International trademark registration: opportunities for Ukrainian entrepreneurs

Is your business successfully developing in Ukraine and are you thinking of entering foreign markets? Or maybe you already export your goods or services abroad? In this case you should definitely take care of internationalregistration of your trademark (TM) at .

Many entrepreneurs mistakenly believe that registration of TM in Ukraine automatically gives protection in other countries. But this is not true! TM registration in Ukraine provides legal protection only on the territory of Ukraine. To protect your brand abroad, you need to undergo the procedure of international registration.

Why is this necessary? What are the ways of international registration? How can a Ukrainian entrepreneur do it? These and other questions will be answered in this article.

I. Why do I need international registration of TM?

Before we look into the intricacies of the international registration procedure, let’s find out why Ukrainian entrepreneurs need it at all. What advantages does trade mark protection abroad bring? And why, for example, is it not enough to register a TM only in Ukraine? In this section we will look at the territorial principle of TM protection and the benefits that a business gains by protecting its brand in foreign markets.

Sub-section 1.1: The territorial principle of TM protection

Trade mark rights are territorial in nature. This means that they are valid only in the country (or region, in the case of regional registration) where the TM is registered.

In other words, if you have registered your TM in Ukraine, it does not mean that it is automatically protected, for example, in Poland, Germany, the USA or any other country. To obtain legal protection in these countries, you need to register your TM there.

Why does the territorial principle apply?

• Sovereignty of States: Each state has the sovereign right to determine for itself which signs can be registered as trade marks on its territory and what rights are granted to TM owners.
• Different legislation: Trade mark legislation may vary from country to country. What may be registered as a TM in one country may not meet the legal requirements of another country.
• Independence of examination: Each country conducts an independent examination of TM registration applications to ensure that the designation complies with its national requirements.

What does this mean for Ukrainian entrepreneurs?

It means that if you plan to do business abroad (export goods/services, open branches, provide franchises), you need to register your TM in the countries where you plan to operate. Otherwise, you run the risk that, for example, someone else will register your TM (or a similar designation) in that country and prohibit you from using your brand.

The territorial principle of TM protection is, so to speak, a fundamental rule to know and take into account when planning international activities.

Subchapter 1.2: Brand protection in foreign markets

International trade mark registration is not just a formality, but, in other words, a necessary step to protect your brand in foreign markets. It gives Ukrainian entrepreneurs a number of advantages:

• Protection against brand copying: If you do not register your TM in another country, someone else can do so and, in fact, “steal” your brand. You will not be able to use your TM in that market and may even be prosecuted for its illegal use.
• Unrestricted export: If you export goods under your TM but have not registered it in the country of import, your goods may be detained at customs as counterfeit. International TM registration avoids these problems.
• Increasedconsumer confidence: Having a registered TM indicates the seriousness of your business and, for example, increases consumer confidence in your brand.
• Brand recognition: International TM registration helps to increase your brand recognition in foreign markets.
• Licensing and franchising opportunities: If you plan to grant licences for the use of your TM or develop a franchise network abroad, you need an international TM registration.
• Increase of company value: Having registered TMs (including abroad) increases the value of your company as an intangible asset. This can be, for example, important when attracting investment or selling a business.
• Protection against unfair competition: A registered TM allows you to fight unfair competition from other companies that may try to use similar designations to promote their goods/services.

So, international TM registration is not an expense, but an investment in protecting and, so to speak, developing your business internationally.

II. Methods of international registration of TM

You are convinced of the necessity of international registration of your trade mark. Now, for example, the question arises: how to do it? What are the ways of protecting TM abroad? In this section, we will look at the different options for international TM registration, their advantages and disadvantages, so that you can choose the most suitable one for your business.

Subsection 2.1: National procedure

So, you have decided to protect your trade mark abroad. What options are there? The most obvious but, in other words, not always the most convenient way is the national registrationprocedure.

What is the national procedure?

It is the filing of applications for TM registration directly with the patent offices of each country where you want protection. That is, if you want to protect your TM in Poland, Germany and France, you need to file three separate applications: with the Polish patent office, with the German patent office and with the French patent office.

Each application must be made in accordance with the legal requirements of the particular country. This means that you need to:

• Study each country’s trade mark legislation.
• Prepare an application in the language of the country (or in one of the official languages, if there are several).
• Pay the fees established in each country.
• If necessary, correspond with the patent office of each country.

