Trademark for software

In today’s world software plays a key role and its protection is becoming more and more important. Many people immediately think about code protection, but today we will focus on another, no less important aspect – protecting the brand of your software with thetrademark .

Developers certainly put a lot of efforts into creating high-quality code, testing and improving functionality. However, the success of software depends not only on this. Recognisability, reputation, associations that users have with the software – all these things form the brand. And, in other words, it is the trade mark (TM) that helps to identify and protect this brand.

A trademark for software is not about protecting the code itself. It’s about what makes your product unique in the eyes of consumers: a name, a logo, perhaps a slogan or even unique sound effects. Registering a TM is not just a tick on the to-do list, there’s nothing less. It is a strategic decision that allows you to protect your investments, avoid unfair competition and strengthen your market position.

Why it is so important and how a trade mark relates to other tools of intellectual property protection – that is what we will discuss next.

I. What is a trade mark for software?

Before dealing with the intricacies of registration and protection, it is necessary to clearly understand what, in fact, a software trademarkis . In this section we will, in other words, put everything in a nutshell: we will define a trade mark in the context of software, and also, there, we will draw a clear line between it and copyright, because these concepts are often confused. This is the basic knowledge that is necessary for every developer who is serious about protecting his intellectual product. Let’s get started!

Subsection 1.1: Definition of TM

So what is, a trademark for software? Let’s start with the basics, namely the general definition of a trade mark. Atrade mark is, conventionally speaking, a designation that serves to identify the goods or services of one person (or company) from those of others. That is, it is a kind of “quality mark” that allows the consumer to quickly understand with whose product he is dealing.

Now, how does this apply to software? Very simple. Your software is a product (or a service, if you provide, for example, a SaaS solution). And like any commodity, it needs to be identified. A trademark for software is the very designation (name, logo, etc.) that allows users to distinguish your programme from dozens or even hundreds of similar ones. In other words, it is your brand in the software world.

It is important to understand that registering a trade mark for software provides brand protection. This means that no one else can use a similar or identical designation for your software product (at least in the classes of goods and services that you have indicated when registering). This, however, will allow you to avoid confusion among users and protect your reputation.

To visualise, let’s create a list of what can act as a trademark:

• Programme name: The most obvious example (e.g. “Microsoft Word”, “Adobe Photoshop”).
• Logo: A graphic image that is associated with the programme (e.g. Apple apple).
• Slogan: A short phrase that describes the programme (e.g. Nike’s “Just Do It”, although it is not software, it is a good example).
• Other unique visual or audio interface elements.

Next, it is important to understand the difference between a trade mark and copyright.

Subsection 1.2: Distinguishing TM from copyright

Very often, especially at the beginning of the journey, developers confuse the concepts of atrade mark for software and copyright. These are, in fact, different things, although they both deal with intellectual property protection. Let’s, in other words, sort out once and for all what the difference is, and why it’s important to understand these differences, there no less.

Copyright protects the code itself of your programme. That is, the original program text written by you (or your programmers) is copyrighted. Nobody has the right to copy, distribute or modify your code without your permission. Copyright arises automatically, from the moment you create a work (in our case, writing code). It is not necessary to register it (although in some jurisdictions it may give additional advantages).

A trademark, as we have already learnt, protects not the code, but the brand of your software. That is, the name, logo, slogan – something that allows you to identify your product among others. A trade mark for software and copyright are, conventionally speaking, two sides of the same coin.

A clear example:

Imagine you have created a photo editing programme and named it “PhotoMaster”.

• Copyright: Protects the code of PhotoMaster. If someone copies your code and creates their own programme based on it (even with a different name), it will be a copyright infringement.
• Trademark: Protects the name “PhotoMaster”. If someone else creates a photo editing program (even with completely different code) and calls it “PhotoMaster” or very similar (e.g. “FotoMaster”), it will be a violation of your trademark rights.

