How to protect your trademark from competitors: legal advice

Protecting your own trademark is undoubtedly a key moment for any business that seeks to be recognisable and unique in the market. Registration of a mark for goods and services in UKRNOIVI is undoubtedly an important and necessary step, a kind of foundation for legal protection of your brand. But, you know, it’s only the beginning of the story. In other words, the mere receipt of a certificate of registration of trademark does not yet guarantee 100% protection from all sorts of attempts of unfair competition. Imagine, competitors – people inventive, there is not me, and can resort to various tricks, trying to parasite on your reputation, using confusingly similar designations or even imitating your products or services. Therefore, dear entrepreneurs, vigilance and timely legally justified actions are the key to real protection of your trademark. Today we are going to talk about those very “additional measures” that will help you to preserve the individuality of your brand and prevent unfair competition.

I. Preventive defences

Protecting your trademark from competitor encroachment is not a matter of passively waiting. Rather, it is a set of active actions aimed at strengthening your legal position and timely detection of potential threats. That is why this section of our article is dedicated to preventive defence measures. These steps, taken in advance and systematically, will help minimise the risks of infringement of your rights and make life much more difficult for unscrupulous competitors. In other words, it is better to prevent than to deal with the consequences. Such preventive measures include not only the correct use of TMbut also constant market monitoring and a reasonable expansion of the scope of TM protection. Let’s look at each of these aspects in more detail.

Subsection 1.1: Correct use of the TM

So, you have successfully registered your trademark in UKRNOIS. But now the question arises: how do you use it correctly to maximise protection? In fact, using a TMis more than just putting a logo on your products or website. It is an entire system that helps consumers identify your products or services and differentiate them from your competitors.

First of all, remember the golden rule: use your trademark exactly as it was registered. No unauthorised changes to fonts, colours, adding new elements without making the appropriate changes to the certificate are allowed! This may weaken your legal defence, let me think….

Next is the important labelling. You’ve seen those little ® and ™ symbols, right? Well, their use is very important. The “®” (Registered) symbol can only be used after the trademark has been officially registered with the UKRNOIVI and indicates that your mark is legally protected. Its placement next to your trademark is a powerful signal to competitors that you are serious about protecting your intellectual property. As for the “™” symbol (Trademark), it can be used even before registration is complete or to identify unregistered marks that you use to personalise your goods or services. While it does not give the same level of legal protection as “®”, it does demonstrate your right to the designation.

Finally, use your TM consistently and constantly. This means that your brand should be recognisable in all communication channels with your customers:

• On product packaging.
• On the website (on all its key pages!).
• In promotional materials (print, online, video – everywhere).
• In social networks (in profile design, in publications).
• Even in business correspondence (e.g., in email signatures).

The more often and consistently consumers see your brand unchanged, the stronger its association with your business will be. This, in turn, will make it harder for unscrupulous competitors who will try to use similar designations. Remember: the correct use of TMis not a formality, but an effective tool for preventive protection of your brand.

Subsection 1.2: Market monitoring

Even the most careful adherence to trademark use rules cannot fully protect you from offencesfrom unscrupulous competitors. Therefore, no matter how you look at it, regular market monitoring is absolutely essential. It’s like a regular physical for your brand – we identify problems in time.

Monitoring Allows you to timely identify facts of illegal use of your trademark or similar marks. The sooner you identify an infringement, the sooner you can take action to stop it and minimise the damage. Think about it, it is easier to put out a spark than to fight the flames later…..

So how to conduct this very monitoring? There are a few basic directions, so to speak:

1. Internet search:
   • Regularly check search engines for queries containing your brand or keywords related to your business. Here it is important not to miss a single letter or spelling variant!
   • Use specialised services to monitor brand mentions on the Internet. For example: Google Alerts, Brand24, Mention, and many others.
   • Check online shops and, of course, marketplaces for products that may be infringing on your rights.
2. Track competitors’ advertising:
   • Analyse competitors’ advertising campaigns in different channels: TV, radio, outdoor advertising, internet. All possible variants, in short.
   • Pay attention to the use of signs, slogans, packaging design similar to your brand. Pay attention to the smallest details!
3. Social Media Monitoring:
   • Track mentions of your brand and related keywords on social media (Facebook, Instagram, Twitter, TikTok – wherever products and services are being promoted these days!).
   • Check out groups and communities dedicated to your industry. Look for any discussions related to your brand.
   • Use specialised social media monitoring tools. There are quite a few: Hootsuite, Sprout Social, and so on.
4. Attend trade shows and other industry events:
   • Don’t be lazy to attend trade shows, conferences, fairs. In short, any events where your competitors may be represented.
   • Look carefully at competitors’ stands and products. Check to see if they are using similar labelling to your brand.

