How to patent a brand in Ukraine: expert advice

Introduction

Brand protection is the foundation of a successful business. In today’s competitive environment, a strong and recognisable brand is one of a company’s most important assets. That is why protecting a brand by properly registering it is a critical step for any entrepreneur. Brand patenting in Ukraine, although the term is not quite accurate, is a process that requires understanding certain legal nuances and following the established procedure. In this article, experts from Polikarpov Law Firm, a law firm with many years of experience in intellectual property, share practical advice and valuable recommendations that will help you successfully register and protect your brand in Ukraine.

Section 1: Understanding the terminology: patent vs. trade mark

Before delving into the registration process, it is important to understand key terminology. There is often confusion about the terms patent and trade mark, especially when it comes to brand protection. Therefore, let’s take a closer look at these terms.

Subsection 1.1: What is a patent?

A patent is a legal document certifying the owner’s exclusive right to use, produce, sell and import a patented invention for a certain period of time. It is issued by a state authority, in Ukraine it is UKRNOIVI (Ukrainian Institute of Intellectual Property), after passing the procedure of patent application examination. Patenting is an important mechanism of intellectual property protection, stimulating innovation and scientific and technological progress.

A patent gives the inventor a monopoly on the commercial use of his invention, preventing unauthorised copying, use and sale by competitors. This allows the inventor to recoup the investment made in research and development and make a profit, which motivates further innovation. Obtaining a patent is a complex process that requires careful preparation of documentation and compliance with all legal requirements.

It is important to realise that a patent does not protect the brand itself, but the technical solution underlying it. One often hears the phrase “patenting a brand“, but from a legal point of view this is incorrect. Brand is a much broader concept that includes not only the name or logo, but also the reputation, associations and emotions it evokes in consumers. Brand protection is achieved by registering a trade mark.

Consider an example. Imagine a company that has developed an innovative formula to produce an environmentally friendly detergent. The formula itself may be protected by patent. However, the name of the detergent, its logo and packaging would be protected by a trade mark. Thus, patent and trade mark are different tools of intellectual property protection, applied to different objects. Apatent protects technology, while a trade mark protects a designation by which goods or services are recognised. Therefore, when it comes to brand protection, it is the registration of a trade mark, not patenting, that is meant .

Subsection 1.2: What is a trade mark?

A trade mark is any designation by which consumers can identify and distinguish the goods or services of one producer from similar goods or services of other producers. It is a key element of brand protection and provides its owner with the exclusive right to use the registered designation to mark its goods or services. A trade mark can be represented in various forms:

• Word designations: these can be words, word combinations, names, surnames, abbreviations, slogans used to designate goods or services. For example, “Coca-Cola”, “Nike”, “Just Do It”.
• Graphic signs: these are logos, emblems, symbols, vignettes, labels, drawings that visually identify goods or services. For example, Apple’s “apple”, Nike’s “tick”.
• Volumetric designations: a three-dimensional shape of a product or its packaging that distinguishes it from other goods. For example, a bottle of Coca-Cola.
• Sound designations: these are melodies, jingles, and beeps associated with a particular brand. For example, Intel’s screensaver melody.
• Combined marks: this is a combination of different types of marks, e.g., verbal and graphic.

The trade mark is a valuable intangible asset of the company. Its registration with UKRNOIVI (Ukrainian Institute of Intellectual Property) grants the owner of trade mark the exclusive right to use it in Ukraine for 10 years with the possibility of further renewal for each subsequent 10 years. This means that no one else can use an identical or confusingly similar designation for the same or similar goods or services. Registration of trade mark provides legal protection of brand from unfair competition, increases its value and contributes to the formation of consumer confidence. In addition, atrade mark registered with may be subject to licence agreements, which allows the owner to receive income from its use by others.

Section 2: Expert Tips on Registering a Trade Mark

Registering a trade mark is an important step in protecting your brand. Polikarpov Law Firm experts have prepared a number of recommendations that will help you successfully complete this process and avoid potential problems. Following these tips will significantly increase your chances of obtaining protection of your trade mark and ensure reliable brand protectionin the future.

Subsection 2.1: Conducting a thorough search

The experts at Polikarpov Law Firm unanimously recommend conducting a thorough similarity search before applying for trade markregistration . This step is fundamental for successful brand protection and avoiding unpleasant surprises in the future. The search allows you to identify identical or confusingly similar trade marks that are already registered or pending with UKRNOIVI.

Why conduct a search?

Conducting a preliminary search has a number of advantages:

• Minimising the risk of refusal of registration: Identifying similar trade marks at an early stage can avoid refusal of your trade mark registration and save time and money. An application for trade mark registration is considered by UKRNOIVI for a long time and refusal at late stages can be very costly.
• Avoiding conflicts with owners of already registered trade marks: If your trade mark is similar to an already registered trade mark, you risk claims from its owner, which can lead to litigation, compensation and forced brand changes.
• Strengthening the legal position of your trade mark: A thorough search allows you to assess the “purity” of your trade mark and its ability to obtain a strong defence. The fewer similar trade marks, the stronger your legal position and the less risk of conflict.

Expert Opinion:

“A pre-launch trade mark search is an investment in the future of your brand,” commented leading lawyer at Polikarpov Law Firm. “It avoids many problems at the initial stage and ensures the successful development of brand in the future.” Ignoring this stage can lead to serious financial and reputational losses for a company.

“It is not worth skimping on the preliminary search,” adds the firm’s partner. “Even seemingly minor differences in spelling or image may be deemed insufficient for registration if there is a risk of confusion with existing trade marks. A professional search can help identify such nuances and avoid refusal.”