Let’s summarise it in the form of a table:

So, copyright and trademark for software are two different but complementary tools for protecting your intellectual property. Both are important for the successful development of your software product.

Trademark registration for software does not protect your code, and copyright registration does not protect your product name, or logo.

II. What can be registered as a TM for software?

So, we have found out what a trade mark is and how it differs from copyright. Now it’s time, in other words, to deal with the specifics: which elements of your software can (and should) be protected by a trade mark. Not everything that comes to mind, there no less, can be registered as a TM. So in this section we’ll take a closer look at what can be registered, from the most obvious options (name and logo) to more specific ones (sounds, graphics). Let’s get started!

Subsection 2.1: The name of the programme

The most obvious, and perhaps the most important element that can and should be trademarked for software is, of course, the name. It is the name of your software that will be the first thing a potential user will encounter. It will appear in app shops, on your website, in advertising materials. So, in other words, protecting your name is a top priority.

Why is it so important? Imagine a situation: you have spent months (or maybe even years) developing a unique programme and have come up with an apt and no less original name for it. And then, when the product is ready to be released on the market, it turns out that someone else already uses the same (or very similar) name for their programme. Not only can this confuse users, but it can also cause serious damage to your reputation.

Registering a programme name as a trade mark gives you the exclusive right to use it in the field of software (and in the classes of goods and services you specify in your application). This means that no one else can legally use the same or a similar name for their software.

Examples of successful names:

• Telegram: short, succinct, easy to remember.
• Spotify: unique, unlike other names.
• Adobe Photoshop: indicates the field of application (photo editing) and contains the name of the development company.

Examples of unsuccessful names (hypothetical):

• Photo Editor: too generic name, lacks uniqueness.
• SuperProgram: uninformative, does not reflect the essence of the programme.
• MyCoolApp: too colloquial, may be difficult to remember.

Some tips for choosing a name:

1. Uniqueness: Make sure the name is not used by other companies, especially in your field.
2. Simplicity: The name should be easy to pronounce and remember.
3. Relevance: The name should reflect the essence of your application (at least partially).
4. Check the availability of free domain names with this name.

Registering a name as a trade mark is, conventionally speaking, the foundation for brand protection of your software.

Subsection 2.2: Logo

The second most important (and for some software, perhaps the first) element that can be registered as a trademark for software is the logo. A logo is a graphic image that, in other words, serves as a visual identifier of your product. It can be either a stand-alone mark or combined with the name of the programme.

Why is logo registration so important? The fact is that humans are visual learners. We remember images better than text. A bright, original logo can be a powerful tool to promote your software. It will be used everywhere: in the application itself, on the website, in app shops, in promotional materials, on business cards, there no less.

Registering your logo as a trade mark protects your rights to that graphic image. This means that no one else can use a similar or identical logo for their software (again, in the classes of goods and services covered by your registration). This, conventionally speaking, prevents “clones” of your product and protects your reputation.

Examples of successful logos (for software):

• Twitter: Blue bird – a simple but recognisable symbol.
• Instagram: Stylised camera – captures the essence of the app.
• Dropbox: Open box – a symbol of data storage.

What to pay attention to when creating a logo:

1. Uniqueness: The logo should be original and different from the logos of other companies (especially in your field).
2. Simplicity: The logo should be easy to recognise and remember, even in a small size.
3. Relevance: The logo should be consistent with your programme and its purpose.
4. Scale: The logo should look good both on a large screen and on a small icon.
5. Colours: Colours must be pleasing to the eye and correspond to the general concept of your brand.

Logo registration is, in other words, an investment in the visual identity of your software. It is another step towards brand protection and increased product recognition.

Subsection 2.3: Slogan: Slogan

Is it possible to register a programme slogan as a trade mark? Yes, you can, but with certain nuances. A slogan is a short, apt phrase that, in other words, characterises your product or its main advantage. It can be used in advertising campaigns, on a website, in the description of an app in app shops.

