How to register a trademark on your own: a step-by-step guide for entrepreneurs

You are an entrepreneur who has created a unique product or service, developed a recognisable brand and are ready to conquer the market. But are your rights to that brand protected? Did you know that you can register your trademark yourself without the help of lawyers and patent attorneys?

Yes, self registering a TM -it’s very real! It can be a great way to save money, especially when starting a business. However, be warned right away: the process of registering a TMis no walk in the park. It requires time, attention to detail, careful study of the legislation and, for example, readiness for possible difficulties.

This step-by-step guide has been created especially for entrepreneurs who have decided to take this path on their own. We will break down each stage of self-registration from choosing a designation to obtaining a certificate, tell you about the pitfalls and give practical advice. But be prepared that you will have to plunge into legal intricacies, understand the classification of goods and services, learn how to communicate with the state institution (UKRNOIVI) and, possibly, face the need to correct mistakes.

I. Step 1: Selecting a designation and checking for uniqueness

Before you start the official procedure for registering a trade mark, you need to take two important steps: select the designation you want to register and, for example, check its uniqueness. It is like laying the foundation of a house: if the foundation is unreliable, the whole building may collapse. In other words, your designation must not only be original, but also not similar to already registered trade marks. In this section, we will look in detail at what requirements a designation must fulfil in order to be registered and how to conduct a preliminary search to ensure that it is unique.

Subsection 1.1: Requirements for a designation

Not every designation can be registered as a trade mark. There are certain requirements for aTM established by law with which it must comply. These requirements are intended to ensure fair competition and consumer protection, so to speak.

Basic requirements of distinctiveness:

1. Distinctiveness: This is probably the most important requirement. The designation must be able to distinguish your goods or services from those of others. It should not be a generic word or term that simply describes a type of good or service. For example, the word “Bread” cannot be registered as a TM for bakery products, but, for example, the fancy name “Dawn” can.
2. Absence of deceptiveness: The designation must not mislead consumers about the goods, services, the person who produces or provides them, or about their quality, origin and the like. For example, it is impossible to register TM “Swiss watches” for watches manufactured in Ukraine.
3. Absence of contradiction to public order and principles of morality: The designation must not contradict generally recognised norms of morality, contain obscene words, insults, calls to violence, etc.
4. Non-descriptiveness (for certain categories of goods/services): For some categories of goods/services (for example, for medicines) there are additional requirements for non-descriptiveness. The designation must not directly indicate the type, quality, composition, purpose, value of the goods, as well as the place and time of their manufacture or marketing.

Examples of designations that cannot be registered:

• Commonly used names of goods and services (“water”, “furniture”, “repair”).
• Descriptive designations (“tasty”, “quality”, “fast”).
• Designations that indicate the geographical origin of the product and may mislead consumers (“Carpathian honey” for honey not harvested in the Carpathians).
• State emblems, flags and other state symbols.
• Official names of States.
• Marks that are identical or similar to such an extent that they can be confused with marks previously registered or applied for registration in Ukraine by another person for the same or related goods and services.
• Marks reproducing industrial designs, the rights to which are owned in Ukraine by other persons.

These are just some examples. In fact, the list of grounds for refusal to register a TM is quite broad. Therefore, before submitting an application, it is recommended to carefully study the legislation and, for example, consult a specialist (if desired).

Subsection 1.2: Preliminary search: why and how?

Preliminary search for identity and similarity is, without exaggeration, the most important stage of preparation for registration of a trade mark. It allows you, so to speak, to “feel the ground” and find out whether similar designations have already been registered in Ukraine, which may become an obstacle for registration of your TM.

Why do you need the search?

• Identify existing TMs: The main purpose of the search is to identify registered trade marks or filed applications that are identical or similar to your designation and relate to homogeneous goods or services. The presence of such TMs may result in the refusal to register your application.
• Reduce risks: Preliminary search does not guarantee 100% absence of conflicts, but it significantly reduces the risks of refusal of registration and, for example, further legal disputes with the owners of already registered TMs.
• Save time and money: It is better to spend time and money on a preliminary search than to be refused registration after months of waiting and paying fees.

Where to search?

1. Database of marks registered in Ukraine (UKRNOIVI): This is the main source of information. The database contains information about all trade marks registered in Ukraine. A search in this database is obligatory.
2. Database of Applications Accepted for Examination (UKRNOIVI): This database contains information on applications for registration of TMs that have not yet been examined but already have priority. Searching this database is also required.
3. TMview (international database): This is a large international database that contains information on trade marks registered in different countries around the world. Searching this database is desirable especially if you plan to enter international markets.
4. Internet search:Additionally, you can search the Internet (using search engines such as Google) to identify unregistered designations that may be used by other companies.

How to search.

