Trademark or trademark: what is the difference and types of TM

In today’s world, where the market is overflowing with a variety of goods and services, the ability to make your product stand out becomes crucial. This is where a trade mark comes in – a powerful tool to individualise and protect your brand. For many entrepreneurs, the process of registering a trade mark seems complicated and incomprehensible, full of legal nuances and bureaucratic subtleties. However, understanding the basic steps and requirements will allow you to effectively protect your intellectual rights and ensure a solid foundation for business development.

In this article we will go step by step through the whole process of registering a trade mark in Ukraine. You will learn how to choose and check the designation correctly, what documents are needed for filing an application, how much time and money it will take, as well as how to protect your brand at the international level. Our goal is to provide you with comprehensive and practical information that will help you successfully carry out registration and avoid common mistakes.

Section 1: Trade mark and trade mark: terminological aspects

In the world of business and law, terminology is of key importance, because an accurate understanding of concepts eliminates ambiguities and ensures correct interaction. One often hears both “trade mark” and “trade sign” used synonymously. However, from a legal point of view, these terms have their differences, which should be taken into account.

1.1 Definition of “trade mark” (TM) according to the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”

In Ukraine the only official and legally correct term denoting an intellectual property object for individualisation of goods and services is “trademark”. This wording is enshrined in the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, where it is used as a synonym for “mark for goods and services”.

The Law defines a trade mark as any designation or any combination of designations that are capable of distinguishing the goods or services of one person from those of others. Such designations include, inter alia:

• words, letters, numerals;
• pictorial elements;
• colour combinations;
• three-dimensional shapes;
• melodies and the like.

The main function of atrademark is to individualise products or services, helping consumers to clearly identify and distinguish them on the market.

1.2 The concept of “trade mark”: its use in everyday speech and its historical context and legal status in Ukraine

The term “trade mark” is widely used in everyday speech and also has deep historical roots. In pre-Soviet times and at the initial stage of the formation of Soviet legislation, it was the “trade mark” that was the official term for identifiers of goods and services. It was closely associated with the “trade mark” used by entrepreneurs.

However, over time, the Ukrainian legislative framework has evolved and there has been a unification of terminology. Now, from a legal point of view, the term “trademark“ has no official legal status in the Ukrainian legislation and is not used in the current regulations governing intellectual property. It remains predominantly a colloquial synonym or is found in outdated documents or translations.

It is important to remember that in the legal field of Ukraine and international practice only the term “trade mark” or “trademark” is correct.

1.3 Legal Correctness: Why “trade mark” is an official term in Ukrainian law and “trade mark” is a commonly used synonym

Legal correctness of terminology is fundamental for legal certainty and efficiency of interaction. In Ukrainian legislation and international practice the term “trade mark” is generally accepted and official. It corresponds to the English “trademark”, which ensures unification of terminology at the international level, in particular within the World Intellectual Property Organisation (WIPO).

Using this term ensures that your documents and communications with government agencies are unambiguously clear and comply with legal requirements. While “trade mark” is intuitive for most people, its use in official documents may lead to terminological confusion or raise questions about its legal validity, as it is not enshrined in current legislation.

1.4 The Importance of Correct Terminology for Business Communication and Legal Documents

Accuracy in terms is of fundamental importance for successful business communication and the preparation of legal documents. It is not just a matter of grammar, but a key to legal validity and unambiguity.

• Avoiding ambiguity: The use of formal terms ensures that all parties – from partners to government agencies – have the same understanding of the subject matter, whether it is a contract, a registration application or a statement of claim.
• Legal compliance: Documents drafted using correct terminology comply with the requirements of current legislation, which is critical for their recognition and legal validity.
• Professionalism: Precision in terms emphasises your knowledge of intellectual property and the seriousness of your approach.
• Effective communication: The Ukrainian National Office of Intellectual Property and Innovation (UKRNOIVI) and other government agencies use only official terminology. The use of unofficial terms may complicate or delay the review of your documents.

Therefore, you should always use the term ‘trade mark’ in all business and legal matters relating to intellectual property.

Section 2: The main functions and importance of a trade mark to a business

A trade mark is much more than just a name or logo. It is a powerful strategic tool that fulfils a number of key functions in a business, influencing its development, competitiveness and consumer perception. Understanding these functions helps to realise the true value of a brand as an intangible asset of a company.

2.1 Individualisation function: distinguishing one manufacturer’s goods/services from others

The main and most obvious role of a trademark is its individualisation function. It allows consumers to clearly distinguish the goods or services of one manufacturer or supplier from similar products or services of others. In a world where shop shelves are crowded with similar products and the Internet offers a multitude of services, a trade mark becomes a unique identifier. It helps the consumer navigate the market without confusing different brands and their offerings. This ability to differentiate is the foundation on which all other TM functions are built.

