How to register a software trademark on your own?

Registering a trademark for software is an important step to protect your brand. And the good news is that you can do it yourself, without the need for lawyers or patent attorneys. But in other words, be prepared that this process will require careful preparation, attention to detail and some time.

This article is your step-by-step instruction on how to independently register a TM for software in Ukraine. We will guide you through all the stages, from choosing a designation to obtaining a certificate, there no less.

Of course, independent registration is associated with certain risks. You may make a mistake in the application, miss an important deadline or fail to take into account some nuances of the legislation. But do not be frightened! We will try to describe each step as detailed and, conventionally speaking, understandable as possible, so that you can avoid the most common mistakes. Let’s go!

I. Preparatory stage

Before diving into the paperwork, it is necessary, in other words, to prepare thoroughly. This stage is the foundation of the whole trade mark registration procedure, and its success will determine whether you get protection for your brand. Here we will define the designation, check it for uniqueness and, therewith, select the correct ICTU classes.

Subsection 1.1: Choosing a designation

The first step towards registering a trademark for software is to choose the designation you will register. It can be the name of your programme, a logo, a slogan or even a unique sound signal. It is important that this designation is, in other words, original and complies with legal requirements.

What does “original designation” mean?

It means that your designation must not be:

• Identical ( fully identical) to already registered trade marks or applications filed for registration for similar goods/services.
• Confusingly similar to other TMs. That is, it should not be so similar to another TM that the consumer could confuse them.
• Descriptive, that is, simply describing the kind, quality, features or purpose of your software. For example, “Photo Editor” for photo editing software.
• Commonly used. Commonly accepted names for certain types of goods or services.
• Contrary to the public interest, principles of humanity and morality.

Recommendations for choosing a designation:

1. Fancy or Suggestive Names: The best option for registration is fictional words or words that hint at the functionality of the app but do not describe it directly.
2. Unique logo: If you register a logo, make sure it is an original graphic.
3. Original slogan: If you register a slogan, it should not just be a description of the programme’s functions.

Read more about what can be registered as a TM for software in our article, “What can be registered as a trademark for software?“

Choosing the right designation, in other words, is the key to the successful registration of your trade mark. Therefore, take this stage with all seriousness, there no less.

Subsection 1.2: Preliminary Search

Once you have decided on a designation for your trade mark, do not rush to file an application. First – a thorough preliminary search for identity and similarity.

Why is this search necessary?

It’s simple. If you apply for registration of a designation that is already occupied by someone else (i.e. identical or confusingly similar to an already registered TM for similar goods/services), UKRNOIVI will refuse you. And this is a lost effort and money.

The search is conducted in several databases:

1. Database of Ukrainian Registered Marks for Goods and Services (UKRNOIVI): Look for it on the official UKRNOIVI website. There is a section dedicated to marks for goods and services, and there is a subsection with registered marks.
   The UKRNOIVI database can be searched in different ways. Try to enter the name of your designation – both in words and, if available, the image of your logo. Perhaps you know the certificate number of a similar TM – then search by it. Or you know a competitor company – check which TMs are registered to it. In other words, use all available search options.
   What exactly are we interested in in the results? First of all, complete matches – identical word names or identical logos. But don’t ignore similar variants – both in sound and visual perception. And be sure to pay attention to the ICTU classes – we will talk more about them further on, but they determine for which goods and services the protection of the found TM is valid.
2. Database of Applications Accepted for Examination (UKRNOIVI): This is also available on the UKRNOIVI website, in the marks section, but in the subsection of applications under examination. Search in the same way as in the previous database. What are we looking for? Exactly the same – identical and similar designations. Just be aware that these are applications which have not yet been registered, but which have been filed before you. And if they do get registered, your TM may not pass.
3. TMview (international database): This is the “big league” – an international database of trade marks. Here you can search by various parameters: name, image, owner, ICTU classes…. TMview search is useful if you are targeting foreign markets.
4. Good old Internet: Don’t ignore search engines! Type the name of your application (and its various variations) into Google or another search engine. See if anyone else uses the same or a very similar name for their software.

What to do with the results?

