Registering a trademark in Ukraine: how to avoid mistakes

Introduction

Registering a trade mark is an important step to protect your business, but this process has its pitfalls. In this article, we will look at typical mistakes that should be avoided when registering a TM in Ukraine in order to successfully register a brand. 

Section 1 

Mistake #1: Insufficient similarity search. Carefully conducted search for similar trade marks is the foundation of successful registration. Ignoring this stage may result in the refusal of UKRNOIVI to register your TM, loss of time and money.

Subsection 1.1. Why is it important to conduct a search?

An effective similarity search is the key to a successful tm registration. Here are some practical tips to help you conduct it correctly:

1. Identify the key elements of your brand: This can be a word mark, a logo, a colour scheme or a combination of these.
2. Use different databases: Do not limit yourself to the UKRNOIVI database. Check also international databases such as TMview and DesignView. This will allow you to find similar trade marks registered in other countries.
3. Pay attention to ICTU classes: Check for similar trade marks not only in the classes in which you plan to register your TM, but also in related classes.
4. Consider phonetic and visual similarities: Even if a trade mark is spelt differently, it may be recognised as similar if it sounds or looks similar to yours.
5. Seek professional help: If you are not confident in your abilities, it is better to contact a patent attorney. Specialists are experienced in conducting searches and can help you avoid mistakes.

Resources for searching:

• UKRNOIVI database: Allows you to find registered and applied for trade marks in Ukraine.
• TMview: International trade mark database, which provides access to information from registers of different countries.
• DesignView: An international database of industrial designs.

By following these tips, you will be able to conduct an effective similarity search and successfully register your brand. Remember that a thorough search is an investment in the security of your business.

Subsection 1.2. How to conduct a proper search?

An effective similarity search is the key to a successful tm registration. Here are some practical tips to help you conduct it correctly:

1. Identify the key elements of your brand: This can be a word mark, a logo, a colour scheme or a combination of these.
2. Use different databases: Do not limit yourself to the UKRNOIVI database. Check also international databases such as TMview and DesignView. This will allow you to find similar trade marks registered in other countries.
3. Pay attention to ICTU classes: Check for similar trade marks not only in the classes in which you plan to register your TM, but also in related classes.
4. Consider phonetic and visual similarities: Even if a trade mark is spelt differently, it may be recognised as similar if it sounds or looks similar to yours.
5. Seek professional help: If you are not confident in your abilities, it is better to contact a patent attorney. Specialists are experienced in conducting searches and can help you avoid mistakes.

Resources for searching:

• UKRNOIVI database: Allows you to find registered and applied for trade marks in Ukraine.
• TMview: International trade mark database, which provides access to information from registers of different countries.
• DesignView: An international database of industrial designs.

By following these tips, you will be able to conduct an effective similarity search and successfully register your brand. Remember, a thorough search is an investment in the security of your business.

Section 2: Mistake #2: Choosing the wrong ICTU classes

The International Classification of Goods and Services (ICCS) is the system used to classify goods and services for trade mark registration purposes. Choosing the right ICDS classes is critical to ensure that your trade mark is properly protected.

Subsection 2.1: The importance of choosing the right classes

The correct choice of classes of the International Classification of Goods and Services (ICGS) is the foundation of effective protection of your trade mark. It clearly defines the scope of your registration, i.e. for which goods and services your TM will be legally protected. Incorrect or incomplete selection of classes can significantly limit this protection and lead to serious negative consequences for your business.

Imagine a situation: you manufacture and sell footwear, and you have registered your trade mark only in class ICTS 25, which covers clothing. At first glance, everything is logical, because shoes and clothes are wardrobe items. However, from a legal point of view, this is a critical error. If you do not include Class 18 (leather and leather goods; travelling goods, handbags), a competitor can easily use an identical or similar trade mark to manufacture and sell handbags, even if they are made of the same materials and have a similar design.

Why is the right choice of ICTU classes so important?

