applied for registration, which, in accordance with Art. 6 of the Law of Ukraine “On Marks for Goods and Services”, must not be identical or similar to already existing commercial names of other persons for related goods and services;

d) will make it easier to prove the fact of using a commercial name for individual entrepreneurs, if this name does not coincide with their own name, and for legal entities whose commercial name does not coincide with the officially registered name;

e) will make it easier to prove priority in the use of a commercial name;

e) will allow the inheritance of this object in the event of the death of a natural person-entrepreneur (if the legislator decides that the brand name of the product can also be a fictitious name) and record the fact of the alienation of the commercial name or its provision in a commercial concession (if the legislator allows this object in a commercial concession, which is possible only in the concept of “freedom of the firm”).

 

Thus, maintaining a register will fill this rather weak object with life and allow it to take a worthy place alongside another means of individualizing business – a trademark. This is very important, taking into account the course of Ukraine’s accession to the European Union: in European countries, brand names are given no less attention than trademarks, and in Scandinavian countries (Denmark, Finland, Norway, Sweden) brand names have even stronger protection than trademarks .
 
And while there is no register, and only three articles of the Central Committee and one article of the Civil Code are in force, it is possible to offer legal entities to indicate their commercial name (full/abbreviated) in the statute, immediately after indicating the full and abbreviated official name, and natural persons-entrepreneurs – necessarily indicate the name of your object in the registration card of the object of trade and the sphere of services, which is filled out in the executive bodies of local self-government in order to obtain permission for their placement, and also try to convince the employees of the tax inspectorate to add the commercial name (restaurant, shop, agency, salon, Internet cafe, etc.) in the income and expenditure accounting book, in the certificate of payment of the single tax, in the trade patent – so that there are official documents that confirm the use of the commercial name. Or register a commercial name as a trademark, in which the author of the article will be happy to help.