• Did you find a complete match (identity)? For the same/related products/services? Conventionally speaking, it’s almost a conviction. No registration.
• Did you find similar designations? Evaluate how similar they are. Could users confuse them? If there is a risk of confusion, it’s a bad thing.
• Even if there are similar TMs, but they are registered for other classes (and those classes are not related to yours), there is less risk of rejection.

A preliminary search is not a hundred per cent guarantee that everything will be smooth. But it does, in other words, significantly reduce the likelihood of unpleasant surprises and help you make an informed decision.

Subsection 1.3: Determination of ICCT classes

Having chosen a designation and checked its uniqueness, we move on to the next important step – the definition of ICTUclasses . What is it and why do you need it when registering trade mark for software?

ICCS is the International Classification of Goods and Services. It is, in other words, a special international classifier that is used to register trade marks. In it, all goods and services are divided into classes (there are 45 classes in total: from 1 to 34 – goods, from 35 to 45 – services).

Why do I need ICTU classes?

ICTU classes determine the scope of legal protection of your trade mark. That is, your TM will be protected only for those goods and services that you specify in the application, referring to the relevant ICCT classes.

The following classes aremost commonly usedfor software:

• Class 9:This includes softwareitself as a commodity:
  • “Computer software (recorded)”; “Computer
  • programs (boot software)”;
  • “Computer
  • operating system programs (recorded)”; “
  • Computer games (programs)”;
  • and other similar formulations

  .

• Class 42:This class relates to servicesrelated to software:
  • “Computer software development”;
  • “Analysis of computer systems”; “Computer
  • software consultancy
  • “; “Provision of information regarding computer software”;
  • “Updating computer software status”;
  • “Computer programming”;
  • “Providing Internet search tools”;
  • “Installing (installing) computer software”;
  • “Monitoring (controlling) computer systems to detect breakdowns
  • ; “Providing software as a service [SaaS]”;
  • “Hosting computer sites [websites]”;
  • and other similar formulations.

Can I choose other classes?

Yes, you can, and sometimes you even need to. If your software has some specific application, you may need additional classes, conventionally speaking.

• Example: If you have developed software for medical diagnosis, you may need Class 10 (medical instruments and tools) in addition to Classes 9 and 42. If your software is for accounting, you may need class 35 (business administration services).

How do I choose the right classes?

1. Study the structure of the ICTU: Familiarise yourself with the full list of classes and a description of the goods/services that belong to them (this can be done on the UKRNOIVI website or other sources).
2. Identify the main goods/services: Think about how exactly you will use your software. Will you sell it as a finished product (Class 9)? Or provide services for its development/support (Class 42)? Are there any specifics?
3. Don’t overdo it: Don’t try to take as many classes as possible. Choose only those that really relate to your business. Otherwise, you will simply overpay for the application.
4. If you have any doubts, it is better to turn to specialists, such as Polikarpov Law Firm.

The right choice of ICTU classes, in other words, is a guarantee that your trade mark will be reliably protected for the goods and services for which you use it.

II. Compilation of the application

So, the designation has been determined, the test has been carried out, and the classes of ICTU have been selected. Now, in other words, the most important moment is to draw up an application for registration of trade mark. This is an official document that is submitted to UKRNOIVI, and from the correctness of its filling depends on whether your application will be accepted for consideration, or sent for revision, or even rejected. Therefore, there is no less, attention and once again attention!

Subsection 2.1: Filling in the application form

The heart of the entire trademarkregistration procedure is undoubtedly the application form. It is the application form that you will submit to the Ukrainian Trademark Office. Therefore, in other words, we will now explain step by step how to fill out the application form correctly in order to avoid mistakes and, no less, increase your chances of success.

The application form for registration of a trademark can be found on the official website of the Ukrainian National Intellectual Property Office. Look for the section on registration of trademarks (service marks).

What does the application consist of?