Disadvantages of the national procedure:

• High costs: You will have to pay filing fees, examination fees, publication fees, certificate fees in each country. In addition, you will most likely need the services of local patent attorneys, which, so to speak, will also incur additional costs.
• Need to know the laws of each country: Trade mark laws can vary significantly from country to country. You will need to understand all the nuances to ensure that your application is correct and your registration is not refused.
• Need to communicate in different languages: You will have to correspond with patent offices in different languages, which can be difficult if you do not speak those languages.
• Need for local patent attorneys: In most countries, non-resident applicants are required to act through local patent attorneys. This is an additional cost and, for example, the need to find a reliable professional.
• Duration of the procedure The procedure may take different lengths in each country.

A national procedure may be appropriate if you only need protection in one or two countries. But if you plan to do business in many countries, this method, in other words, will be too expensive and complicated. In such a case, it is better to use other, more convenient systems of international TM registration, which we will discuss below.

Subsection 2.2: The Madrid System

The Madrid System international registration of marks is, without exaggeration, the most convenient and cost-effective way to obtain protection for your trade mark in several countries around the world. The system is administered by the World Intellectual Property Organisation (WIPO), headquartered in Geneva, Switzerland.

Principle of the Madrid System:

1. One international application: You file one international application with WIPO, in which you indicate all the countries where you wish to obtain protection for your TM.
2. One language: The application is filed in one language (English, French or Spanish). You do not need to translate the application into the languages of each country.
3. Single fee: You pay a single WIPO fee, which includes a base fee and individual fees for each designated country. This is usually much cheaper than paying the fees for each country separately.
4. Centralised management: You manage your international registration through WIPO. You do not need to communicate with the patent offices of each country separately (unless questions arise during national examination).

Advantages of the Madrid system:

• Time saving: Instead of filing several applications in different languages with different patent offices, you file a single application in one language at WIPO.
• Cost savings: WIPO’s single fee is generally lower than the fees you would pay for national registration in each country. You also save on translators and, for example, patent attorneys (in most cases).
• Simplified procedure: The application and administration of the registration is much simpler than with a national registration.
• Expandable: You can expand the scope of your international registration over time by adding new countries.

Basic registration or basic application in Ukraine:

In order to benefit from the Madrid system, a Ukrainian entrepreneur must have a basic TM registration in Ukraine or a basic application filed with UKRNOIVI.

• Basic registration: This is a trade mark already registered in Ukraine.
• Basic application: This is an application for registration of a TM that has been filed with UKRNOIVI, but has not yet been examined and registered.

The existence of a basic registration or basic application is, in other words, a prerequisite for filing an international application under the Madrid system. This is because the international registration is dependent on the basic registration/application for the first five years. That is, if the basic registration is cancelled or the basic application is rejected, the international registration will also be cancelled (in all countries or in those where it was based on that registration/application).

The Madrid system is, so to speak, a great tool for Ukrainian entrepreneurs who want to protect their trade marks abroad. It allows to do it quickly, conveniently and with minimal costs.

Sub-section 2.3: Regional systems (EU, African Intellectual Property Organisation)

In addition to the Madrid system, which has a global scope, there are also regional systems for the registration of trade marks. These systems allow obtaining TM protection in several countries belonging to a certain region by filing a single application.

Let us consider the two most important regional systems for Ukrainian entrepreneurs:

1. European Union (EUIPO):
   • EUIPO is the Intellectual Property Office of the European Union.
   • Registration of a TM with EUIPO gives protection in all 27 EU member states.
   • A single application is submitted in one of the official languages of the EU (English, French, German, Spanish or Italian).
   • A single fee is payable.
   • The registration procedure is centralised.
   • The European Union Trade Mark (EUTM) is valid for 10 years and can be renewed an unlimited number of times.
2. Advantages:
   • Protection in all EU countries on a single application.
   • Time and cost savings (compared to national registration in each EU country).
   • Simplified procedure.
   • Centralised management.
3. Organisation Africaine de Propriété Intellectuelle (OAPI):
   • OAPI is an organisation that brings together 17 countries in Africa (predominantly francophone).
   • Registration of a TM with OAPI gives protection in all member countries of the organisation.
   • A single application is submitted in French.
   • A single fee is payable.
   • The registration procedure is centralised.
4. Benefits:
   • Protection in 17 African countries on a single application.
   • Time and cost savings (compared to national registration in each country).
   • Simplified procedure.