Unlike the name and logo, which are almost mandatory elements of identification, a slogan is, conventionally speaking, an optional tool. However, a successful slogan can be a powerful engine for promoting your software. It can emphasise the uniqueness of your product, be memorable to users and, therewith, evoke positive associations.

Registering a slogan as a trade mark gives you the exclusive right to use it in connection with your software. This means that no one else can use the same or similar slogan to promote your software product (in the relevant classes of goods and services).

Examples of successful slogans (not necessarily for software, but illustrative):

• Nike: ” Just Do It.” (Just Do It.)
• Apple: “Think Different.” (Think Different.)
• L’Oréal: “Because You’re Worth It.” (Because You’re Worth It.)

Can every slogan be registered? No. There are certain restrictions:

1. The slogan must not be purely descriptive. For example, the slogan “The best photo editor” is unlikely to be registered as it simply describes the function of the programme.
2. The slogan should not be a common phrase that lacks distinctiveness.
3. The slogan should not mislead consumers about the properties or characteristics of the programme.
4. Unique and able to identify the product/service

How to create a successful slogan:

1. A slogan should be concise and easy to remember.
2. The slogan should be different from the slogans of other companies.
3. The slogan should evoke positive emotions and associations.
4. The slogan should be related to the name, logo and overall concept of your product.

Registering a slogan as a trade mark is, in other words, an additional layer of brand protection for your software. This can be particularly useful if your slogan is truly unique and highly distinctive.

Subsection 2.4: Other elements (sounds, graphics)

In addition to the name, logo and slogan, there are other less obvious elements of the software which, under certain conditions, can also be registered as trade marks. These are, in other words, unique sound cues, original interface graphics, startup animations, etc.

Sound cues:

If your app has a distinctive sound signal that has become recognisable and associated specifically with your product, you may want to consider registering it as a sound trademark. This, there, however, may be particularly relevant for mobile applications, games, messengers.

• • Example: The sound of a Skype message or the sound of a PlayStation game console starting up.

Graphical interface elements:

If your application has a unique interface design that distinguishes it from other software, you can register individual graphical elements (e.g. icons, buttons, fonts) as trademarks.

• • • Example: A shopping cart icon in an online shop or a file saving icon (a floppy disc, though outdated, as an example).

Launch Animations:

Some applications have short animations that are displayed at launch. If this animation is unique and recognisable, you can also try to register it as a trade mark.

Registering non-standard elements such as sounds and graphics is generally more difficult than registering a name or logo. The main difficulty lies in proving their distinctiveness, i.e. that these elements really identify your product specifically and are not generic or descriptive.

Requirements:

• • • Uniqueness: The element must be original and not similar to others.
    • Distinctiveness: The element must be able to identify your product among others.
    • Graphic image/phonogram: For sound registration, a phonogram (sound recording) will be required; for graphics, a graphic image will be required.

The procedure for registering such elements, in other words, is similar to the general procedure for registering TMs, but may require additional materials to prove their uniqueness and distinctiveness (e.g., the result of a

III. Why register a TM for software?

We have already learnt what can be registered as a trademark for software. Now it is time, in other words, to answer the key question: why is it necessary? What real advantages does TM registration bring to a software developer? Isn’t it easier to concentrate solely on the code and not worry about “legal formalities”? In this section, we take a detailed look at the pros of registering a TM so that you can make an informed decision.

Subsection 3.1: Protection against copying of the name and brand

One of the most important arguments in favour of registering a trademark for software is undoubtedly the protection of the brand from unfair competition and copying. Imagine a situation: you have invested time, effort and money in software development, thought up an original name for it, created a recognisable logo. And then, when your product starts gaining popularity, a “clone” appears – a programme with a very similar name and/or logo.