• By name: Enter the verbal part of your designation (if it is verbal or combined) into the database search box. Use different spelling options (e.g., capitalised and lowercase, with or without spaces).
• By image (if there is a logo): The UKRNOIVI database allows you to search by image. Upload a file with an image of your logo and, for example, the system will try to find similar images.
• By ICTU classes: Be sure to specify the ICTU classes for which you plan to register your TM. This will narrow your search and make it more accurate.

How to interpret the search results?

• Identical designations: If you have found an identical designation registered for the same or similar goods/services, it most likely means that your TM will not be registered.
• Similar designations: Assessing the similarity of designations is a more complex task. Designations are considered similar if they are associated with each other as a whole, despite individual differences. When assessing similarity, phonetic, graphic and semantic (meaning) criteria are taken into account. For example, “Velika Kishenya” and “Kishenya” are similar TMs.
• Large number of similar designations: If you find a large number of designations that are partially similar to yours, this may indicate that your TM has poor distinctiveness and, for example, may be rejected.

Preliminary search is a complex process that requires some skill and experience. If you are not confident in your abilities, it is better to contact a patent attorney. But even if you carry out the search yourself, remember that it does not give a 100% guarantee, but only reduces the risks.

II. Step 2: Determining the ICCT classes

Once you have chosen a designation for your trade mark and, for example, made sure that it is unique (at least as far as possible with a preliminary search), it is time to decide on the ICTU classes. What is it and why do you need it? It’s like choosing clothes: you need to choose the right size and style so that the clothes fit well and fulfil your needs. It is the same with the ICCT classes: you need to choose the classes that best describe your goods and services so that your trade mark has the right amount of legal protection. In this chapter, we will look at what the International Classification of Goods and Services (ICGS) is, how it is structured, and how to choose the right classes for your trade mark.

Subsection 2.1: What is an ICCT?

The International Classification of Goods and Services is the International Classification of Goods and Services, which is used to register trade marks. It is, in other words, a kind of “dictionary”, which contains a list of all possible goods and services grouped into certain categories – classes.

Why do we need the ICCT?

• Unification: The ICCT provides a uniform approach to the classification of goods and services worldwide. This simplifies the process of registering TMs in different countries and, for example, makes it easier to find information about registered trade marks.
• Determining the scope of protection: The Classes of ICTU you specify in your TM registration application determine the scope of legal protection for your trade mark. Your exclusive right to use the TM will apply only to those goods and services specified in the relevant classes.
• Organisation of information: The ICCT helps to organise trade mark information in databases, making it easier to search and analyse, so to speak.

How is the ICCT organised?

The ICTU is made up of 45 classes:

• Classes 1-34:Commodities.
• Classes 35-45:Services.

Each class has a name that gives a general idea of the goods or services it includes. For example:

• Class 9: “Scientific, …. apparatus for recording, transmission and reproduction of sound or images; …”.
• Class 25: “Clothing, footwear, headgear”.
• Class 41: “Education; provision of instruction; amusement; sports and cultural activities”.

Each class, in turn, contains a detailed list of specific goods or services. For example, Class 9 includes “computers”, “software”, “mobile phones” and so on. And Class 25 includes “shirts”, “shoes”, “hats”, etc.

The ICTU is constantly being updated and supplemented. The current version of the ICTU is available on the website of the World Intellectual Property Organisation (WIPO) and, for example, on the UKRNOIVI website.

Subsection 2.2: How to choose classes for your TM?

The choice of the correct ICCM classes is, without exaggeration, one of the most important stages of trade mark registration. It determines the scope of legal protection of your TM and, so to speak, your defence against competitors.

Algorithm for selecting ICTC classes:

1. Identify the main activity: What does your company do? What goods do you produce or what services do you provide? This, for example, will be the starting point for selecting classes.
2. View a list of ICCT classes: Carefully read the names of all 45 ICCT classes. Note those classes that may be related to your business.
3. Choose those classes that most accurately describe your goods/services: It is not enough to choose a class by its generic name. You need to scrutinise the detailed list of goods and services contained in each class and select those that most closely match your business.
4. Consider potential business development:Think about how your business might develop in the future. Perhaps you plan to expand your range of goods or services. In such a case, it makes sense to add ICTU classes “for the future” so that, for example, you don’t have to register a new TM in the future.

Examples for different types of business:

• Coffee shop:
  • Class 43: Food and beverage services; temporary accommodation. (Main Class)
  • Class 30: Coffee, tea, cocoa and coffee substitutes; …. (If you sell coffee of your own roast or other products under your own TM)
  • Class 35: Advertising; business management; … (If you plan to develop a chain of coffee shops under a franchise system)
• Clothing shop:
  • Class 35: Retail or wholesale clothing services… (Main Class)
  • Class 25: Clothing, footwear, headgear (if you manufacture clothing under your own TM.).
• IT company (software development):
  • Class 9: Software… (If you sell software as a product)
  • Class 42: Scientific, technological and design and research services; … Programming services … (If you provide customised software development services)

Incorrect selection of classes may result in denial of registration: If you select classes that do not correspond to your activity, UKRNOIVI may refuse to register your TM.