When is it a good idea to use regional systems?

Regional systems are particularly useful if you plan to do business in most countries in a particular region. For example, if you want to export your goods to EU countries, registering an EUTM will be much more favourable than registering a TM in each country separately.

The choice between the Madrid system and the regional systems depends on your specific needs and the geography of your business, so to speak. If you need protection in countries that are not part of any regional system, or if you want more flexibility in the choice of countries, it is better to use the Madrid system.

III. Procedure of international registration under the Madrid system (for Ukrainian entrepreneurs)

We have found out that the Madrid system is a convenient and cost-effective way of international registration of TM. Now let us consider in detail how a Ukrainian entrepreneur can take advantage of this system. In other words, how to go through the registration procedure, from preparing documents to, for example, receiving confirmation of registration.

Subsection 3.1: Basic registration/application in Ukraine

As mentioned earlier, in order to file an international application under the Madrid system, a Ukrainian entrepreneur must have a basic TM registration in Ukraine or a basic application, filed with UKRNOIVI. This, in other words, is the foundation on which the international registration is built.

What is a basic registration?

Basicregistration is a trade mark already registered in Ukraine. That is, you have already gone through the whole procedure of TM registration in UKRNOIVI and obtained a certificate for the mark for goods and services.

What is a basic application?

A basic application is an application for TM registration, which has been submitted to UKRNOIVI, but hasnot yet been examined and not registered. That is, you have just submitted the documents and are waiting for UKRNOIVI decision.

Why do I need a basic registration/application?

• Dependency principle: An international registration under the Madrid system is dependent on the basic registration/application for the first five years. This means that if the basic registration is cancelled (for example, by court order) or the basic application is rejected (for example, because it does not meet the requirements of protectability), the international registration will also be cancelled (in all countries or in those where it was based on that registration/application).
• Confirmation of rights: The basic registration/application confirms that you have certain rights to the designation in Ukraine and serves as a basis for extending these rights to other countries.

Which is better: basic registration or basic application?

• Basic registration: More reliable option, as the TM is already registered in Ukraine.
• Basic application: Allows a faster international application without waiting for the completion of registration in Ukraine (which may take 12-18 months or more). But there is a risk that the application will be rejected, in which case the international registration will also be cancelled.

The choice between a basic registration and a basic application depends on your priorities (speed or reliability) and, for example, on the degree of certainty that your TM meets the requirements for protectability.

Important!

• The international application must be identical to the basic registration/application. That is, the designation, the owner and the list of goods/services (at least part of them) must be the same.
• If you want to expand the list of goods/services in the international application, you first need to make the appropriate changes in the basic registration/application in Ukraine.

In other words, before filing an international application, make sure that you have a basic registration or basic application in Ukraine and that they are properly executed.

Subsection 3.2: Preparing and filing an international application

Once you have obtained a basic TM registration in Ukraine or filed a basic application with UKRNOVI, you can proceed to the next stage, so to speak, which is the preparation and filing of an international application under the Madrid system.

1. Filling in the international application form:

• Application form: An international application is filed using the special form MM2, which is approved by WIPO.
• Where to get the form: The application form can be downloaded from the WIPO website
• Language of filling: The application can be filled in English, French or Spanish. If the basic application/registration with the Ukrainian National Bureau of Intellectual Property is in Ukrainian, it is recommended to fill in the international application in English as the most commonly used language.
• Information to be provided:
  • Information about the applicant (full name or company name, address).
  • Information about the basic registration/application (number, date).
  • TM image (identical to the image in the basic registration/application).
  • List of goods and services (must be identical or narrower than the list in the basic registration/application).
  • Countries where you want to obtain protection (countries participating in the Madrid system).
  • Other information (if necessary).

2. Payment of fees:

• What fees need to be paid:
  • Basic fee: Paid for filing an international application.
  • Individual fees: Payable for each country listed. The amount of the individual fee is set by each country separately.
  • Additional fee: Paid for each class of the Nice Classification in excess of three.
• How to calculate the amount of fees: There is a fee calculator on the WIPO website that allows you to calculate the total amount.
• How to pay the fees: Fees are paid in Swiss francs (CHF) directly to WIPO. Payment methods are available on the WIPO website.