Market monitoring is not a one-time event, but an ongoing process. Assign responsibility for monitoring to a specific employee, or turn to professionals who provide such services (e.g. us at Polikarpov Law Firm). Remember: timely identification of infringements, without exaggeration, the key to effective protection of your trademark rights.

Subsection 1.3: Expanding the scope of TM protection

Sometimes, to enhance protection of trademark, only proper use and monitoring is not enough. It happens that a business grows, new products or services are introduced, or there is a need to enter new markets. In such cases, you know, it is worth thinking about expanding the scope of TM protection.

What does that mean in practice? There are two main ways:

1. Registering the TM in additional classes of ICTU:
   • Let’s say you initially registered a trademark for clothing (Class 25 of the ILCU). But over time you decide to expand your product range and start producing, say, shoes (class 25) and handbags (class 18). In this case, you should apply for registration of your trademark in these additional Classes of ICTU as well. This will give you legal protection for new types of goods as well.
   • It is important to realise that trademark registration is only valid for those goods and services specified in the certificate. If you do not expand the scope of protection, competitors can use your trademark for other goods or services with impunity.
2. Territorial Expansion:
   • If you plan to enter foreign markets, you need to take care of international TM registration. Registration in UKRNOIVI provides protection only on the territory of Ukraine. Different procedures exist to protect trademarks in other countries:

International registration under the Madrid system: Allows you to obtain protection in several countries by filing a single international application.

Registration in individual countries: If you are interested in a limited number of countries that are not members of the Madrid system, you can apply directly to the national offices of those countries.

EU trade mark registration.

Expansion of TM protection sphere is a strategic decision, which should be taken taking into account the development plans of your business. Careful planning and timely adoption of necessary measures will allow you to strengthen your position in the market and protect your brand from unfair competition not only in Ukraine, but also abroad.

II. What to do if an infringement is detected

Despite all preventive measures, unfortunately, it sometimes happens that you do encounter infringement of your trademark rights. Someone is using a similar designation, imitating your products, misleading consumers… The situation is, to put it mildly, unpleasant. But! The main thing is not to panic and to act clearly and consistently. This section is devoted precisely to what to do if you discover a violation. We will consider the algorithm of actions: from fixing the violation and collecting evidence to possible options for resolving the dispute – pre-trial settlement, appealing to the Antimonopoly Committee of Ukraine (AMCU)or going to the court. Remember: the faster and more professionally you react, the more chances you have of successfully defending your rights.

Subsection 2.1: Fixing the infringement

So, you suspect that someone is infringing on your trademark rights. The first and most important thing to do is to carefully record the fact of infringement. In other words, gather as much evidence is possible to support your suspicions. Why is this so important? Because without proper, admissible and reliable evidence any further action (claims, appeal to the court) will be, to put it mildly, futile.

So what can serve as evidence Here are the main options:

1. Screenshots of websites and social media pages:
   • If the infringement occurs online, take screenshots of pages where your trademark or similar designation is used.
   • Be sure to record the date and time the screenshot was taken, as well as the URL of the page.
   • Keep the source code of the page just in case.
2. Photos of goods with misuse of TM:
   • If you find goods on which your trademark is being illegally used, take high-quality photographs of the goods.
   • Photograph the goods from different angles so that you can clearly see the trademark as well as other elements that may indicate infringement (e.g., similar packaging design).
   • Document the location where these products are sold.
3. Samples of counterfeit goods:
   • If possible, purchase a sample of the infringing product. This will be the strongest evidence.
   • Keep the receipt or other proof of purchase.
4. Eyewitness testimony:
   • If there are witnesses who can attest to the violation (e.g., customers who were misled), write down their contact information and, if possible, take written statements.
5. Notarisation of evidence:
   • If there are doubts that some information (e.g. a web page) may disappear, it is advisable to notarise the evidence with a notary.
   • The notary draws up an inspection report in which the existence of a breach is recorded.