An application is not a single sheet, but a set of documents. But the main document is, of course, the application form itself. It has several sections that need to be filled in carefully:

1. Information about the applicant:This is where you provide your details:
   • If you are an individual – full name, address of registration (residence), contact details.
   • If you are a legal entity – full name of the company, legal address, EDRPOU code, contact details.
2. Information about the representative (if any): If you act through a representative (for example, a lawyer or a patent attorney), please provide his/her details (full name, address, registration number of the patent attorney, if any).
3. Correspondence address: Here you indicate the address to which UKRNOVI will send you correspondence (notifications, requests, decisions). This can be your home address, office address or representative’s address.
4. Image of the designation:
   • If your trademark is a word mark (the name of the application), you simply enter it in the field provided.
   • If your TM is a logo (a pictorial designation), you will need to attach a file with an image (see the next section for image requirements).
   • If your TM is a combined TM (word + image), you must indicate both the word part and attach a file with the image.
5. List of goods and services:This is one of the most important sections! Here you indicate for which goods and services you want to register your TM, according to NICE CLASSIFICATION(we discussed the classes of the Nice Classification in the previous section).
   • The wording must be clear and consistent with the wording of the Nice Classification.
6. Information on priority (if any): If you have filed an application for this TM in another country within the last 6 months, you can claim priority on this previous application.
7. Signature of the applicant (or representative): The application must be signed by the applicant (if the applicant is an individual) or by the applicant’s authorised representative (if the applicant is a legal entity). If the application is submitted by a representative, it shall be signed by the representative.

As a rule, samples of application forms are available on the website of the Ukrainian National Research Institute. Study them carefully before filling in your application.

Tips:

• Check all the data several times. Errors in the application may result in delays in processing or even rejection.
• Fill out the application legibly, preferably in print (or on a computer).
• Keep a copy.

Filling in the application form, in other words, is a responsible process. Take your time, pay attention, and you will succeed!

Subsection 2.2: Preparation of a TM image

If your trade mark contains graphic elements (logo, combined designation), you, in other words, need to prepare a high-quality image of TM for submission together with the application to UKRNOIVI. The quality of this image determines how your TM will appear in official documents and, there, how it will be perceived by experts.

UKRNOIVI has clear requirements for the images that are submitted with the application. Here are the main ones:

1. Format: JPEG (.jpg) images are generally accepted.
2. File size: There are restrictions on the maximum file size (e.g. no more than 2 MB). See the UKRNOIVI website for exact requirements.
3. Image size (in pixels): There are requirements for minimum and maximum image size in pixels (e.g., no less than 800 x 600 pixels and no more than 2000 x 2000 pixels).
4. Resolution: The recommended resolution is 300 dpi (dots per inch).
5. Colour: The image can be in colour or black and white. If you submit a colour image, your TM will be protected in that colour. If you submit a black and white image, you will be able to use your TM in any colour.
6. Quality: The image must be clear, not blurred, without extraneous elements. All details of the logo should be clearly visible.
7. One file – one image.

How to prepare the image:

1. Use an image editor: If you have your logo in vector format (e.g. .ai, .eps, .svg), export it to JPEG with UKRNOIVI requirements. If you only have a bitmap image (e.g. .png, .jpg), make sure it is of sufficient quality and resolution. If necessary, edit it in an image editor (e.g. Adobe Photoshop, GIMP).
2. Check the size and resolution: Make sure that the file size, image size in pixels and resolution meet the UKRNOIVI requirements.
3. Check the quality: Look carefully at the image on your computer screen. Make sure it is clear, not blurred, and all details are clearly visible.

Important:

• Do not submit low quality images. This can lead to problems during the examination of the application.
• If you are not sure that you can prepare the image yourself, it is better to contact a professional designer, there no less.

A quality image of the trade mark, in other words, is not just a formality, but an important element of your application.

Subsection 2.3: Drawing up a list of goods and services

One of the most important points of the application for registration of a trade mark is undoubtedly the list of goods and services. It is he, in other words, determines exactly what your TM will be protected for. Therefore, its compilation should be approached with all responsibility, there no less.

What is a list of goods and services?

It is a list of the specific goods and/or services for which you want to register your trade mark according to the International Classification of Goods and Services (ICCS).

How to compile a list for software?