This situation, in other words, can lead to very unpleasant consequences:

• Loss of customers: Users may mistake your programme for a “clone” and install it instead of yours.
• Reputational damage: If the “clone” turns out to be substandard, the reputation of your product may be adversely affected.
• Litigation: You will have to spend time and money on litigation with an unscrupulous competitor (if you do not have a registered TM, the chances of success in court are much lower).
• Loss of potential profits.

Registering a trade mark gives you, conventionally speaking, a “shield” against such problems. You get the exclusive right to use the name, logo and other registered elements in connection with your software. This means that you may:

1. Prohibit others from using similar or identical designations for their software.
2. Demand that the infringement of your rights cease (e.g. remove the clone software from app shops).
3. File a lawsuit against the infringer and demand compensation for damages.
4. Appeal to law enforcement authorities, there no less.

Thus, TM registration is not just a formality, but a real tool to protect your investment in software development and promotion. It is, in other words, a way to protect yourself from unscrupulous competitors and retain control over your brand.

Subsection 3.2: Enhancing Recognition

Trademark registration for software is not only about protection but also about promotion. It, in other words, helps to increase the recognition of your product in the market, which in turn can lead to more users and increased profits.

How does it work? Very simple. A trademark (name, logo, slogan) is what makes your programme stand out among thousands of others. It’s what users remember. This is what they look for in app shops, there no less.

When you register a TM, you, conventionally speaking, “secure” these unique identifiers for yourself. You can use them in all your marketing activities:

• • On the website: Place the logo and app name in a prominent place.
  • In app shops: Use the name and logo in the app description and on the icon.
  • In promotional materials: Include the name, logo and slogan in advertising banners, videos, etc.
  • In social media: Use TM elements to design your pages.

The more often users see your brand name, the better they remember it. And the more likely they are to choose your programme when they need similar functionality. In other words, TM works as a permanent advertisement for your product.

Moreover, brand recognition helps to build trust. If users see that your trade mark is registered, it is subconsciously perceived as a sign of the seriousness and reliability of your company.

So, registering a TM is not only about legal protection, but also about effective marketing. It is an investment in the recognisability of your software, which can pay off a hundredfold.

Subsection 3.3: Increasing the value of the company

Having a registered trade mark can significantly increase the value of your software company . This, in other words, is especially important if you plan to raise investment, sell your business, or go public.

Why does atrade mark have such an impact on the value of a company? The fact is that TM is an intangible asset. It is not just a name or a logo, but reputation, recognisability, user loyalty, there no less. All that is created over years and has real value.

Investors and potential buyers of a business always pay attention to the presence of registered trade marks. This is, conventionally speaking, an indicator that the company takes its brand seriously and protects its intellectual assets.

Having a registered TM can increase the value of a company for several reasons:

• • 1. Investors realise that a registered TM reduces the risks associated with unfair competition and copying.
    2. A recognisable brand has greater potential for growth and expansion into new markets.
    3. A registered TM can be licensed to other companies, which can generate additional revenue.
    4. Brand recognition.

Imagine two companies that develop similar applications. The first company has a registered trademark, while the second company does not. All other things being equal, the first company will be valued higher because it has a protected brand and greater potential for growth.

Hence, registering a trade mark for software is not only protection against copying and increased recognition, but, in other words, a strategic step that can significantly increase the value of your business in the eyes of investors and potential buyers.

Subsection 3.4: Licensing Opportunities

Another important benefit of trademarkregistration for software is that you can licence the rights to use your brand. In other words, you can allow other companies to use your trademark (name, logo) for a certain fee or on other terms that you define in the licence agreement.

This, there nevertheless, can become an additional source of income for your company. You can licence your TM either for use in related industries (for example, if you have developed photo editing software, you can licence your TM for use in the photo equipment industry) or for franchising (if you have created a successful network of services operating under your brand).

How does it work?

1. You (licensor) conclude a licence agreement with another company (licensee).
2. The agreement clearly sets out the terms of use of your trade mark: territory, term of the agreement, amount of remuneration (royalty), rights and obligations of the parties, etc.
3. The licensee receives the right to use your TM in accordance with the terms of the agreement.
4. You receive remuneration for the use of your TM.