Subsection 2.2: Choosing the right ICTU classes

The correct selection of the ICDS (International Classification of Goods and Services) classes is a critical step when registering a trade mark. TheICDS contains 45 classes that cover all possible goods and services. The owner of trade mark receives exclusive rights to use it only within the specified classes. Experts recommend choosing classes carefully to ensure maximum brand protection.

Why it is important.

• Optimal protection: Choosing the right ICTU classes ensures that your trade mark is protected for all the goods and services you offer now or plan to offer in the future.
• Conflict avoidance: Registering your trade mark in the wrong classes can lead to conflicts with other trade mark owners and limit your ability to expand your business.
• Efficient use of resources: Choosing too broad a list of classes can lead to unnecessary costs for registration and further maintenance of the trade mark.

Experts’ comments:

“The choice of ICTC classes is not just a formality, but a strategic decision,” notes a partner at Polikarpov Law Firm. “It is necessary to take into account not only the company’s current activities, but also its plans for the future. Too narrow a choice of classes can limit your options, and too broad can lead to unnecessary costs.”

One of our experts adds: “We recommend contacting an intellectual property specialist for advice on the choice of ICCT classes. This will help to avoid mistakes and ensure the most effective brand protection.”

Section 3: Benefits of protecting a brand with a trade mark

Registering a trade mark is not just a bureaucratic procedure, but a strategic step that provides a company with a number of significant advantages. Protected brand becomes a valuable asset that promotes business development and increases its competitiveness. Let’s take a closer look at what exactly are the benefits of registering a trade mark.

Subsection 3.1: Exclusive right of use

Registration of a trade mark gives its owner the exclusive right to use this designation for the corresponding goods and services within the specified classes of the ICTU. This means that no one else can use the identical or confusingly similar trade mark without your permission. The exclusive right allows you to control the use of your brand in the marketplace and prevent counterfeits and counterfeit products. This creates a competitive advantage and protects you from unfair competition. You can use your trademark yourself or grant licences to other companies to use it and receive remuneration for doing so.

Having an exclusive right allows you to:

• Prohibit competitors from using your trade mark: You can take legal action to stop the infringement of your rights and recover compensation for damages.
• Control the quality of goods and services sold under your trade mark: This helps to maintain brand reputation and consumer confidence.
• Licence your trade mark to other companies: You may grant other companies the right to use your trade mark, subject to royalty payments.
• Use your trade mark as collateral: A registered trade mark is a valuable asset that can be used to obtain credit.

Thus, exclusive right of use is one of the key benefits of trademark registration and provides strong brand protection in the market.

Subsection 3.2: Protection against competition

A registered trade mark provides effective protection against competition by preventing unfair practices by competitors who may seek to take advantage of your brand‘ s reputation . Competition protection is realised through the exclusive right of thetrade mark owner to prohibit others from using identical or similar signs for similar goods or services.

How does it work?

• Preventing the use of similar signs: Registering a trade mark creates a legal barrier to competitors who may try to use similar names, logos or other elements of your brand. This will help avoid confusion among consumers and keep you unique in the marketplace.
• Protection against counterfeit and counterfeit products: A trade mark helps fight counterfeit and counterfeit products that can damage your brand ‘ s reputation and cause financial losses. You can go to court or law enforcement agencies to stop the production and sale of counterfeits.
• Market share preservation: Competition protection helps you maintain your market share and prevent losing it to unscrupulous competitors.
• Building a sustainable brand: A protected brand is perceived by consumers as more trustworthy and credible, which increases its value and competitiveness.

By trademarking, you are investing in the long-term success of your business and creating a solid foundation for its sustainable development. This is especially important in a highly competitive environment where intellectual property protection is a key success factor.

Subsection 3.3: Enhancing brand value

A registered trade mark is not just a legal document, but a powerful asset that can significantly increase brand value. It is a guarantee of exclusivity and quality for consumers, which positively affects the perception of brand and its market value.

How does registering a trade mark increase brand value?

• Building trust and consumer loyalty: A registered trade mark shows that a company is serious and responsible about its own products or services. This builds trust and loyalty among consumers who are willing to pay more for the goods or services of a well-known and trusted brand.
• Franchising and licensing opportunities: A registered trademark can be franchised or licensed, allowing for additional profits from its use by other companies.
• Attracting investment: Investors are more likely to invest in companies with protected assets, including registered trade marks. Having a registered trade mark increases a company’s investment attractiveness.
• Competitive advantage: A protected brand gives a company a significant competitive advantage, allowing it to stand out from competitors and attract more customers.
• Creating a valuable int angible asset: A trade mark is a valuable intangible asset that appears on a company’s balance sheet and adds to its overall value.

Thus, registering a trade mark is a strategic decision that not only protects the brand, but also contributes to its development and value growth. It is an investment in the future of your business that will more than pay off.

Conclusion

Brandprotection is an essential component of a successful business. Registration of trade mark is the most effective way to protect your brand from unfair competition and counterfeiting, as well as to increase its value. The experts at Polikarpov Law Firm recommend that you approach the registration process carefully, conduct a preliminary similarity search, choose the right ICTU classes and contact intellectual property specialists for qualified assistance. This will help avoid mistakes and ensure reliable brand protection for years to come.

For more detailed information, please read our articles: “Registering a trade mark in Ukraine: how to avoid mistakes” and “To patent a brand yourself or to turn to specialists?”.