1. Decide on the ICTU classes: We have already discussed the ICTU classes in detail (subsection 1.3). For software, it is usually class 9 (the software itself as goods) and class 42 (services related to software). But there may be other classes if your software has a specific application.
2. Use the wording of the ICCT:Don’t make up your own wording! UKRNOIVI, conventionally speaking, requires that the list of goods and services be drawn up in accordance with the wording used in the ICTU. You can find these formulations
   • on the UKRNOIVI website (in the section dedicated to ICTU).
   • In special online services for selecting ICTU classes.
3. Be specific: Do not write too general phrases, for example, “software”. Specify what your software is for.

Examples of wording for different types of software:

• For Class 9:
  • “Computer programmes (downloadable software)”. – if you distribute software by download.
  • “Computer software (recorded)” – if you sell software on physical media (discs, flash drives).
  • “Computer games (software)” – If you are developing games.
  • “Computer operating system programmes (recorded)” – If you have created an operating system.
  • “Facial recognition software.”
  • “Mobile apps for food ordering”
• For Class 42:
  • “Computer software development” – if you are engaged in custom software development.
  • “Computer software consulting” – if you provide consulting services.
  • “Provision of Software as a Service [SaaS]” – if you provide access to your software over the Internet under the SaaS model.
  • “Computer software upgrade” – if you provide software upgrade services.
  • “Software maintenance.”

Tips:

• Don’t write too much: Don’t try to cover every possible product and service. Choose only those that are really relevant to your business.
• Don’t write too little: Make sure that the list fully covers all major uses of your software.
• If you are not sure, contact the experts at Polikarpov Law Firm.

A properly drafted list of goods and services, in other words, is a guarantee that your trade mark will be protected in the field in which you operate.

Subsection 2.4: Documents to be attached to the application form

So, the application form has been filled in, the image of the TM has been prepared, the list of goods and services has been compiled. Now, in other words, we collect a full package of documents for submission to UKRNOIVI.

What documents do I need to attach to the application form?

Apart from the application form itself, you will need:

1. A document on payment of the application fee: This is, conditionally speaking, a receipt confirming that you have paid the state fee for consideration of your application. The requisites for payment of the fee and its amount can be found on the UKRNOIVI website. Important: Keep the original receipt! You may need it in the future.
2. Power of Attorney (if the application is filed by a representative): If you act not personally, but through a representative (lawyer, patent attorney), you need to execute a power of attorney. The power of attorney must contain the data of the applicant (your data), the data of the representative, the list of powers of the representative (the right to file the application, correspond with UKRNOIVI, receive the certificate, etc.), the date of issue and validity of the power of attorney, as well as the signature of the applicant (or the authorised person, if the applicant is a legal entity). Usually, it is not necessary to notarise the power of attorney, but it is better to clarify this point.
3. Copies of documents certifying priority (if necessary).
4. Other documents (if necessary): Sometimes UKRNOIVI may require additional documents. For example, if you want to indicate the priority of another application, you need to provide a copy of it.

Before submitting your application, check again that you have all the documents you need.
Make copies of all documents for yourself.

Preparing a complete set of documents, in other words, is the final touch before submitting an application. Having collected all the necessary papers, you can safely move on to the next stage – applying to UKRNOIVI, there no less.

III. Submission of the application to UKRNIIVIS

All the documents are collected, the application is ready – it’s time, in other words, to submit it to UKRNIIVIS (Ukrainian National Office of Intellectual Property and Innovation). This section, there, however, is devoted specifically to the technical aspects of filing: what are the methods, how to pay the fee and what happens after you have sent the application.

Subsection 3.1: Methods of filing documents

So, you have prepared a complete package of documents for registration of the trade mark. Now, in other words, you need to submit an application to UKRNOIVI. How can this be done? There are several options, choose whichever one suits you best.