Types of licences:

• Exclusive Licence: The licensee is granted the exclusive right to use the TM in a specific territory or area. You cannot grant licences to other companies on the same terms.
• Non-exclusive licence: You may grant licences to use the TM to several companies at the same time.
• Single licence: A licence is issued for the use of a TM for a specific product or service.

Benefits of licensing:

• You receive passive income from the use of your TM.
• Your TM can be introduced to new markets without your direct investment.
• The more companies use your TM, the higher its recognisability.

The licence agreement should be carefully drafted by lawyers to protect your interests and, in other words, to avoid possible problems in the future. It is necessary to clearly define all the conditions for the use of TM, as well as to provide mechanisms for control over compliance with these conditions by the licensee, there no less.

Thus, trademark registration opens up opportunities for you not only to protect and promote your own software, but also to generate additional income by licensing the rights to your brand.

IV. The process of registering a trademark for software in Ukraine

So, we have seen that registering a trade mark for software is an important step to protect and promote your product. Now it is time, in other words, to understand how this process takes place in Ukraine. Do not be frightened: the procedure of TM registration is clearly regulated, and, although it requires some effort and time, it is nevertheless quite feasible. In this section, we will go step by step through all the stages of TM registration, from the preliminary search to obtaining the certificate.

Subsection 4.1: Preliminary Search

The first, and very important, step before applying to register a trade mark for software is to conduct a preliminary search for identity and similarity. In other words, you need to make sure that your name, logo (or other elements you plan to register) are not identical or confusingly similar to already registered TMs or to those previously applied for.

Why is this necessary? The point is that UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation) will refuse to register your TM if it finds that it is identical or confusingly similar to a previously registered TM for similar goods/services. This, however, means that you will have wasted your time and money in preparing and filing your application.

How to conduct a preliminary search?

There are several options:

1. On your own:
   • UKRNOIVI database: The UKRNOIVI website has a free database of registered TMs. You can search it yourself by keywords, name, image.
   • Internet search: Check if your name or similar names are used by other companies, especially in the software sector.
   • Search among filed applications.
2. With the help of a patent attorney:
   • Patent attorneys have access to specialised databases and experience in conducting TM searches. They can conduct a more in-depth and professional search and advise on the feasibility of registering your TM.

What to look for?

• Identity: T otally identical names or images.
• Confusing similarity: Names or images that could mislead consumers (e.g. “FotoMaster” and “PhotoMaster”, or logos similar in design).

A preliminary search does not guarantee 100% registration success, as the final decision is made by UKRNOIVI. However, it significantly increases your chances and, in other words, allows you to avoid unpleasant surprises at the stage of application examination, there no less. A thorough search will allow you to assess the risks and, if necessary, make changes to the name or logo before submitting the application.

Section 4.2: Preparing the application

After you have conducted a preliminary search and made sure that your trademark has a chance of being registered, it is time to prepare an application to the Ukrainian National Office of Intellectual Property and Innovation (UNIPI). This is a key stage on which the success of the entire procedure largely depends, no less.

A software trademarkapplication consists of several documents:

1. Application:This is the main document in which you provide your details:
   • Your details (full name or company name, address).
   • Trademarkimage ( if it is a verbal TM, just the name, if it is a combined TM, the name and image).
   • A list of goods and services for which you want to register the TM (in accordance with the International Classification of Goods and Services (ICGS)). For software, this is usually class 9 (computer software) and class 42 (software development services).
   • Other relevant information.
2. Trademark image:
   • If your trademark contains graphic elements, you need to provide a high-quality image (in JPEG format, the size and resolution are specified in the rules of the Ukrainian Trademark and Trademark Office).
   • For a sound TM – a phonogram (sound recording).
   • For a three-dimensional TM – images in different projections.
3. A document confirming payment of the application fee:
   • The amount of the fee depends on the number of classes of the Nice Classification that you indicate in the application.
   • The details for payment of the fee can be found on the website of the Ukrainian National Bureau of Intellectual Property.
4. Power of attorney (if the application is submitted by a representative).