• Comprehensive protection: Careful selection of all relevant ICTU classes provides comprehensive protection for your trade mark, covering all the goods and services you offer now, as well as those you plan to offer in the future. This creates a strong legal barrier against unfair competition.
• Minimising the risk of conflicts: The correct definition of ICTU classes reduces the likelihood of clashes with owners of similar trade marks registered in other, even related, classes. This avoids costly and time-consuming litigation.
• Optimal use of your investment: Registering a trade mark is a strategic investment in your brand. Choosing the right ICCT classes ensures that this investment is maximised, ensuring that your business and its reputation are fully protected.
• Business expansion opportunities: If you plan to expand your product or service range, registering yourtrade mark in the appropriate ICTU classes in advance will help you avoid problems in the future.

Incorrect choice of ICTS classes makes your trade mark vulnerable to copying and illegal use, which can lead to significant financial losses and damage your brand image. Therefore, pay special attention to this stage of tm registration and, if necessary, consult with experienced intellectual property specialists.

Subsection 2.2: How do I define the correct classes?

Determining the correct ICCT classes may seem like a daunting task, but by following certain steps, you can do it effectively. Here are some practical tips:

1. Clearly define all your products and services: Make a detailed list of all products and services you offer now, as well as those you plan to offer in the near future. Don’t limit yourself to general categories. The more detailed the list, the better.
2. Use the official list of ICDS classes: Find the current version of the International Classification of Goods and Services (ICDS) on the website of UKRNOIVI or the World Intellectual Property Organisation (WIPO). Carefully study the description of each class and the list of goods and services it includes.
3. Find the relevant classes for each good/service: Compare your list of goods and services with the description of each ICCT class. Select the classes that most closely match your goods and services. If a product or service can be assigned to more than one class, choose the one that is most specific.
4. Consider related classes: In addition to the main classes, also consider related classes that may be relevant to your business. This will help provide broader protection for your trade mark.
5. Seek specialist advice: If you are in doubt as to the correct choice of ICTU classes, the best solution is to seek advice from a patent attorney. An experienced specialist will help you to determine all necessary classes and avoid potential problems in the future.

Examples for riznyh types of diyalnosti:

• Kav’yarnya: Class 30 (Kava, tea, cocoa, zucor, rice, tapioca, sago, substitutes for kava; harrow and cereal products, bread, confectionery, malt, frost; honey, molasses; jaggery, powder; salt, mustard; oats, sauces (condiments); spices; ice). May also be class 43 (Services for the supply of foodstuffs and beverages).
• Clothing manufacturing: Class 25 (Clothing, clothing, headwear).
• Software development: Class 42 (Scientific and technological services and research and design related thereto; industrial analysis and research services; design and development of computer hardware and software).
• Legal services: Class 45 (Legal services; security services for the protection of physical persons and property; personal and social services provided by other persons for the satisfaction of human needs).

The right choice of ICTU classes is an investment in the future of your brand. Do not skimp at this stage and make sure that your trade mark receives maximum protection.

Section 3: Mistake #3: Incorrect Application Formation

Filing an application for registration of the trade mark with UKRNOIVI is an important stage that requires thoroughness and attention to detail. Even small errors in the application can lead to its rejection and loss of time and money.

Subsection 3.1: Requirements for execution of the application

The application for registration of the trade mark must comply with certain requirements established by the legislation of Ukraine. Compliance with these requirements is key for successful completion of the registration procedure. Here are the main aspects to pay attention to:

1. Customer: Clearly provide complete and accurate information about the applicant: full name for individuals, or full name and legal address for legal entities.
2. Image of the designation: Provide a clear and high-quality image of your trade mark. It should be clearly legible and correspond to the stated description. If trademark contains colours, you must provide an image in colour and indicate the colour codes according to the Pantone international system.
3. List of goods and services: Make a detailed and exhaustive list of goods and services for which you want to register your trade mark. Indicate the relevant ICTU classes for each good and service. This list should be identical to the one used in the similarity search.
4. Description of the designation: Provide a detailed description of your trademark, including all its elements: verbal, graphic, colour. If trade mark is a combinedtrade mark, describe the relationship between its elements.
5. Application: Complete the application for registration of the trade mark in accordance with the prescribed template. Make sure that all data in the application is accurate and up-to-date.
6. Power of Attorney (if necessary): If you are applying to a patent attorney, you must provide him/her with a power of attorney to represent your interests before UKRNOIVI.
7. Payment of the state fee: Pay the state filing fee and other necessary fees. Please note the current fee amounts and payment deadlines.