Methods of application:

1. Online (through the electronic application system): This is probably the most convenient and fastest way. Applying online has a bunch of pluses: convenient (you can do everything from the comfort of your own home), fast (the application gets to UKRNOIVI instantly), economical (there are often discounts on fees) and allows you to control the process (track the status of the application). To apply online, go to the UKRNOIVI website, find the section “Electronic Services” (or “Electronic Application System”), register (you will need an electronic digital signature – EDS), fill out the electronic form, upload documents (image of TM, scan of payment receipt, power of attorney if necessary) and sign the EDS.
2. By post: You can send the documents by registered letter with return receipt. It is simple (no registration and EDS required), but longer (delivery will take time) and there is a risk of losing the documents. If you choose this method, make a full package of documents and send it by registered mail to UKRNOIVI. Do not forget about the delivery notice!
3. In person: You can bring the documents to UKRNOIVI and submit them at the reception window. This is reliable (you hand over the documents in person) and gives you the opportunity to ask a question to a member of staff (although do not expect detailed counselling). But there are disadvantages: you have to go to UKRNOIVI (which can be inconvenient), there may be queues and time restrictions.

The most convenient and modern way to submit an application, in other words, is online submission through the electronic application system on the UKRNOIVI website.

Subsection 3.2: Payment of the application fee

Filing an application for trademarkregistration is a paid service. Therefore, in other words, before sending the documents to UKRNOIVI, it is necessary to pay the state application fee.

The fee depends on several factors:

• Number of classes of ICTU: The more classes you indicate in the application, the higher the fee.
• Type of designation: The fee for registration of a combined designation (word + image) may be higher than for registration of a word designation.
• Method of filing: Online filing often provides for discounts on the fee.

Up-to-date information on the fee can always be found on the official UKRNOIVI website. Look for the section dedicated to fees for actions related to the protection of intellectual property rights, there is no less.

You can pay the fee:

• Online: The UKRNOIVI website usually has an option of online payment of the levy (by bank card or through an electronic payment system).
• In a bank: You can pay the fee in any bank using the details specified on the UKRNOIVI website.

Details for payment of the fee (account number, USREOU code, MFI of the bank, purpose of payment) can be found on the UKRNOIVI website. Be careful when filling in the payment order! An error in the details may result in the payment not being credited and your application will not be accepted for consideration.

What should I do after paying the fee?

After paying the fee, be sure to keep the receipt (or other document confirming payment). Its scan copy (or photo) will need to be added to the application form (if submitting online) or sent with other documents (if submitting by post or in person).

Important:

• Do not submit your application without paying the fee! It will not be accepted for consideration.
• Carefully check the requisites before payment.
• Keep the payment receipt, there is no less.

Payment of the application fee, in other words , is a prerequisite to start the procedure of registering your trade mark.

IV. Examination of the application

So, the application has been submitted, the fee has been paid – what next? And then, in other words, the most important and, in other words, the most time-consuming stage begins – the examination of the application in UKRNOIVI. This is the process during which the experts check your application and designation for compliance with the legal requirements. Be prepared that this may take some time.

Subsection 4.1: Formal examination

After you have applied for registration of the trade mark, UKRNOIVI proceeds to its consideration. And the first stage of this examination, in other words – formal examination.

What is Formal Examination?

Formal examination is a check of your application for compliance with formal legal requirements. That is, UKRNOIVI experts check, or:

• Whether the application form is filled in correctly: All fields are filled in, there are no errors in the applicant’s data, whether the address for correspondence is indicated, etc.
• All necessary documents have been submitted: Is there an image of the TM (if necessary), is there a document on payment of the fee, is there a power of attorney (if the application is submitted by a representative), etc.
• Compliance with the requirements to the image of TM: Does the image meet the requirements for format, size, quality.
• Whether the application fee has been paid: Whether the payment has been received on the account of UKRNOIVI.

If during the formal examination of any deficiencies are identified (e.g. an error in the application, absence of some document, non-compliance of the TM image with the requirements), UKRNOIVI sends you a notification (request). This notification specifies what deficiencies need to be eliminated and sets a deadline for their elimination (usually 2 months).

What to do if you receive a request from UKRNOIVI?

1. Read the request carefully: Find out what deficiencies are found.
2. Correct the deficiencies: Correct errors in the request, provide missing documents, prepare a new TM image (if necessary), etc.
3. Send a response to the request: Prepare a written response to the request stating that you have corrected all deficiencies and add the necessary documents. The response must be sent to UKERNOIVI within the deadline.