Remember that the evidence must be:

• Proper: That is, directly related to the fact of the violation.
• Admissible: Obtained by lawful means.
• Credible: No doubt about its veracity.

Careful fixing of the violation is the foundation for further defence of your rights. Do not neglect this step!

Subsection 2.2: Pre-trial Dispute Resolution

After thoroughly documenting the infringement of your trademark and gathering the necessary evidence, it’s time to choose your next strategy. And, you know, you don’t always have to go to court right away. It’s often more effective to pre-trial dispute resolution a more peaceful route.

What is it? In simple words, it is an attempt to resolve the conflict by negotiating with the offender without involving the judiciary. This approach, as practice shows, has its advantages. Firstly, it saves time and money. The court process, unfortunately, can stretch for years and require considerable financial outlays. Pre-trial settlement is usually much faster and, importantly, cheaper. Secondly, it is an opportunity to preserve business relations. Especially if the offender is your former partner or, for example, a potential counterparty. Trial settlement in such a case gives you a chance to preserve your partnership. And finally, thirdly, confidentiality. Court sessions are mostly public. And pre-trial settlement allows information about the dispute to be kept secret.

Let’s take a closer look at how trial settlement occurs.

First, a written claim is sent to the offending party. This is, without exaggeration, the most important step. The claim is an official document. In it you clearly state the essence of the violation, your requirements and propose ways to resolve the conflict.

In the claim it is necessary to specify your data (name, address, contacts), data of the infringer (if they are known to you), description of the infringement itself (when, where and how your rights to the trademark were violated). Be sure to include links to evidence confirming the infringement! Make your demands clear: stop the infringement, seize the goods with illegal use of the trademark, pay damages. And, of course, specify the deadline for responding to the claim. As a rule, it is 10-30 days. The claim should be sent to the infringer by registered mail with return receipt requested, or a courier service should be used to provide proof of dispatch.

Further, after receiving the claim, the infringer may wish to have negotiation. During negotiation, remain calm. Be constructive and, importantly, willing to compromise. The goal of negotiation is to find a mutually acceptable solution, agreeing to end the breach and pay damages.

If negotiations are successful, the parties enter into a written agreement. It records all the agreements reached. The agreement clearly spells out the obligations of the infringer: to stop using the trademark, to withdraw the goods, to pay compensation. And, of course, the deadlines for fulfilling these obligations.

Thus, pre-trial settlement is quite an effective tool for resolving disputes related to infringement of rights to trademarks. However, it is not a panacea. If the offender ignores your demands, does not contact you or refuses to compromise, unfortunately you will have to consider other defence options, which we will discuss next.

Subsection 2.3: Appeal to the Antimonopoly Committee of Ukraine (AMCU)

There are situations when infringement of your trademarkrights is simultaneously an act of unfair competition. What this means. It is when a competitor’s actions are aimed not only at illegally using your designation, but also at gaining an undue competitive advantage. For example, when a competitor deliberately imitates your trademarkto mislead consumers and “lure” them to you.

In such cases, in addition to pre-trial settlement or going to court, you have the right to appeal to the Antimonopoly Committee of Ukraine (AMCU). The AMCUis a state body that, among other things, is engaged in protecting economic competition and fighting unfair competition.

What actions AMCU may consider as unfair competition in the context of infringement of trade mark rights?

• Using a designation similar to your trademark that could lead to confusion with your business.
• Copying the appearance of your products (packaging, labels, etc.).
• Spreading false information about your company or your products that discredits your brand.

How does one go about contacting the AMCA?

You need to file an application for violation of the legislation on the protection of economic competition. In the application, you must describe the essence of the violation in detail, provide evidence of the competitor’s unfair practices (the same evidence that you collected to fix the violation) and clearly state your requirements.

Once the AMCU receives the claim, it will investigate. If the fact of unfair competition is confirmed, AMCUmay:

• Recognise the competitor’s actions as a violation of the law.
• To impose a fine (sometimes quite significant!) on the offender.
• Oblige the infringer to stop unfair actions and eliminate their consequences.