3. Filing an application:

• Where to file: An international application is filed through UkrNIPO at. You cannot file directly with WIPO.
• Methods of filing:
  • Online: via the electronic submission system UKRNOVI (recommended). You will need an electronic digital signature (EDS).
  • By mail: To the address of UKRNOVI.
  • In person: To UKRNOVI.
• What happens after filing: UKIPO checks the application for compliance with the formal requirements and, if everything is in order, forwards it to WIPO.

Please note!

Careful completion of the application form in accordance with the instructions is critical. Inaccuracies or errors in the application may cause delays in the registration process or even lead to rejection.

Full payment of all required fees is mandatory.

Be sure to keep a copy of the filed application, as well as all documents confirming payment of the fees.

After filing your application, WIPO will send you a notification containing the international registration number. This number is necessary to monitor the status of your application, so please keep it safe.

Subsection 3.3: Examination of the Application

Once an international application is received by WIPO, its examination begins, which, in other words, is divided into two main stages. First, WIPO conducts formal examination. It checks whether the application form is correctly completed, whether the fees have been paid, whether the representation of the TM meets the requirements, and whether the goods and services are correctly classified according to the ICTU. If the application fulfils the formal requirements, WIPO registers the TM in the International Register, publishes this information in the official gazette (WIPO Gazette of International Marks) and sends the applicant a certificate of international registration. It is important to understand that this certificate is not an analogue of the national certificate, but only confirms the fact of registration in the International Register. In case of deficiencies, WIPO sends a notice of irregularity (“irregularity letter”), setting a deadline for their elimination.

The second stage,substantive examination, takes place at the national patent offices of the countries indicated in the application. WIPO sends the notification of the international registration to these offices, and each of them carries out the examination on the basis of national legislation. The national Offices check whether the TM meets the requirements of protectability, which may differ from those of Ukraine. For example, there may be stricter rules regarding distinctiveness, or, say, special grounds for refusal.

Based on the results of the examination, the national Office may either grant protection for the TM in its territory or issue a preliminary refusal of registration (in whole or in part). This refusal is forwarded by WIPO to the applicant, who has the opportunity to present arguments in favour of registration, usually with the assistance of a local patent attorney. If the arguments do not convince the Office, it issues a final refusal. The time limits for substantive examination are set out in national legislation and generally range from 12 to 18 months from the date of notification to WIPO.

It should be clearly recognised that it is the national patent offices, not WIPO, that conduct the substantive examination . Each office makes an independent decision, so a TM may be registered in some countries and rejected in others. A provisional refusal is not a judgement, as the applicant has the right to appeal the decision. Examination, in other words, is a key step in determining whether a TM will receive protection in the selected countries.

Sub-section 3.4: Possible difficulties and ways to overcome them

The process of international registration of TMs under the Madrid system, although simplified, can still encounter certain difficulties. Let us consider, in other words, the most common problems and how they can be solved.

• Preliminary refusal of registration in one or more countries:
  • Reasons: Non-compliance of the TM with the requirements of protectability (insufficient distinctiveness, deceptiveness, etc.), presence of similar TMs.
  • Solutions: Presenting arguments in favour of registration (often through a local patent attorney), amending the application (restriction of the list of goods/services, change of the designation), appealing the decision.
• Objections from third parties:
  • Reasons: After publication of the international registration, others may oppose the registration of your TM.
  • Remedies: Presentation of arguments in defence of registration, negotiation with the opponent (e.g. licence agreement), litigation.
• Inconsistencies identified by WIPO:
  • Causes: Errors in form, image problems, misclassification.
  • Solutions: Correct discrepancies within a specified timeframe.
• Problems with the basic registration/application:
  • Causes: Cancellation of the basic registration or refusal to register the basic application within the first five years.
  • Remedies: Transformation – filing directly with national Offices within three months from the date of cancellation of the international registration, maintaining the filing date of the international application.

General advice:

• Prepare carefully for filing an international application.
• Study the laws of the countries where protection is required.
• If necessary, contact patent attorneys.
• Respond to all requests in a timely manner, in other words, do not hesitate.

International TM registration is a process that requires attention, but with the right approach it will allow you to protect your brand abroad.

IV. Cost of the international registration

One of the key issues in planning the international registration of TM is, of course, the cost of this procedure. Let’s take a look at what thecost of aninternational registration under the Madrid system consists of.