If you do not eliminate the deficiencies identified during the formal examination, within the prescribed time limit, your application, in other words, will be considered withdrawn. This means that the TM registration procedure will be suspended.

If during the formal examination no defects are found (or you have successfully eliminated them), the application nevertheless proceeds to the next stage – substantive examination.

Formal examination, conventionally speaking, is the first filter that your application must pass through. Therefore, be careful when filling out your documents and do not ignore UKRNOIVI’s requests.

Section 4.2: Substantive (Qualification) Examination

If your application has successfully passed the formal examination, the most important stage begins, in other words, the substantiveexamination, also called the qualification examination. It is at this stage that it is decided whether your trade mark will be registered or not.

What is substantive examination?

Substantive examination is the examination of your designation for protection. That is, UKRNOIVI experts check whether your designation meets the requirements for trade marks and can be registered.

The experts check whether your designation is not identical or confusingly similar:

1. Identical or confusingly similar topreviously registered trade marks or applications filed for registration earlier for similar (same or related) goods and services. This is probably the most common reason for refusal of registration.
2. Descriptive: Does your designation not describe the kind, quality, properties, purpose or other characteristics of the goods/services for which you wish to register it.
3. Generic: Whether your designation is not a common name for a certain type of goods or services.
4. Misleading: Does your designation mislead consumers about the product/service, manufacturer or place of origin.
5. Contrary to the public interest, principles of humanity and morality.
6. Deprived of distinguishing ability.

How is the examination carried out?

UKRNOIVI experts conduct a search in databases of registered trade marks and filed applications, as well as in other sources of information. They compare your designation with other designations, assess its originality, distinctiveness, possibility of misleading, etc.

What happens if grounds for refusal are found?

If the examination reveals grounds for refusal of registration (e.g. similarity to another TM), UKRNOIVI sends you a preliminary refusal of registration. This document states the reasons for the refusal and invites you to submit your arguments and objections.

What to do if you have received a preliminary refusal?

1. Study the preliminary refusal carefully: Understand why UKRNOIVI believes that your designation cannot be registered.
2. Prepare a reasoned response: Try to prove that your designation is not identical or confusingly similar to other TMs, that it is not descriptive, commonly used, etc. Give your arguments why your TM should be registered.
3. Send a reply to UKRNOIVI: The reply should be sent within the prescribed period of time (usually 3 months).

What happens if you do not respond to a prior refusal?

If you do not provide a response to the prior refusal within the prescribed period of time, UKRNOIVI, in other words, will make a final decision to refuse to register your trade mark.

If the substantive examination is successful (i.e., the examiners find no grounds for refusal), UKRNOIVI decides to register your TM, there no less.

Examination on the merits, conditionally speaking, is the most difficult and the most responsible stage of registration. Be prepared that you may have to defend your right to register a TM.

Subsection 4.3: Correspondence with UKRNOIVI

During the examination of an application for registration of a trade mark (both formal and substantive examination) it may be necessary, in other words, to correspond with UKRNOIVI. This is a normal working process and you should not be afraid of it.

When may correspondence be necessary?

• During the formal examination: If UKRNOIVI finds any deficiencies in the design of your application or in the attached documents (e.g. errors, non-compliance with the requirements, absence of some documents).
• During the substantive examination: If the examiners have questions regarding your designation (e.g. its similarity to other TMs, descriptiveness, etc.).
• In other cases: For example, if you need to make changes to your application (change your correspondence address, correct an error, etc.).

How does correspondence happen?

UKRNOIVI sends you an official letter (enquiry, notification, provisional refusal) to the correspondence address you provided in your application. This letter states the essence of the issue (what deficiencies have been identified, what questions the experts have) and sets a deadline for response.

How do I respond to UKRNOIVI letters?

1. Read the letter carefully: Find out exactly what UKERNOIVI is asking of you.
2. Prepare a reasoned response: Answer all the questions in the letter clearly and substantively. If any deficiencies need to be corrected, correct them and state them in your response. If you need to provide additional explanations or evidence, provide them.
3. Meet deadlines: You must respond to the UKERNOIVI letter within the deadline. If you miss the deadline, you can apply for an extension (but you will have to pay a fee).
4. Keep copies: Always keep copies of all letters you send to UKERNOIVI and all letters you receive from UKERNOIVI, there no less.