The application form can be found on the official website of UKRNOVI. The application must be filled in in Ukrainian, carefully and without errors. All necessary instructions for filling in the application form are available on the website of the Ukrainian Research and Development Institute.

Important:

• Before submitting your application, carefully check all the data again, especially the list of goods and services.
• Make sure that the trademarkimage complies with the requirements of the UAPTO.
• Keep a copy of all the documents you submit.

Preparing an application, in other words, may seem like a daunting task, but in fact, if you follow the instructions and pay attention, it is quite doable. You can also seek the help of a patent attorney to help you prepare all the documents correctly, no less.

Subsection 4.3: Filing an application with UKRNOIVI

After you have carefully prepared all the documents, it is time, in other words, to apply for software trade markregistration with UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation).

How can I apply? There are several ways to apply:

1. 1. 1. Electronically: This is the most convenient and fastest way. You need to register in the electronic filing system on the UKRNOIVI website, fill in the electronic application form, upload the required documents (TM image, scan copy of the fee payment document, power of attorney, if necessary) and sign the application with an electronic digital signature (EDS).
      2. By mail: You can send the full set of documents (application, TM image, copy of the document on payment of the fee, power of attorney, if necessary) by registered letter with acknowledgement of receipt to UKRNOIVI.
      3. In person: You can bring the documents to UKRNOIVI in person and submit them at the application window.

Once you have submitted your application, UKRNOIVI, in other words, assigns it a number and a submission date. This date is very important because it determines the priority of your application. If someone else files an application for a similar TM at a later date, your application will take precedence.

Submission Confirmation:

1. 1. • If submitting electronically: You will receive an email confirming your submission and the submission number.
      • When subm itting by post: You will receive a letter of acknowledgement.
      • When submitting in person: You will be given a receipt of receipt of documents.

Keep all documents confirming the submission of the application (application number, date of submission, copy of the application, notice of receipt, receipt). Nevertheless, this may be necessary in the future if any questions or disputes arise.

The filing of an application is, conventionally speaking, the official start of the procedure for registering your trade mark. Next comes the examination stage, which will be discussed in the next subsection.

Subsection 4.4: Examination of the application

After filing an application for registration of a trade mark for software with UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation), the most important stage begins, in other words, the examination of the application. This is the process during which UKRNOIVI experts check your application and trade mark for compliance with legal requirements.

The examination consists of two main stages:

1. Formal examination:
   • At this stage, the correctness of the application, the availability of all required documents, and the payment of the application fee are checked.
   • If any deficiencies are found (e.g. errors in the application, absence of a document on payment of the application fee), UKRNOIVI sends you a request to eliminate these deficiencies within a set period of time (usually 2 months).
   • If you do not remedy the deficiencies in time, the application will be considered withdrawn.
2. Qualification examination (substantive examination):
   • At this stage, examiners check whether your trade mark meets the requirements of protectability. That is, whether it is not identical or confusingly similar to previously registered TMs or applications, whether it is not descriptive, generic, deceptive, etc.
   • For this purpose, the examiners shall conduct a search in UKRNOIVI databases and other sources of information.
   • If the examination finds grounds for refusal of registration (e.g. similarity with another TM), UKRNOIVI sends you a preliminary refusal of registration. You have the opportunity to submit your arguments and objections to this refusal within a set period of time (usually 3 months).
   • If your arguments are convincing, UKRNOIVI may change its decision and register your TM.
   • If your arguments are not accepted, UKRNOIVI makes a final decision to refuse registration.