2.2 Guarantee function: signalling a certain level of quality and reputation

A trade mark serves as a kind of quality guarantee for the consumer. When people repeatedly buy products under a certain trade mark and are satisfied with their quality and properties, they develop trust in the brand. Thus, the trade mark becomes associated with a certain, expected level of quality, reliability and expertise. The consumer, seeing a familiar TM, subconsciously expects to receive a product or service with certain characteristics that he or she has already appreciated before. This function is critical for building customer loyalty, maintaining a positive reputation of the company and building long-term relationships with consumers.

2.3 Advertising and marketing function: a means of building brand awareness and appeal

The brand is the centrepiece of any successful marketing and advertising strategy. It acts as a visual or verbal anchor around which all communication with the target audience is built. Thanks to a trade mark, companies can create unique, memorable advertising campaigns that attract consumer attention and generate interest. The logos, slogans and names that make up a trade mark quickly build recognition in the market, allowing the brand to stand out among competitors and creating an emotional connection with the consumer. It is not only a means of identification, but also a powerful tool for building a positive image and attracting new customers.

2.4 Capitalisation function: TM as a property object that has value and can be the subject of transactions

Apart from its marketing and identification functions, a trade mark is also a valuable intangible asset of a company. It has a certain market value, which can constantly grow with increasing recognition, reputation and success of the brand in the market. This value allows the trade mark to be used as a full-fledged property object, which can be the subject of various commercial transactions:

• Sale (alienation): The rights to a trade mark can be sold outright to another company.
• Licensing: A TM owner may grant permission (licence) to others to use its brand for a certain fee (royalty) and under certain conditions, expanding the brand’s presence without direct investment in production.
• Pledge: A trademark may be pledged as collateral to obtain financing or loans.
• Contribution to the authorised capital: The valued trademark can be contributed as an intangible asset to the company’s authorised capital.

Thus, a trademark is not only a marketing tool, but also a significant financial asset contributing to the market capitalisation and overall value of the company.

Section 3: Classification of trade marks by form of designation

Trade marks can take many forms, allowing companies to be creative in creating their identity. Classifying TMs by the form of the designation is important to understand the specifics of the registration process and how much protection you will receive.

3.1 Word trade marks: words, names, letters, figures, slogans

A word trademark is a designation consisting exclusively of words, names, letters, numerals, verbal abbreviations or slogans. It is one of the most common types of TMs, which protects exactly the spelling or pronunciation of a particular textual element.

Requirements for verbal TMs:

• Distinctiveness: The designation should be unique and not in common use so that consumers can clearly associate it with a specific source of goods or services.
• Lack of descriptiveness: The verbal TM should not directly describe the type, quality, properties, quantity, purpose or other characteristics of the goods or services. For example, the word “Sweet” for candy or “Fast” for a delivery service is unlikely to be registered without acquired distinctiveness.

Advantages of word TM:

• Ease of use: It can be easily adapted to a variety of advertising materials, domain names and media.
• Wide scope of protection: The protection extends to the phonetic and semantic meaning of the word, which gives a certain flexibility in application.

At the same time, the disadvantage is the difficulty of finding a unique word that is not descriptive and does not coincide with existing brands, given the saturation of the language space.

3.2 Pictorial trade marks: logos, drawings, emblems, symbols, graphic elements

Pictorial trade marks consist exclusively of graphic elements such as logos, drawings, emblems, symbols or abstract graphic elements, without any textual component. It is one of the key types of trade marks, providing visual identification and brand recognition.

Registration and protection of pictorial TMs:

For registration it is necessary to submit a clear graphic image of the designation. UKRNOIVI experts check for uniqueness and absence of visual similarity with marks already registered or submitted for registration. It is the graphic element that is afforded protection, so any significant changes in colour, shape or detail may affect the scope of protection.

Examples of well-known pictorial TMs include the stylised Nike tick, the Apple apple (as a stand-alone graphic element, without a name) or the three stripes of Adidas. These logos have become so recognisable that they function effectively without additional words.

3.3 Combined trade marks: combining verbal and pictorial elements

A combined trade mark is the most popular and often the most effective type of designation. It combines both verbal and pictorial (graphic) elements. It can be a company name in a unique font, complemented by an original logo or symbol.