Appealing to AMCU can be an effective defence, especially if the breach is systemic and causes damage not only to you but also to other market participants. However, it is worth remembering that the AMCU review of a case may take some time, and the AMCU decision may be subject to judicial appeal.

Subsection 2.4: Appeal to court

If pre-trial settlement, unfortunately, did not bring the desired results, and appealing to the AMCU (if it was expedient at all) also had no effect, or the situation initially looks extremely difficult – the last but the most decisive step remains. This is an appeal to the court with claim for protection of rights to your trademark.

Court defence is certainly a longer and usually more expensive route than a pre-trial settlement. But in difficult cases, when the offender categorically refuses to admit his guilt, or when significant damages are involved, it is the court that may be the only way to effectively protect your interests and restore justice.

Let’s take a look at how judicial defence of trademark rights actually takes place.

Everything starts with the preparation and filing of a claim. This is, without exaggeration, the key stage. The statement of claim is an official procedural document. In it you state the essence of the dispute, your claims against the defendant, i.e. the offender, and justify them, relying on the rules of law and available evidence. The statement of claim must be drafted legally competent, clear, concise. Any errors or inaccuracies are inadmissible here, they can lead to delaying the case or even to the refusal to satisfy the claim. To the claim, of course, all collected evidence of infringement of rights to the trademark is attached.

Next is participation in court hearings. After the court has opened the proceedings, court sessions are scheduled. At these sessions:

• case materials are considered;
• the explanations of the parties (yours and the defendant’s) are heard;
• the evidence is examined;
• if necessary, witnesses are questioned.

It is important to take an active part in the sessions, to provide the court the necessary explanations, documents, to justify your legal position.

The next stage is to receive the court’s decision. After hearing the merits of the case, the court decides. In this judgement, the court either grants your claim (in full or perhaps in part) or denies it.

The court’s decision, if in your favour, may contain various requirements, such as:

• An obligation on the infringer to immediately stop using the trademark.
• Withdrawal from circulation and, as a rule, destruction of the counterfeit goods.
• Compensation for the losses you have incurred.
• Recovery of certain compensation from the offender.
• Publication of the court’s decision to restore your business reputation if it has been damaged.

And finally, the execution of the court decision. Once a court decision has entered into legal force, it is enforceable. If the offender does not fulfil the decision voluntarily, it can be enforced – with the help of the state enforcement service.

Thus, appealing to a courtis a serious step. It requires careful preparation and, very preferably, professional legal assistance, for example, from the lawyers of Polikarpov Law Firm.

III. Legal assistance

Protection of rights to trademark is, as you have probably already realised, a rather complex and multifaceted process. It requires not only an in-depth knowledge of the law, but also considerable practical experience. It requires an understanding of the nuances of law enforcement practice, the ability to gather and evaluate evidence without error, to negotiate masterfully, and to effectively represent interests in court and other state bodies. Therefore, frankly speaking, on your own, without specialised training, it can be extremely difficult and sometimes impossible to protect your rights.

That is why we strongly recommend seeking legal assistance from qualified professionals – patent attorneys or advocates who specialise in intellectual property issues. What’s the difference?

• A patent attorney is a specialist who has a special status confirmed by the state. He has the right to represent the interests of persons in cases related to the protection of intellectual property rights (including, of course, for trademarks).
• A lawyer is a lawyer who has the right to practise law. That is, to represent the interests of persons in courts and other state bodies, to provide legal assistance.

What exactly can a lawyer (whether a patent attorney or advocate) do for you in the area of trademark protection?

• Professional assessment of the situation: An experienced lawyer will carefully analyse your situation, objectively assess the prospects of pre-trial settlement judicial defence. He will help you determine the optimal strategy of action that is right for you.
• Collection and preparation of evidence: The lawyer will undertake the difficult task of correctly collecting, drawing up and properly recording evidence of the violation of your rights.
• Drafting of documents: The lawyer will professionally prepare all necessary documents: claims, claims, various agreements, applications to AMC, etc.
• Representation: The lawyer will represent your interests in negotiations with the infringer, in court, in AMCU, in UKRNOIVI, in the executive service authorities – wherever it is necessary.
• Counselling:The lawyer will provide you with comprehensive advice on all matters that concern the protection of your trademark.