The cost of an international registration under the Madrid system includes several types of fees, which are paid to WIPO in Swiss francs (CHF):

1. Basic fee: This is a fixed fee for filing an international application. It is payable irrespective of the number of countries indicated in the application.
2. Individual fees: These are fees that are set by each participating country in the Madrid system. Individual fees can vary significantly from country to country. For example, registration may cost CHF 100 in one country and CHF 500 in another.
3. Additional fees:
   • Fee for each ICTU class over three: If you list more than three ICTU classes in your application, an additional fee is payable for each additional class.
   • Additional words fee (for some countries): Some countries impose an additional fee if the description of the goods/services exceeds a certain number of words.

The exact cost of an international registration can be calculated using the fee calculator on the WIPO website.

You will need to enter the following information:

• Type of applicant (individual or legal entity).
• Country of origin of the application (Ukraine).
• Countries where you want to obtain protection.
• The number of ICTU classes.
• Whether the designation is coloured.

The calculator will automatically calculate the total amount of fees in Swiss francs.

Let’s assume that you are a Ukrainian entrepreneur (individual) who wants to register a black and white TM in Poland, Germany and the Czech Republic for goods of the same ICTU class. The approximate cost of registration (as of 2024, excluding possible additional fees) may be, for example, about 800-1000 CHF. But this is only a rough estimate. The exact amount will depend on the individual fees set by each country.

Remember that the cost of an international registration under the Madrid system is generally lower than the cost of a national registration in each country individually. Fees are payable to before filing. If the fees are not paid in full, the application will not be processed. Since the exchange rate of the Swiss franc can fluctuate, it is advisable to have a certain reserve of funds in case of exchange rate fluctuations, in other words, it is better to have a little more money in your account.

Careful budget planning is an important component of a successful international TM registration.

V. Maintenance and renewal of the international registration

The international registration of a trademark is not perpetual protection. It is limited to 10 years from the date of recording in the WIPO International Register, but it can be renewed an unlimited number of times, each time for another 10 years. It is like a season ticket: it must be renewed regularly.

You can renew your registration within six months before the end of the 10-year term. If you are a little slow, there is a grace period of six months after its expiration, but you will have to pay extra for renewal during this period. To renew your registration, you must submit an application to WIPO (conveniently done online via the WIPO website) and pay the fees. The renewal fee consists of a basic fee, individual fees for each country and, if necessary, additional fees. If the renewal is not taken care of in time, the international registration will unfortunately be cancelled.

During the term of validity of the registration, circumstances may arise that require changes to be made. For example, if the owner of the TM has changed (as a result of a business sale or reorganisation), the address of the owner has changed, the name of a legal entity or the full name of an individual has changed (say, after a change of company name or marriage), it is necessary to update the data in the International Register. It is also possible to limit the list of goods/services for which the registration is valid in one or several countries, or to refuse protection in a certain country at all.

All these changes are made centrally through WIPO by submitting an application (forms are available on the WIPO website) and, if necessary, paying fees. It is convenient to do this online.

In other words, keeping your international registration up to date is like caring for a plant: regular watering (renewal) and timely replanting (amendments) will ensure its longevity and protect your brand on the international stage.

Conclusions

So, we have considered in detail the process of international registration of trade mark and, in particular, the opportunities offered by the Madrid system for Ukrainian entrepreneurs. Let’s summarise the results.

International TM registration is a necessary step for those who plan to do business abroad or who already export their goods/services. It protects your brand from copying and unfair competition, allows you to freely use your TM in foreign markets, increases consumer confidence and, in other words, contributes to the growth of the company’s value.

The Madrid system is a convenient, cost-effective and efficient tool for international registration, which allows you to obtain TM protection in many countries of the world by submitting only one application. It greatly simplifies the registration procedure, saves time and money, and provides centralised registration management.

Of course, the process of international registration has its own nuances and may be accompanied by certain difficulties. But with careful preparation, attention to detail and, if necessary, involvement of qualified specialists (patent attorneys), you will be able to successfully protect your brand at the international level.

In other words, if you want to expand your business outside Ukraine, do not ignore the issue of international trade mark registration. This is an investment in the future of your brand, which will undoubtedly pay off. To further convince yourself of the importance of TM registration as such, we suggest you read our article “Trade mark registration: a necessity for your business“.