A trademark is your reliable shield against unfair competition and the key to successful brand development. It allows consumers to easily identify your goods and services among others, and it allows you to protect your uniqueness and reputation. In this article, we have gathered all the necessary information about trademark registration in Ukraine so that you can easily understand this process and protect your business.
Next, we will look at what a trademark is and why its registration is so important.
Section 1: What is a trade mark and why is it important to register it?
Before diving into the details of the registration process, it is important to understand what exactly a trade mark is and the benefits of its legal protection. In this section, we will look at the definition of a trademark, how it differs from a trade mark and the main reasons why you should invest in its registration. This knowledge will help you realize the importance of this step for your business and make the right decision.
Let’s start with a basic definition of“trademark”.
Subsection 1.1: Definition of trademark
A trademark is a designation that identifies the goods produced or sold by a particular company from similar goods of other manufacturers. It acts as a kind of “signature” of the company on its products, allowing consumers to easily recognise and choose its goods.
Examples of trademarks:
- Verbal: Names of companies, brands, and products (e.g., “Coca-Cola,” “Apple,” “iPhone”).
- Graphic: Logos, emblems, symbols (e.g. Apple apple, Adidas stripes).
- Volumetric: The shape of a product or its packaging (e.g. a Coca-Cola bottle).
- Sound: Melodies, jingles (e.g. Nokia’s melody).
- Combined: Combination of different types of signs (e.g. Nike logo with brand name).
Difference from a trademark:
In Ukrainian law, the term “trademark” is often used as a synonym to the term “trademark”. However, there is a certain difference between these concepts. A trademark is a broader concept that covers designations for both goods and services. A trademark, on the other hand, is used solely to identify goods.
Important: A trademark must be unique and different from other marks registered for similar goods.
Below we look at the advantages of registering a trademark.
Subsection 1.2: Advantages of trademark registration
Registering a trademark is not just a formality, but a strategic decision that opens up a wide range of opportunities for the owner of the mark to develop and protect the business. Let’s take a closer look at the key advantages of registration:
- Exclusive right to use:
A registered trade mark gives you an exclusive, monopoly right to use it in Ukraine for the goods for which it is registered. This means that no other company can legally use an identical or confusingly similar mark for similar goods without your authorization. This gives you a powerful tool to fight counterfeits and copies of your products and protects your uniqueness and reputation in the marketplace.
- Protection against unfair competition:
Registering a trademark provides you with legal grounds to protect your interests in case of unfair competition. If a competitor uses a mark similar to yours, you can apply to the court to prohibit the competitor’s use of the mark, recover compensation for damages caused, and withdraw the goods labelled with the counterfeit mark from circulation. This allows you to effectively counteract the illegal use of your brand and maintain your market share.
- Developing a strong and recognizable brand:
A registered trademark is a foundation for building a strong and recognizable brand. It helps consumers easily identify your company and its products among others, sets you apart from your competitors, and forms a positive association with your brand. A recognisable brand attracts more customers, increases customer loyalty, and allows you to sell your products at a higher price.
- Licensing and franchising opportunities:
A registered trademark can be subject to licensing agreements or franchising. You can grant other companies the right to use your mark for a certain fee (royalty), which can become an additional source of income for your business. Licensing and franchising allow you to expand your business geographically and increase its profitability without significant capital investment.
- Increased business value:
A registered trademark is a valuable intangible asset of a company. It can significantly increase the value of your business when selling it, attracting investment or evaluating it for a loan. Investors and business buyers are more likely to value companies with protected brands, as it indicates the stability and growth prospects of the business.
Registering a trademark is an important step for any company looking to protect its brand, grow its business and increase its value. Do not neglect this opportunity and provide your business with reliable protection and competitive advantage.
Section 2: Stages of Trademark Registration in Ukraine
You already understand the importance of trademark registration for your business. Now it’s time to look at the registration process itself, which consists of several important steps. In this section, we will go through each stage in detail, from similarity search to obtaining a certificate, so that you can confidently go through this process and successfully register your trademark.