Incorrect choice of classes may limit the scope of TM protection: If you choose too narrow a list of classes, your TM will be protected only for a limited range of goods/services and, for example, competitors may be able to use a similar designation for other goods/services.

Consult: If you have difficulties with the choice of ICTU classes, it is better to consult a patent attorney or a lawyer specialising in intellectual property.

III. Step 3: Preparing the application

So, you have decided on the designation and ICTU classes. The time has come, in other words, to move on to the most crucial stage – the preparation of the application for registration of the trade mark. It is like writing an important letter: you need to format it correctly, clearly state your thoughts and, for example, attach all the necessary documents. The quality of the application depends on whether UKERNOIVI will accept the application and start the examination process. In this section we will look in detail at how to complete the application form, what the requirements are for the representation of the TM, how to correctly draw up the list of goods and services, and what additional documents may be required.

Subsection 3.1: Application Form

The application for registration of a trade mark is submitted to UKRNOIVI in the prescribed form. It is, in other words, an official document that must be filled out clearly, legibly and without errors.

Where to get the application form?

• Official website of UKRNOIVI: Section “Marks for Goods and Services”, subsection “Submission of Application”. Find there the file to download “Application Form for a Mark for Goods and Services”.
• Directly in UKRNOIVI (if you plan to apply in person).

The application form consists of several sections. Let’s review the main ones:

1. Information about the applicant:
   • Physical person: Full name, registration (residence) address, identification number (RNOKPP).
   • Legal entity: Full name, location (legal address), USREOU code.
   • Address for correspondence: Address to which UKRNOIVI will send correspondence (may differ from the address of registration/location).
   • Contact information: Phone, email.
2. TM Image:
   • An image of your TM should be placed in the designated field.
   • The requirements for the image will be discussed in detail in the next subsection (3.2).
3. TM description (if necessary):
   • If your TM is a combined TM (i.e., it includes verbal and pictorial elements), you may need a description.
   • The description should indicate what elements the TM contains, what font is used, what colours are used, etc.
   • The description should be brief and, for example, understandable.
4. List of goods and services (in accordance with the ICTU):
   • This is one of the most important sections of the application.
   • In this section, you must list all the goods and services for which you wish to register a TM, grouping them by class of ICTU.
   • The listing requirements will be discussed in detail in subsection 3.3.
5. Priority information (if any):
   • If you have applied for registration of the same TM in another country before, you can claim priority by the date of filing of the first application.
   • To do so, please indicate the date of filing of the first application, the country of filing and the application number.
   • A certified copy of the first application will need to be attached.
6. Applicant’s signature:
   • The application must be signed by the applicant (individual) or an authorised person of the applicant (legal entity).
   • If the application is submitted by a representative, a power of attorney is required.

Before filling in the application form, please carefully read the instructions attached to the form. Fill in the application form in the Ukrainian language. Avoid mistakes and corrections. Check that all required sections have been completed. Don’t forget to print it out and sign it.

A properly completed application form is the first step to successfully registering your trade mark.

Subsection 3.2: TM image

The image of your trade mark is, in other words, its visual representation that will be used in official documents, databases and, finally, on your products or in advertising your services. Therefore, there are certain technical requirements for the TM image.

TM image requirements:

• File Format: Generally, JPEG, PNG, or TIFF files are accepted. JPEG is recommended.
• File size: The file size should not exceed a certain limit set by UKRNOIVI (e.g. 2 MB). Check the current limit on the UKRNOIVI website or in the instructions for completing the application.
• Resolution: The image should be clear and of high quality. The recommended resolution is at least 300 dpi (dots per inch).
• Image size: The image should be, on the one hand, large enough to see all the details and, on the other hand, not too large so as not to exceed the file size limit. Recommended sizes are between 8×8 cm and 10×10 cm.
• Colour scheme:
  • Black and white image: If your TM is black and white, submit a black and white image.
  • Colour image: If your TM is colour, submit a colour image. Indicate in the application that the designation is coloured and, if necessary, list the colours used.
  • Shades of grey: If your TM contains shades of grey, submit an image in shades of grey.

The image must exactly match the designation you wish to register.

No extraneous elements on the image (text that is not part of the TM, frames, etc.) are allowed.

The image must be clear, without blurs, distortions and other defects.

If your TM contains a verbal element, it must be clearly readable.

If you are submitting your application online, make sure that the image file is successfully uploaded and, for example, displayed correctly.

A quality TM image is a guarantee that your application will be accepted and that your TM will be correctly identified in the future.