The legislation establishes indicative terms of examination, but, nevertheless, in practice they may be longer, depending on the workload of UKRNOIVI experts. In general, the whole procedure of TM registration (from filing an application to obtaining a certificate) may last from 12 to 18 months, and sometimes even longer.

There is a possibility to carry out accelerated examination of the application for an additional fee. In this case, the timeframe for examination of the application can be significantly reduced.

The examination of the application, in other words, is the most responsible stage of trade markregistration . Its results will determine whether or not you get legal protection for your brand.

Subsection 4.5: Obtaining a certificate

If the examination of the application for software trade markregistration has been successful and UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation) has made a decision to register your TM, there remains, in other words, the last step – obtaining a certificate.

What happens after the decision on registration is made?

1. Publication of information on TM registration: UKRNOIVI publishes information on the registration of your trade mark in the official bulletin “Industrial Property”. This is done so that other persons can familiarise themselves with the information about your TM and, if necessary, file their objections to the registration (within 3 months from the date of publication).
2. Payment of the state fee for the issuance of the certificate: After publication of the information on TM registration, you need to pay the state fee for the issuance of the certificate. The amount of the fee is established by the legislation. The requisites for payment can be found on the UKRNOIVI website.
3. Issuance of the certificate: After payment of the state fee, UKRNOIVI issues you a certificate of trade mark registration. This is an official document that confirms your exclusive rights to the TM. The certificate contains information about the owner of the TM, the image of the TM, the list of goods and services for which it is registered, the date of application, the date of registration and the term of validity of the TM.

The certificate of registration of a trade mark is valid for 10 years from the date of filing the application. This period, however, can be extended for another 10 years an unlimited number of times, subject to payment of the relevant fee.

Thetrade markregistration certificate gives you, in other words, the exclusive right to use the TM to designate your goods and services and to prohibit others from using similar or identical designations without your permission. You can dispose of your TM rights (e.g. sell, licence).

Keep the trade markregistration certificate in a safe place. This is your main document confirming your rights to the brand of your software. Do not forget to renew the certificate in time to avoid losing the legal protection of the TM.

Obtaining a certificate, conventionally speaking, is the final chord in the process of registering a trade mark. It means that your brand is officially protected and you can develop your business in peace.

V. Cost of TM registration

The question that, in other words, worries many softwaredevelopers who are planning to register a trade mark is the cost of TM registration for software. So how much does it cost to protect your brand in Ukraine? There is no unambiguous answer, as the total cost depends on several factors.

What does the cost of registration consist of?

1. Filing fee: This is a mandatory fee payable when filing an application with UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation). The amount of the fee depends on the number of ICCTU (International Classification of Goods and Services) classes you indicate in the application. The more classes, the higher the fee. For software, Class 9 (computer software) and possibly Class 42 (services related to software development) are usually chosen.
2. State fee for the issuance of the certificate: This is another mandatory fee that is payable after UKRNOIVI has decided to register your TM. The amount of the fee is also set by the legislation.
3. Patent attorney services (optional):If you decide to use the services of a patent attorney (intellectual property specialist), you will have to pay for their work. The cost of patent attorneys can vary greatly depending on their experience, qualifications, and scope of work. A patent attorney can help you with
   • :Conducting a preliminary search.
   • Preparing and filing an application
   • .Dealing with UKRNOIVI
   • .Providing advice on TM registration and protection.
4. Additional Costs:
   • Accelerated examination: If you want UKRNOIVI to consider your application faster, you can order an accelerated examination for an additional fee.
   • Translations: If you need to translate any documents into Ukrainian (for example, if you are applying for international registration), you will have to pay for the services of a translator.
   • Corrections: Making changes, or corrections, if initiated by the applicant.

It is difficult to name the exact amount, but in other words, we can say that the cost of TM registration for software in Ukraine (excluding the services of a patent attorney) can range from several thousand to several tens of thousands of hryvnias, depending on the number of classes of ICTU, the need for accelerated examination, etc.