Advantages of combined TMs and their popularity:

• High distinctiveness: The combination of two types of elements makes the brand more unique and easier to distinguish in the marketplace.
• Synergistic effect: The verbal part ensures easy pronunciation and identification, while the pictorial part ensures visual memorisation, creating a coherent and powerful image.
• Flexibility of protection: Protection is granted both to the combination as a whole and, under certain conditions, to its individual elements if they are protectable in their own right. This allows the elements to be used individually in different marketing materials.

Examples of integrated brands that are combined TMs include the classic Coca-Cola logo (specific font spelling of the name), the Starbucks logo (word name combined with an image of a mermaid) or McDonald’s (the iconic golden “M” arches along with the name). These brands demonstrate how effectively text and graphics can be combined to create a powerful brand identifier.

Section 4: Non-traditional and other types of trade marks

In addition to the most common verbal, pictorial and combined trade marks, modern legislation allows for the registration of so-called “non-traditional” designations. These types of TMs are less common, but provide companies with unique opportunities to differentiate the brand and create emotional ties with consumers through other senses. However, their registration is often associated with additional requirements and considerable difficulty in proving distinctiveness.

4.1 Volumetric trade marks: the shape of a product or packaging

Volumetric trade marks are three-dimensional marks protecting the unique shape of a product, its packaging or even the place of sale itself. An important condition for their registration is that the shape must not be functional (i.e. it must not be necessary for the operation of the product or its general, typical shape), but must be exclusively distinctive. This means that the consumer must identify the source of the product by this very form.

A classic and well-known example of a volumetric trade mark is the unique shape of a Coca-Cola glass bottle. Other examples could be the original shapes of chocolates, atypical perfume bottles or even the architectural shapes of certain buildings if they are unique and serve to individualise services.

4.2 Sound trade marks: jingles, short melodies, sound signals

Sound trade marks are signs consisting of a unique sound, a melody, a jingle, a short sound phrase or a specific sound signal that serves to identify goods or services. To register them, a clear graphical representation of the sound (e.g. musical notation or spectrogram) and/or its audio file must be provided.

The key requirement for a sound brand is that the sound must be unique enough to acquire distinctiveness, i.e. that consumers can clearly associate it with a particular brand. Examples might be well-known jingles of advertising campaigns, branded operating system sounds when switched on, or unique sounds used by certain companies to identify themselves.

4.3 Light, olfactory, gustatory, holographic TMs: an overview of the possibilities and difficulties of their registration

Modern intellectual property law theoretically allows the registration of other, even more unconventional types of trade marks, although in practice their registration is extremely difficult and rare:

• Light TMs: Marks consisting of certain unique light signals or sequences used for identification.
• Olfactory TMs: Unique odours associated with a particular product or service (e.g. the specific smell of freshly cut grass for tennis balls). Their registration is particularly challenging because of the objective graphic representation of the odour and proof of distinctiveness.
• Flavour TMs: Unique taste sensations associated with a particular product. This is the most difficult to capture because of the subjectivity of taste and the difficulty in reproducing it objectively.
• Holographic TMs: Three-dimensional images that change when the viewing angle changes, providing a dynamic visual effect.

The main difficulty in registering these types of TMs lies in the requirement to graphically reproduce the designation, as well as in the extremely high requirements of proving that this particular light effect, odour, flavour or hologram is sufficiently distinctive to be associated by consumers exclusively with a particular source of goods/services.

4.4 Importance of uniqueness and distinctiveness for non-traditional TMs

Regardless of the type of trade mark – traditional or non-traditional – the key requirements for its protectability are uniqueness and distinctiveness. This means that the designation must be capable of individualising the goods or services of one person from those of others. For non-traditional TMs, these requirements become even more stringent. Proving that a particular colour, sound, shape, smell or other non-traditional element has already acquired such an exclusive association with your brand in the minds of consumers can be a significant challenge, requiring solid evidence and an expert approach. This sets them apart from traditional brands where distinctiveness is often obvious.

Conclusions

Correct understanding of terminology and knowledge of the variety of types of trade marks is the foundation for effective business protection. We found out that trademark ( or “sign for goods and services”) is an official term in Ukrainian legislation, unlike the colloquial “trade mark”. This understanding, as well as knowledge of all types of trade marks – verbal, pictorial, combined and non-traditional – is key to correctly identifying and registering your brand.

Choosing the best type of TM should be based on the goals and specifics of your business, its visual and communication strategy. Each type has its own advantages and peculiarities in registration and further protection.

To ensure reliable legal protection of your unique designation and avoid common mistakes, it is strongly recommended to consult with specialists in the field of intellectual property. This will help to correctly identify the type of trade mark, conduct a quality search and successfully complete all stages of registration.