Important:

• Do not ignore letters from UKRNOIVI! If you do not respond within the deadline, your application may be recognised as withdrawn or your TM registration may be refused.
• Write your answers competently and substantively.
• If you are not sure how to respond correctly to UKRNOIVI’s letter, it is better to seek help from a lawyer or a patent attorney.

Correspondence with UKRNOIVI, in other words, is an integral part of the trade mark registration process. Your attentiveness, literacy and timeliness of responses, conventionally speaking, can significantly affect the outcome of the application.

V. Obtaining a certificate

If the examination of your application for trade mark registration has been successful, and UKRNOIVI has made a decision on registration, there remains, in other words, the last step – to obtain a certificate. This is the final chord, after which you become a full-fledged owner of the TM!

Subsection 5.1: Payment of the publication and issuance fee

Once the UKRNOIVI has decided to register your trade mark, it is too early to relax. To obtain a certificate, you, in other words, need to pay two more state fees:

1. The fee for the publication of information on the issuance of TM: UKRNOIVI publishes information on registered trade marks in the official bulletin “Industrial Property”. A fee must be paid for this publication.
2. Fee for issuing the certificate: Finally, you must pay a fee directly for the issuance of your trade mark registration certificate.

The amount of fees for publication and issuance of the certificate is established by law. Up-to-date information on the fees can be found on the official website of UKRNOIVI.

You can pay the fees:

• Online: The UKRNOIVI website usually has an online payment option.
• In the bank: Using the details provided on the UKRNOIVI website.

Requisites for payment of fees (account number, USREOU code, MFI of the bank, purpose of payment) can be found on the UKRNOIVI website. Be attentive!

After paying the fees, be sure to keep the receipts (or other documents confirming the payment). Information about the payment (number and date of the payment document) will need to be reported to UKRNOIVI. This is usually done by sending a letter (electronic or paper) with copies of the receipts.

Subsection 5.2: Obtaining the TM certificate

You have paid all the fees, informed the UKRNOIV – now, in other words, it remains only to obtain a certificate of registration of your trade mark. This is, conventionally speaking, the final chord of the whole procedure!

How to get a certificate?

There are several options:

1. In person at UKRNOIVI: You can come to UKRNOIVI in person and receive the certificate at the relevant department.
2. By post: UKRNOIVI can send you the certificate by post (registered letter) to the address for correspondence that you indicated in the application.
3. Through a representative: If you acted through a representative (lawyer, patent attorney), the certificate can be received by him (by power of attorney).

A trade mark registration certificate is an official document that confirms your exclusive rights to the TM. It contains:

• Certificate number.
• Date of registration of the TM.
• Date of filing (this date determines the priority of your TM).
• Image of your trade mark.
• List of goods and services for which the TM is registered (in accordance with ICTU).
• Information about the owner of the TM (your data or your company’s data).
• Term of validity of the TM.
• Signature of the Head of UKRNOIVI and stamp.

The certificate is valid for 10 years from the date of application. However, this period can be extended for another 10 years an unlimited number of times (subject to payment of the relevant fee).

What to do with the certificate?

• Keep it in a safe place! It is your main document confirming your rights to your TM.
• Use your TM! Mark your programme, website, advertising materials with your registered trademark.
• Keep track of the validity of the certificate, do not forget to renew it in time.

Obtaining a certificate, in other words, is not just a formality. It is a confirmation that you have passed all stages of registration and are now a full-fledged owner of the trade mark for your software.

VI. What to do after TM registration?

Congratulations! You have obtained a certificate for trade mark – now you are, in other words, a full-fledged brand owner for your software. But TM registration is not the finish but, there no less, rather the start. What to do next? How to use your TM correctly and how to protect your rights? This is the subject of our final section.

Subsection 6.1: Use of the TM

By obtaining a certificate, you, in other words, get the exclusive right to use your trademark to designate software and related services. But what is the right way to do it?