Before starting the procedure of TM registration it is recommended to familiarise yourself with the current information on the amount of fees and charges on the UKRNOIVI website, and also, therewith, to consult with a patent attorney to estimate the full cost of registration in your particular case.

VI. International TM registration

If you are planning to enter international markets with your software, in other words, you should think about international TM registration. TM registration in Ukraine gives legal protection only on the territory of Ukraine. To protect your brand in other countries, it is necessary to register TM in each country separately or use international registration systems.

The most convenient and widespread way of international registration of TM is the Madrid system. This is, conventionally speaking, an international trade mark registration system that allows obtaining legal protection for TMs in several countries (members of the Madrid Agreement and/or the Madrid Protocol) by filing a single international application.

Advantages of the Madrid system:

• Time and cost savings: Instead of filing applications in each country separately, you file one international application.
• Simplified procedure: You do not need to hire patent attorneys in each country (unless there are questions or objections from national offices).
• Centralised management: You can manage your international registration through one Office (WIPO – World Intellectual Property Organisation).
• Expandability: You can expand the geographical scope of your international registration at any time by adding new countries.

How does the Madrid System work?

1. Basic application/registration: First you need to have a basic application or TM registration in Ukraine (or in another member country of the Madrid system).
2. International application: You file an international application through UKRNOIVI, indicating the countries in which you wish to obtain protection.
3. Formal Examination: WIPO conducts a formal examination of the application.
4. Transmission of the application: WIPO transmits your application to the national offices of the countries you specify.
5. Examination by national offices: Each national office examines the application in accordance with its own legislation.
6. Registration or refusal: If the national Office finds no grounds for refusal, the TM is registered in that country. If there are grounds for refusal, the Office sends a provisional refusal to which you may reply.
7. International registration: If all designated countries approve the registration, WIPO issues a certificate of international registration.

The cost of the international registration of TMs under the Madrid system, however, consists of a basic fee, fees for each designated country and fees for additional classes (if more than three).

In addition to the Madrid system, there are other regional TM registration systems, such as the European system (for European Union countries).

International TM registration for software, in other words, is an important step to protect your brand in the global market. The Madrid system makes the process more accessible and convenient.

Conclusions

So, we have considered in detail what can be registered as a trade mark for software. From verbal designations (software name, slogan) to pictorial (logo, unique icons) and even more exotic variants (sounds, volumetric shapes, colours) – the possibilities to protect your brand, in other words, are many.

However, choosing an object for TM registration is not just a matter of your preferences. It is a strategic decision that requires careful analysis and, therewith, an understanding of the limitations imposed by the legislation.

Key points worth emphasising again:

• Application name: Fantasy or suggestive titles are best. Descriptive names require evidence of secondary distinctiveness.
• Logo: An important element of visual identity that must be original and distinctive.
• Slogan: Can be registered if it is original and non-descriptive.
• Icons and graphic elements: Can only be registered in exceptional cases where they are very unique and non-functional.
• Sound TMs: Possible, but require proof of non-functionality and distinctiveness.
• Volumetric TMs: Very rare for software, only for unique shapes of virtual objects.
• Colour TMs: Extremely difficult, requires proof of strong brand association.
• Functional elements: Cannot be registered as TMs (protected by copyright or patents).
• Descriptive and generic designations: Cannot be registered.

Remember that trademark registration is an investment in your brand, its protection and, conventionally speaking, its future. Carefully consider which elements of your software are the most valuable from the point of view of identity, and choose the best option for TM registration. If you want to get an overview of the trade mark registration process, we recommend you to read our article: “Software Trade Mark: Protecting your code and brand“.

And, of course, if you have any doubts or questions, it is always better to seek professional help. The lawyers of  Polikarpov Law Firm, having many years of experience in the field of intellectual property protection, will help you understand all the nuances of TM registration, choose the optimal object for registration and, in other words, ensure reliable protection of your brand.