Subsection 3.3: List of goods and services

The list of goods and services is, without exaggeration, the most important part of a trade mark registration application. It determines the scope of legal protection of your TM: for which goods and services you will receive the exclusive right to use your designation.

How to draw up a list of goods and services:

1. Use ICCT terminology: This is the most important rule. You must use the exact wording that is found in the International Classification of Goods and Services. You must not make up your own terms or use generic phrases.
2. Be specific but not too narrow: The list should be specific enough to clearly define your area of interest, but not too narrow so that, for example, it doesn’t limit your future options.
   • Incorrect: “Clothing” (too general).
   • Incorrect: “Red women’s long-sleeved dresses” (too narrow).
   • Correct: “Dresses; blouses; skirts; trousers; trousers; coats”.
3. Avoid general and vague wording: Do not use phrases such as “all class goods”, “consumer goods”, “a variety of services”, etc. Such wording, in other words, does not make it clear for which goods/services you want to register a TM.
4. Group the goods/services by ICTU class: Each good or service must be assigned to the appropriate ICTU class. The class number should be stated first and then the goods/services that belong to it should be listed.

Examples of correct wording:

• Class 9: “Computer software; mobile applications; electronic databases”.
• Class 25: “Shirts; T-shirts; jeans; jackets; sports shoes”.
• Class 35: “Clothing retailing services; online shop services for the sale of cosmetics; advertising; market research”.
• Class 41: “Teaching; organising and conducting seminars; publishing books”.

Examples of incorrect wording:

• Class 9: “Everything for computers”.
• Class 25: “Fashionable things”.
• Class 35: “Trade”.
• Class 41: “Services for people”.

The list of goods and services must be in Ukrainian.

Check the list carefully before submitting the application. Errors in the list may lead to refusal of registration or, for example, to restriction of the scope of protection of the TM.

If you have difficulties in compiling the list, it is better to consult a specialist.

A properly drafted list of goods and services is the key to ensuring that your trade mark is protected for those goods and services that are essential to your business.

Subsection 3.4: Additional documents

In most cases, the application form, an image of the TM and, so to speak, the fee payment document are sufficient to apply for trade mark registration. However, in some situations, additional documents may be required.

What additional documents may be needed?

1. Power of Attorney:
   • If the application is filed not by the applicant himself (individual or legal entity) but by his representative (e.g. patent attorney, lawyer, other authorised person), a power of attorneyis needed.
   • The power of attorney must be duly executed (notarised for individuals, and for legal entities – signed by the head and seal of the legal entity, if any).
   • The power of attorney must clearly define the powers of the representative (the right to submit the application, correspond with UKRNOIVI, receive the certificate, etc.).
2. Documents confirming priority (if the applicant claims priority):
   • If you have already applied for registration of the same TM in another country party to the Paris Convention for the Protection of Industrial Property, you can claim priority by the date of filing of the first application (provided that the Ukrainian application is filed within 6 months from the date of filing of the first application).
   • To confirm priority, you need to file:
     • A statement of priority (included in the application form).
     • A copy of the first application certified by the patent office of the country where it was filed.
     • Translation of the first application into Ukrainian certified by a translator.

All documents must be submitted in Ukrainian. If the documents are in a foreign language, their translation into Ukrainian certified in the prescribed manner (e.g. by a notary or a translator) is required.

Make sure that all necessary documents are collected and, so to speak, properly executed before submitting the application. Missing or improperly executed documents may result in a delay in processing the application or denial of registration.

If you have doubts as to what documents are required in your particular case, it is better to consult a specialist (patent attorney or lawyer).

IV. Step 4: Submission of the application and payment of fees

You have prepared all the necessary documents: filled in the application form, prepared the image of the TM, made a list of goods and services, collected additional documents (if necessary). The time has come, in other words, to submit the application to UKRNOIVI and pay the relevant fees. It’s like the final chord before a concert: everything is ready, the instruments are set up, all that’s left is to go on stage. In this section we look at how you can apply (online, by post or in person), what fees you need to pay, and how to do it properly.

Subsection 4.1: Methods of filing an application

There are three ways to apply for registration of a trade mark with UKRNOIVI:

1. Online (through the electronic filing system): This is the most recommendedand, so to speak, the most convenient way. It allows you to apply electronically from the comfort of your home or office and save time. Benefits:
   1. Convenience:You can apply at any time of the day, from anywhere you have internet access.
   2. Speed:The application gets to UKRNOIVI instantly.
   3. Savings: No need to spend money on postage or travelling to UKRNOIVI.
   4. Monitoring: You can track the status of your application online.
   5. Fee Discount: When you apply online, there is sometimes a discount on the fee payment.