And here, of course, it is worth mentioning Polikarpov Law Firm. Our company has been specialising in intellectual property protection for many years. We have a team of experienced patent attorneys and advocates who know their business perfectly and are ready to provide you with a full range of services – from registration of trademark to defence of your rights in court. We pride ourselves on our personalised approach to each client and our high percentage of successfully resolved cases.

Seeking legal assistance is not an unnecessary expense, but a reasonable necessity if you really want to effectively protect your brand. It is an investment that usually pays off, and Polikarpov Law Firm is ready to help you do just that.

IV. Combating counterfeit and “grey” imports

A separate and very painful topic is the fight against counterfeit and “grey” imports*. Counterfeiting Is, in simple words, counterfeiting. Goods on which your trademark is illegally used without your authorisation. “Grey” imports are the importation of original goods into the country, but without the official permission of the trademark owner. Both of these phenomena cause significant damage to business: loss of profits, undermining reputation, and decreasing consumer confidence.

One of the effective tools to combat these problems is to enter information about your trademark into the Customs Register Of Intellectual Property Rights. What does it do and how does it work? Let’s get to the bottom of it.

Subsection 4.1: Customs Register

The Customs Register of intellectual property rights is, in fact, a special database maintained by the State Customs Service of Ukraine. Entering your trademark into this register allows customs authorities to promptly detect and suppress the movement across the customs border of Ukraine of goods that infringe your intellectual property rights.

Why do you need Customs Register?

Imagine a situation: someone tries to import into Ukraine a batch of goods labelled with your trade mark but without your permission. If your trademark is entered in the Customs Register, customs officers will see the appropriate warning and can:

• Suspend customs clearance of the goods.
• Notify you (or your representative) of the discovery of a possible violation.
• Provide you with an opportunity to inspect the goods and take action to protect your rights (e.g., take legal action to enjoin the importation of the goods).

How to enter data about the trade into the Customs Register?

To do this, you need to submit an application to the State Customs Service of Ukraine. The application shall be accompanied by:

• A copy of the certificate of registration of trade mark in Ukraine.
• Documents confirming your authorisation (if the application is submitted by a representative).
• Description of the goods for which the trade is registered, with UKTVED codes.
• Information on the manufacturer of the original goods (if known).
• Image of trademark.
• Information on authorised importers/exporters (if any).
• Document on payment of the state duty.

The State Customs Service examines the application and, if all requirements are met, enters information about the trademark into the Customs Register. Registration in the Customs Register is valid for one year, renewable.

Registration of trade mark in the Customs Register As an important step to protect your business from counterfeiting and “grey” imports. This allows you to “intercept” violations at the border and prevent counterfeit or illegally imported goods from entering the domestic market.

Conclusions

So, let’s summarise our conversation about protecting the trademark from unfair competitors. We found that registering a trademark in UKRNOIVI is only the first, albeit necessary, step. Real protection is a complex, continuous process, which requires both proactive, preventive actions and prompt response to identified offences.

It is not enough to simply obtain a certificate and quietly observe the market. It is necessary to properly use the TM, constantly monitor the marketand, if necessary, expand the scope of TM protection. If an offence does occur, it is important to immediately report it, collect evidence and choose the right strategy: court settlement, referral to AMC, or judicial defence. One should not ignore the possibility of entering the trade into the Customs Register This is an effective tool in the fight against counterfeiting and “grey” imports.

Each of these stages has its own peculiarities, its own pitfalls. And, let’s be honest, it can be extremely difficult to understand all the intricacies of legislation and law enforcement practice on your own. Therefore, once again we emphasise the importance of seeking qualified legal assistance.

Protecting your trademark is, in fact, an investment. An investment in your business, in your reputation, in your future. Do not neglect this investment! And remember: Polikarpov Law Firm specialists are always ready to provide you with professional support at all stages of this difficult but important process.

And if you are just at the beginning of your journey and are thinking about the need to register trademark, we recommend you to read our article: “Registering a trade mark: a necessity for your business“. In it you will find answers to many questions and be convinced of the importance of this step.