Compliance with all the above requirements is a prerequisite for the successful registration of your trade mark. Careful application will save you time and money and minimise the risk of registration refusal.

Subsection 3.2: Typical design errors

Even minor errors in the design of a trade mark application can lead to its rejection. Let’s look at the most common mistakes that should be avoided:

1. Incomplete or inaccurate information about the applicant: Provide complete and up-to-date information about yourself, whether you are an individual or a legal entity. Check the correct spelling of name, address, contact details.
2. Poor quality of the trademark image: The image should be clear, legible and correspond to the description. Blurred, fuzzy images may be a reason for rejection. Don’t forget the Pantone colour palette if your trademark contains colours.
3. Incorrect or incomplete list of goods and services: Include all goods and services for which you plan to use your trademark, even those you plan to use in the future. Incorrectly defined ICTU classes limit the protection of your trade mark. Use specific terms, avoid generic phrases.
4. Insufficiently detailed description of the designation: Describe all elements of your trademark, their features, colours, fonts, location of elements in relation to each other. A clear and detailed description will help to avoid misunderstandings.
5. Errors in the application: Carefully fill in all fields of the application, check that the information provided is correct. Any errors, even spelling errors, may delay the registration process.
6. Lack of a power of attorney (if the applicant uses the services of a patent attorney): The power of attorney must be properly executed and contain all necessary data.
7. Late or incomplete payment of the state fee: Check the current amount of the fee and pay it on time. An unpaid or partially paid fee may lead to rejection of the application.

By avoiding these common mistakes, you will significantly increase the chances of successful and fast registration of your trade mark. Remember that thoroughness and attention to detail at this stage is the key to protecting your brand in the future.

Section 4: Mistake #4: Ignoring the examination procedure

Once an application for registration of a trade mark is filed with UKRNOIVI, it undergoes a formal and qualification examination procedure. Ignoring this stage or insufficient attention to it may result in refusal of registration.

Subsection 4.1: Stages of examination of the application

The examination of an application for registration of a trade mark with UKRNOIVI consists of two main stages: formal and qualification examination. Understanding these stages and their peculiarities will help you to successfully pass the registration procedure.

1. Formal examination: At this stage, UKRNOIVI experts check the application for compliance with the formal requirements established by law. They check the correctness of filling in the application, availability of all necessary documents, payment of the state duty, etc. If the application does not meet the formal requirements, the applicant is given a period of time to eliminate the deficiencies.
2. Qualification examination: After successful completion of the formal examination, the application proceeds to the qualification examination stage. At this stage, UKRNOIVI experts analyse trademark for its compliance with the legal requirements for protectability. They check whether trade mark is not identical or confusingly similar to trade marks already registered or applied for registration. They also check whether thetrade mark does not contain elements contrary to public policy, humanity and morality.

The importance of a responsible attitude to each stage:

• Formal Examination: Successful completion of the formal examination depends on careful preparation of the application. Check all documents, correctness of filling in the application and timely payment of the fee. Any mistake at this stage may delay the registration process.
• Qualification examination: This stage is crucial for the registration of your trade mark. A thorough preliminary similarity search will help minimise the risk of rejection. Be ready to provide UKRNOIVI experts with additional arguments and evidence to confirm the protectability of your trade mark.

Active participation and timely response to examination requests significantly increase the chances of successful registration of your trade mark. Ignoring the examination procedure may result in rejection and loss of investment in the development and promotion of your brand.

Subsection 4.2: Possible examination requests and how to respond to them

During the qualification examination process, UKRNOIVI may send you a request for additional information or explanations about your trade mark. Timely and correct response to such requests is critical to a successful registration.

Possible Examination Requests:

• Clarification of the list of goods and services: The examiner may ask to clarify or limit the list of goods and services for which the trade mark registration is applied for. This may be because some of the goods/services do not correspond to the selected ICTU classes, or the wording in the list is too general.
• Providing evidence of trade mark distinctiveness: If the examination finds similar trade marks, you will need to provide evidence that your trade mark is sufficiently distinct from them that it will not lead to confusion in the marketplace. This could be evidence of the use of your trade mark, market research, expert evidence, etc.
• Explanation of trade mark elements: The examiner may ask you to explain the meaning or features of certain elements of your trade mark, especially if they are non-standard or may raise doubts as to their protectability.
• Correction of errors in the application: If errors or inaccuracies are found in the application, the examiner will give you a period of time to correct them.