How to apply online:

1. Go to the UKRNOIVI website
2. Find the section “Electronic services” or “System of electronic interaction with UKRNOIVI”.
3. Register in the system (if you are not registered yet). You will need an electronic digital signature (EDS).
4. Log in using your EDS.
5. Select the section “Filing an application for a mark for goods and services”.
6. Fill in the electronic application form following the instructions.
7. Upload necessary files (TM images, additional documents).
8. Sign the application with your EDS.
9. Pay the online application fee (if there is a discount for online submission).
10. Send the application by mail.

1. By mail: You can send your application for TM registration by regular or registered mail to the address of UKRNOIVI.
   • Address UKRNOIVI: 01601, Dmytro Godzenko str. 1 (Glazunova str. 1), Kiev.
   • It is necessary to send:Filled and signed application in two copies, TM image, payment receipt, other accompanying documents.
2. In person:You may submit the application in person to UKRNOIVI.
   • The address of UKRNOIVI: Glazunova str. 1, Kiev, 01601, Ukraine.
   • It is necessary to have with you all the same documents that are necessary for sending by mail.

Regardless of the method of submission, the application must be properly executed and contain all necessary documents.

The date of submission of the application is the date of its receipt in UKERNOIVI (in case of online submission – the date of sending the application through the system; in case of submission by mail – the date of sending indicated on the postal receipt; in case of personal submission – the date of registration of the application in UKERNOIVI).

After submitting the application, you will receive a message from UKRNOIVI with the number of the application and the date of its submission. This number should be kept as, in other words, you will need it to track the status of the application.

It is recommended to apply online – it is fast, convenient and economical.

Subsection 4.2: Application Fees

A government fee is payable for filing an application for registration of a trade mark. The amount of the fee depends on several factors:

• Type of applicant: Individual or legal entity.
• Number of ICTU classes: The more ICTU classes you specify in the application, the higher the fee. The fee is payable for each class starting from the first class.
• Method of filing: Electronic filing may sometimes provide a discount on the fee.

Where can I find information about the fees?

• Official website of UKRNOIVI: Section “Marks for Goods and Services”, subsection “Fees”. There you will find a table with the current fees.

How to pay the fee?

• Details for payment: Details for payment of the fee can be found on the UKRNOIVI website (in the same section as the information on fees).
• Methods of payment:
  • Online: If you apply online, you can pay the fee directly through the electronic filing system (with a payment card).
  • Through the bank: You can pay the fee in any bank of Ukraine. To do this, you need to print out a receipt with details (from the UKRNOIVI website) and, for example, go to the cash desk of the bank.
  • Through payment terminals.

The fee must be paid before submitting the application.

The document confirming the payment of the fee (receipt, payment order, cheque) must be attached to the application (in case of online submission – upload a scanned copy of the document).

The purpose of the payment must specify what the fee is for (for example, “Fee for filing an application for a mark for goods and services”) and, preferably, the name or surname of the applicant.

If you have paid more than the required fee, the difference may be refunded to you on your application.

If you have not paid the fee or have paid less than the required amount, your application will not be considered.

Don’t forget to keep the fee payment document – in other words, you may need it in the future.

V. Step 5: Examination of the application and correspondence with UKERNOIVI

You have successfully submitted your application and paid the fees. Now begins the longest and most difficult stage – the examination of the application in UKRNOIVI. It is like an exam: your application will be thoroughly checked for compliance with all legal requirements. And, as in any exam, there may be questions and clarifications. In this section we look at what happens during the formal and qualifying examination, how to correspond with UKRNOIVI and how to respond to their enquiries.

Subsection 5.1: Formal examination

The formal examinations, so to speak, the first stage of the UKRNOIVI review of your application. This stage checks the correctness of the application and the presence of all necessary documents.

What is checked during the formal examination?

• Presence of all necessary documents:
  • Application for TM registration.
  • Image of the TM.
  • Document on payment of the application fee.
  • Power of attorney (if the application is submitted by a representative).
  • Documents confirming priority (if priority is claimed).
• Correctness of filling in the application:
  • Whether all fields of the application are filled in.
  • Whether the information about the applicant is correct.
  • Whether the image of the TM corresponds to the established requirements.
  • Whether the list of goods and services is correct (whether it corresponds to the ICTU terminology).
  • Whether there is a signature of the applicant.
• Whether the fee has been paid:
  • Whether the fee has been paid in full.
  • Whether the purpose of payment is correctly stated.

What happens after the formal examination?

• If everything is in order: If the application is correct and all the necessary documents are available, UKRNOIVI sends you a notification to set a filing date. This means that your application has been accepted for consideration and, for example, the next stage, the qualification examination, begins.
• If there are deficiencies: If deficiencies are identified during the formal examination (e.g. some document is missing, the application is incorrectly completed, a fee has not been paid), UKRNOIVI will send you a deficiency notice. This notice will specify which deficiencies need to be corrected and set a deadline for correcting them (usually two months).