Basic rules for using a trademark:

1. Use the TM in the form in which it is registered: Do not significantly change the logo image, distort the name, add or remove elements. If your TM is registered in a certain colour, use it in that colour (or in black and white if you submitted a black and white image).
2. Use the TM for the goods and services for which it is registered: Do not use your TM to identify other goods/services that are not listed in your certificate.
3. Use a warning mark (® or TM):This is optional, but advisable. Warning labelling informs others that your mark is a registered trade mark.
   • ® (R in circle): Used for registered trademarks.
   • ™ (TM): Used for designations that are not yet registered but are used as a trade mark. In Ukraine, this symbol is not legally binding, but can be used for information purposes.
   • You need to place these signs, at least, near your designation.

Where to use the TM:

• In the program itself: Name of the program, logo in the interface.
• On the app’s website: Name, logo, slogan.
• In app stores: Name, logo, description of the app.
• In promotional materials: Banners, videos, print ads, etc.
• On business cards, letterheads, packaging (if available).
• On social media, forums, etc.

Why use a brand name?

• TM helps users distinguish your application from others.
• The TM works as a permanent advertisement for your brand.
• The use of a trademark confirms your rights to it and, relatively speaking, facilitates the protection of these rights in case of violations.

What not to do:

• Do not use your TM in a way that is likely to mislead consumers (e.g., do not use it to identify someone else’s goods/services).
• Do not use your TM in a way that could damage its reputation (for example, do not use it in a context that is offensive or unethical).

Proper use of thetrademark, in other words, is not only your right, but also your responsibility. It helps to maintain your brand awareness and, at the same time, protect your rights.

Subsection 6.2: Renewal of the validity of a TM

Thetrade markregistration certificate is not a perpetual certificate . In other words, it is valid for 10 years from the date of application. But don’t worry: this term can be extended, and you can do it an unlimited number of times.

How to extend the term of validity of a TM?

To extend the term of validity of a trade mark, you need to:

• Submit an application (petition) to extend the term of validity of the TM: This can be done during the last year of validity of the certificate (or within 6 months after the expiry date, but with payment of an additional fee):
• Pay the TM renewal fee: The amount of the fee is established by law. Up-to-date information on the amount of the fee can be found on the UKRNOIVI website.

If you do not renew yourtrade mark in time, you will, conditionally speaking, lose your exclusive rights to it. This means that anyone else will be able to register the same or similar TM for the same or related goods/services.

Important:

• Keep track of the expiry date of your certificate! Set yourself a reminder so that you don’t miss your renewal date.
• Do not delay in submitting your renewal application. It is better to do it in advance than to pay an additional fee later or, there no less, risk losing the rights to the TM.

Trademarkrenewal , in other words, is a simple but very important procedure. It allows you to retain your brand rights to your software for an indefinite period of time.

Conclusions

So, we have gone all the way – from choosing a designation to obtaining a certificate and further use of the trade mark. As you can see, registering a TM for software on your own is quite realistic! This, in other words, requires time, attention, careful preparation and following the procedure, but the result is worth it.

Key points worth emphasising again:

• Careful preparation is the key to success: Choosing the original designation, preliminary search, correct definition of ICTU classes are all critical.
• Carefulness in filling out documents: Errors in the application can lead to delays or rejection.
• Adhere to deadlines: Do not miss deadlines for submitting your application, responding to UKRNOIVI requests, paying fees, and renewing your TM.
• Correspondence with UKRNOIVI is normal: Don’t be afraid to respond to requests and assert your rights.
• Use your TM correctly: This will help you protect your brand and avoid problems in the future.

Self-registration of TM is, conventionally speaking, a challenge, but also an opportunity to save money. However, if you are not confident in your abilities, or if you have complicated questions, it is always better to seek help from professionals. The lawyers of Polikarpov Law Firm have many years of experience in the field of intellectual property and, nevertheless, will be happy to help you at any stage of registration and protection of your trade mark. And if you want to refresh your memory about what a TM is, we advise you to read our article: “Trade Mark for Software: Protecting Your Code and Brand“.