How to respond to the examination requests:

• Respect deadlines: Res pond to examination requests in a timely manner. Failure to respond in a timely manner may result in refusal to register the trade mark.
• Provide complete and substantiated information: Study the examination request carefully and provide all relevant information. Your answers should be clear, concise and supported by evidence.
• Consult an expert: If you are not sure how to respond to an examination request, consult a patent attorney. The expert will help you formulate a reasoned response and prepare the necessary documents.

A correct and timely response to the expert’s enquiries significantly increases the chances of successfully completing the trade mark registration procedure. Do not ignore requests and pay sufficient attention to this stage.

Section 5: Error No. 5: Failure to pay fees and charges on time

Payment of government fees and charges is an integral part of the trade mark registration procedure. Late or incomplete payment may result in refusal of registration and loss of your time and money.

Subsection 5.1: Amounts and deadlines for payment of fees

Registering a trade mark in Ukraine involves certain costs, which include the payment of state duties and fees. It is important to know the actual amounts of these fees and to comply with the established payment deadlines.

State fees and charges:

The amount of state fees depends on the number of ICTU classes in which you are registering the trade mark, as well as the type of application (e.g. individual or collective trade mark). In addition, there are fees for examination, publication of the trade mark registration and issuance of the certificate.

It is recommended to familiarise yourself with the current fees and charges on the official website of UKRNOIVI, or consult a patent attorney. Legislation and fees may change, so it is important to use up-to-date information.

Payment deadlines:

Usually, payment deadlines for state fees and charges are clearly defined in the legislation and specified in the UKRNOIVI request. It is important to comply with these deadlines, as late payment may result in the refusal to register the trade mark.

Where to find information:

• UKRNOIVI website: On the official website of UKRNOIVI you will find up-to-date information on the amount of state fees and charges, as well as other useful materials on trade mark registration.
• Consultation with a patent attorney: A patent attorney will provide you with comprehensive information on all necessary payments and help you with their timely payment.

Keep abreast of changes in legislation and always pay fees and charges on time to avoid problems with the registration of your trade mark.

Subsection 5.2: Consequences of late payment

Late or incomplete payment of government fees and charges can have serious consequences for the process of registering your trade mark.

Possible consequences:

• Suspension of the application: UKRNOIVI may suspend the processing of your application until all required fees and charges have been paid. This will delay the registration process.
• Refusal of registration: If the fee is not paid within the prescribed time limit, UKRNOIVI may refuse to register the trade mark. This means that you will have to reapply and pay the fees again.
• Loss of priority: The date of filing determines the priority of your trade mark. If you do not pay the fee on time, you may lose this priority, which can be critical in the event of a dispute with other applicants.
• Financial loss: Resubmitting the application and paying the fees again will result in additional financial costs.

How to avoid problems:

• Watch payment deadlines carefully: Make a note of payment deadlines and pay fees in advance to avoid delays due to banking transactions or other unforeseen circumstances.
• Keep receipts: Keep receipts for fees and charges as proof that you have fulfilled your obligations.
• Monitor messages from UKERNOIVI: Check your email and mailbox regularly to ensure that you do not miss important messages from UKERNOIVI, including payment requests.
• Contact a patent attorney: A patent attorney can help you monitor payment deadlines and pay all required fees and charges on time.

Timely payment of government fees and charges is a guarantee that the process of registration of your trade mark will be successful and without unnecessary problems. Do not neglect this important stage.

Conclusion

Registration of TM is a complex process that requires careful attention to each stage. Avoiding the mistakes discussed above, such as insufficient similarity searches, incorrect choice of ICTU classes, incorrect application, ignoring the examination procedure and late payment of fees, will significantly increase your chances of successful trademark registration and protection of your brand. Remember that investing in the right registration is an investment in the future of your business.

For a more detailed familiarisation with the registration process, we recommend reading our articles: “Registering a trade mark in Ukraine: a complete guide” and “How to patent a brand in Ukraine: expert advice”.