Read all communications from UKRNOIVI carefully.

If you have been notified of deficiencies, be sure to correct them within the time limit. Otherwise, your application will be considered withdrawn.

If you have any questions about the notification of deficiencies, you can contact UKRNOIVI for clarification (by phone or email).

Formal examination is, in other words, a technical stage, but it is very important. Careless attitude to the formalisation of the application may result in delayed consideration or even refusal of registration.

Subsection 5.2: Qualification examination (substantive examination)

The qualification examination, or examination in substance, is, without exaggeration, the most important stage of trade mark registration. At this stage, UKRNOIVI checks your designation for protectability, i.e. whether it meets all the requirements established by law for granting legal protection.

What is checked during the qualification examination?

• Distinctiveness: Is your designation capable of distinguishing your goods/services from those of others? Is it not generally used, descriptive, indicating the type, quality, quantity, properties, purpose, value of goods/services, place and time of their manufacture or sale?
• Absence of deceptiveness: Does your designation mislead consumers about the goods/services, the person who produces/supplies them, or about their quality, origin, etc.?
• Absence of contradiction to public order, principles of humanity and morality: Does your designation not contradict generally recognised norms of morality, does it not contain offensive, obscene words, calls to violence, etc.?
• Absence of identity and similarity with previously registered TMs or applications for registration: Is your designation not identical or similar to such an extent that it can be confused with other TMs registered or applied for registration for similar goods/services?
• Other grounds for refusal: Is your designation not such that:
  • Reproduces the names of works of science, literature and art known in Ukraine or quotations and characters from them, works of art and their fragments without the consent of copyright owners or their legal successors.
  • Contains surnames, first names, pseudonyms and derivatives thereof, portraits and facsimiles of persons known in Ukraine without their consent.
  • Reproduces industrial designs, the rights to which belong to other persons in Ukraine (without their consent).
  • Reproduces names of objects belonging to the world cultural heritage (without authorisation).

What happens after the qualification examination?

• If everything is in order: If the designation meets all the requirements for protection, the SCRNOIVI takes a decision on registration of the TM.
• If there are grounds for refusal: If the examination reveals grounds for refusal of registration (in whole or in part), the SCRNOIVI sends the applicant a preliminary refusal of registration. This document will state the reasons for the refusal and, for example, invite the applicant to provide arguments in favour of registration.

Qualification examination is a complex process that requires specialised knowledge. UKRNOIVI experts evaluate designations from the point of view of legislation and existing practice. Receiving a preliminary refusal does not mean that TM registration is impossible. In other words, it only means that you need to provide additional arguments or make changes to the application (e.g. change the designation or limit the list of goods/services).

If you do not agree with the decision of the examination, you can appeal it to the UKRNOIVI Appeal Chamber or to the court.

The qualification examination is, so to speak, the “moment of truth” for your trade mark. Its results will determine whether you get legal protection for your brand.

Subsection 5.3: Correspondence with UKRNOIVI

During the examination of an application (both formal and qualification), UKRNOIVI may send you requests, notices and, in other words, other documents. It is important to respond to these letters in a timely and correct manner, as the fate of your application depends on it.

What documents can UKRNOIVI send?

• Notification of filing date: This is a positive document which means that your application has been formally examined and accepted for consideration.
• Notice of Deficiencies: This is a request to correct deficiencies identified during the formal examination (e.g., missing document, error in the application).
• Preliminary refusal of registration: This is a document in which UKRNOIVI informs that the TM cannot be registered (in whole or in part) and, for example, states the reasons for the refusal.
• Requests: These are documents in which UKRNOIVI may request additional information, clarifications, documents necessary for examination.
• Registration Decision.
• Other documents: For example, notice of change of address for correspondence, notice of extension of time to respond, etc.

How to respond to documents from UKRNOIVI?

1. Read all documents carefully: Do not ignore letters from UKERNOIVI. Read the contents of each document carefully to understand what is required of you.
2. Observe deadlines: UKRNOIVI sets deadlines for responding to its requests and communications. This deadline is usually two months, but may be different, for example.  Don’t miss the deadline!  If you fail to respond in time, you can apply for an extension of the deadline (a fee is payable for this).
3. Provide full and complete responses: Your responses to UKRNOIVI requests must be full, complete and reasoned. It is not enough to simply write “agree” or “disagree”. It is necessary to justify your position, cite evidence, refer to legislation (if necessary).
4. Remedy deficiencies: If UKRNOIVI points out deficiencies in the application, remedy them within the deadline.
5. Keep copies: Always keep copies of all documents you send to UKERNOIVI and copies of all documents you receive from UKERNOIVI.
6. Write competently: Your answers should be written in competent Ukrainian, without mistakes and, so to speak, misspellings.
7. If necessary, consult: If you have difficulties in responding to a UKRNOIVI request, it is better to ask a patent attorney or a lawyer for help.

It is recommended that all correspondence with UKRNOIVI be in writing (send letters by post or via the electronic filing system). Be sure to include your application number in each letter.

If you change your address for correspondence, be sure to inform UKRNOIVI.

Correct and timely correspondence with UKRNOIVI is the key to successful registration of your trade mark.

VI. Step 6: Obtaining a certificate

If your application has successfully passed all stages of examination and UKRNOIVI has decided to register your trade mark, you are to be congratulated! The last step is to obtain a certificate. It is, in other words, like receiving a diploma after a successful defence: all the exams have been passed, the work has been done, all that remains is to receive confirmation of your rights. In this section, we will look at the fees to be paid before receiving the certificate and the actual procedure for obtaining it.

Subsection 6.1: Payment of publication and issuance fees

Once UKRNOIVI has decided to register your trade mark, you need to pay two fees:

1. TM Issuance Publication Fee: This fee is paid for the publication of information about your TM in the official Industrial Property Gazette. Publication is, in other words, a prerequisite for TM rights to take effect.
2. State fee for the issuance of a certificate: This fee is paid directly for the issuance of a trade mark certificate.

Fee amounts:

• Publication fee: The amount of the fee depends on the number of ICTU classes for which the TM is registered and whether the designation is colour or black and white. Up-to-date fee amounts can be found on the UKRNOIVI website.
• State fee for issuance: The amount of the fee also depends on the number of ICTU classes.

Where to find information about the amount of fees and details for payment?

• Official website of UKRNOIVI: Section “Marks for Goods and Services”, subsection “Fees”.

How to pay the fees?

• Through the bank: You can pay the fees in any bank of Ukraine. To do this, you need to print out a receipt with details (from the UKRNOIVI website) and go to a bank cash desk.
• Through payment terminals: Some payment terminals also provide an opportunity to pay TM registration fees.
• Online: Online payment options should be checked on the UKRNOIVI website.

Fees should be paid within three monthsfrom the date of receipt of the decision on TM registration.

In the purpose of payment it is obligatory to indicate what the fee is paid for (for example, “Fee for the publication of a mark for goods and services under application No….”, “State fee for the issue of a certificate for a mark for goods and services under application No….”), as well as the number of the application.

Documents on payment of fees (receipts, payment orders) must be submitted to UKRNOIVI. This can be done by mail, in person or, for example, through the electronic filing system (if you applied online).

If you fail to pay the fees by the due date, the decision to register your trade mark will be cancelled.

Payment of the fees is, so to speak, the final financial chord before obtaining a certificate for your trade mark.

Subsection 6.2: Obtaining a TM certificate

Once you have paid the publication and issuance fees and submitted the supporting documents to UKRNOIVI, the only thing left to do, in other words, is to wait for the certificate itself.

How is the certificate obtained?

1. Publication of information: First, UKRNOIVI publishes information about the issuance of your TM in the official gazette “Industrial Property”. From the date of this publication, your TM is considered valid and you acquire the exclusive right to use it.
2. Issuance of the certificate: After publication, UKRNOIVI issues a trade mark certificate. The certificate is, so to speak, an official document that confirms your ownership of the TM.
3. Ways of obtaining it:
   • In person at UKRNOIVI: You can receive the certificate in person at UKRNOIVI (at the address: 1 Glazunova str., Kyiv). To do this, you need to have an identity document (passport) and, preferably, a copy of the decision on TM registration.
   • By post: UKRNOIVI can send the certificate by post to the correspondence address given in the application.
   • Through a representative: If you have a representative (e.g. a patent attorney), he/she can obtain the certificate by power of attorney.

What does the TM certificate contain?

• The number of the certificate.
• Date of issue of the certificate.
• Image of your TM.
• Information about the owner of the TM (full name or name, address).
• List of goods and services for which the TM is registered (in accordance with ICTU).
• Date of application and date of TM registration.
• Other information.

Carefully check all the data on the certificate. If you find any errors, contact UKRNOIVI immediately to correct them.

The TM certificate is valid for 10 years from the date of application. This period may be extended an unlimited number of times (each time for 10 years), subject to payment of the relevant fee.

Keep the original certificate, for example, as an important document.

Obtaining a trade mark certificate is the final stage of registration, which, so to speak, confirms your status as the owner of the TM and gives you the right to use it legally.

VII. Common mistakes and how to avoid them

Independent registration of a trade mark is, of course, saving money, but also a certain risk. Ignorance of the nuances of the procedure, inattention, misinterpretation of the law can lead to errors, which, in turn, may entail a delay in registration, additional costs or even refusal of registration.

Let us consider the most common mistakes made by applicants and, for example, give advice on how to avoid them:

1. Incorrect choice of designation:
   • Error: Selection of a designation that does not fulfil the requirements for protectability (descriptive, generic, deceptive, etc.).
   • How to avoid: Carefully study the requirements for designations (subsection 1.1), conduct a preliminary search (subsection 1.2).
2. Failure to conduct or poor quality of preliminary search:
   • Error: Ignoring the preliminary search or conducting it only on the basis of the name, without taking into account ICTU classes and similar designations.
   • How to avoid: Conduct a thorough preliminary search of all available databases (subsection 1.2), use different spellings of the designation, take into account the ICTU classes.
3. Incorrect choice of ICTC classes:
   • Error: Choosing too narrow or too broad a list of classes, choosing classes that do not correspond to the actual activity.
   • How to avoid: Carefully study the structure of the ICTU (subsection 2.1), identify your main activity and potential areas of development, select classes that describe your goods/services as accurately as possible (subsection 2.2).
4. Errors when completing the application:
   • Error: Incorrect information about the applicant, errors in the description of the TM, incorrect indication of the classes of ICTU, lack of signature, etc.
   • How to avoid: Carefully fill in the application form (subsection 3.1), check all data before submission, follow the instructions.
5. Incorrect design of the TM image:
   • Error: Submission of an image that does not meet the technical requirements (wrong format, size, resolution, etc.).
   • How to avoid: Comply with TM image requirements (subsection 3.2).
6. Incorrect compilation of the list of goods and services:
   • Error: Use of generic phrases, inconsistency with ICCT terminology, inclusion of goods/services that do not belong to any ICCT class.
   • How to avoid:  Use precise wording from the ICCT, be specific but not too narrow, group goods/services by class (subsection 3.3).
7. Failure to pay fees on time:
   • Error: Missing the deadlines for payment of application, publication, and certificate fees.
   • How to avoid: Carefully follow the deadlines set by UKRNOIVI, pay fees on time (subsections 4.2, 6.1).
8. Incorrect correspondence with UKRNOIVI:
   • Error:Ignoring UKRNOIVI requests, late responses, incomplete or unargumented responses.
   • How to avoid:Read carefully all documents from UKRNOIVI, observe deadlines for response, provide full and complete answers, eliminate deficiencies (subsection 5.3).
9. Not using EDS:

• Error: Not using EDS for filing.
• How to avoid: Obtain an EDS and use it.

1. Ignoring legislative changes:
   • Error:  Failure to track changes in trade mark legislation.
   • How to avoid: Regularly review profile resources, follow UKRNOIVI news.

Remember that trade mark registration is, in other words, a legal procedure that requires care and knowledge of the law. Avoiding these common mistakes will significantly increase your chances of successful TM registration.

VIII. The alternative: contacting a patent attorney

Self-registration of a trade mark is undoubtedly a way to save money. However, as we have found out, this process has many nuances and, so to speak, pitfalls. If you are not confident in your abilities, do not have time to study all the intricacies of the procedure or just want to minimise the risks, it is worth considering an alternative – turning to a patent attorney.

Who is a patent attorney?

A patent attorney is a specialist in the field of intellectual property who has specialised education, passed a qualification exam and, for example, obtained a certificate for the right to engage in patent-attorney activities. Patent attorneys represent the interests of applicants and owners of intellectual property rights (including trade marks) before UKRNOIVI and other state authorities.

Advantages of contacting a patent attorney:

• Professionalism: Patent attorneys have in-depth knowledge of trade mark law and practical experience in TM registration.
• Time saving: You will not have to study all the intricacies of the procedure yourself, fill in the application form, correspond with UKRNOIVI.
• Minimisation of risks: A patent attorney will help you avoid mistakes that may lead to a delay in registration or to a refusal.
• Comprehensive approach: A patent attorney can not only register a TM, but also, for example, provide other services related to intellectual property protection (conduct a preliminary search, develop a brand protection strategy, prepare a licence agreement, etc.).
• Representation of interests: A patent attorney will represent your interests before UKRNOIVI and, if necessary, before the Chamber of Appeal or in court.

Disadvantages of contacting a patent attorney:

• Cost of services: The services of a patent attorney are chargeable. The cost may vary depending on the scope of work, qualification of the specialist and region.

Self-registration vs. registration with a patent attorney:

The choice between registering your TM yourself and contacting a patent attorney depends on your individual circumstances, e.g. availability of time, knowledge, financial capacity and willingness to take risks.

Conclusions

So, registering a trade mark on your own is real, but it requires time, attention and knowledge. This guide will help you through all the steps, however, if you want to save time and minimise risks, it is better to contact a patent attorney. Remember, TM registration is an important step for the protection and development of your business. Do not neglect it!

We also recommend you review the article “Registering a trade mark: a necessity for your business“.