The first and extremely important step is the similarity search, which we will discuss in the next subsection.
Subsection 2.1: Similarity Search
Before filing an application for registration of a trademark, it is mandatory to conduct a search for similar or identical marks that are already registered or filed for registration in Ukraine. This will help you to avoid refusal of registration and save time and money.
Why do I need a similarity search?
A similarity search allows you to:
- Ensure that your trademark is unique: You can be sure that your mark does not duplicate existing marks and has a chance of successful registration.
- Avoid conflicts with owners of other marks: You will be able to prevent possible legal disputes and protect your business from unpleasant consequences.
- Save time and money: You will avoid application and review costs if your mark is not unique.
Where to conduct a search?
You can conduct a similarity search yourself or contact an intellectual property specialist (patent attorney).
Resources for independent search:
- Ukrainian Institute of Intellectual Property (Ukrpatent) database: https://base.uipv.org/ – official resource for searching registered and applied trademarks in Ukraine.
- International Trademark Database (WIPO): https://www.wipo.int/branddb/en/ – allows you to search for trademarks registered in different countries of the world.
Recommendations for conducting a search:
- Use different spellings and images of the sign: Check the different spellings of your sign, including synonyms, abbreviations, and transliteration. Also, pay attention to the similarity of the sign image.
- Pay attention to the classification of goods and services: Make sure that you check for similar marks in the classes of the International Classification of Goods and Services (ICDS) that are relevant to your business.
- Consult an expert: If you have any doubts or difficulties with your search, we recommend that you consult a patent attorney.
A thorough similarity search is the first step towards successful trademark registration.
Next, we look at the importance of selecting the right ICTU classes for your trademark.
Subsection 2.2: Classification of Goods and Services (ICTS)
After conducting a similarity search, the next important step in trademark registration is to select the correct classes of the International Classification of Goods and Services (ICGS).
What are the ICCS?
The ICCT is an international classification system that divides all goods and services into 45 classes. Each class covers a specific group of goods or services. For example, Class 9 includes computers, software, scientific instruments; Class 35 includes advertising, marketing, retailing; Class 41 includes education, entertainment, sports.
Why is it important to choose the right ICTU classes?
The correct choice of ICTU classes determines the scope of protection of your trademark. Your mark will be protected only for those goods or services that are specified in the application for registration and that correspond to the selected ICTU classes. If you do not include all the necessary classes in your application, your mark will not be protected for the relevant goods or services and others will be able to use similar marks without your authorisation.
How do I determine the necessary ICCT classes?
- Identify all goods and services that you offer or plan to offer under your trademark.
- Find the relevant ICCM classes for each product or service. You can use the search on the Ukrpatent website or contact a patent attorney.
- Include all found classes in your trademark application.
Tips for selecting ICTU classes:
- Be thorough: Don’t miss any of the goods or services you offer or plan to offer.
- Consider the future development of your business: If you plan to expand your range of goods or services, include the relevant ICTU classes in your application.
- Consult an expert: If you have any doubts or difficulties with the choice of ICTU classes, it is advisable to contact a patent attorney.
The right choice of ICTU classes is a guarantee of proper protection of your trademark and your business.
Next, we will look at the procedure for preparing and filing a trademark application.
Subsection 2.3: Preparation and filing of the application
After you have conducted a similarity search and determined the classes of ICTU, it is time to prepare and file an application for trademark registration with UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation).
List of required documents:
To apply you will need the following documents:
- Application for trademark registration: The application must contain information about the applicant (full name or company name, address, contact details), the image of the trademark, and a list of goods or services for which the applicant requests to register the mark (according to the ICTU), as well as other necessary information.
- Image of the trademark: The image must be clear and comply with the requirements of UKRNOIVI regarding size and format.
- Document confirming payment of the state fee: The amount of the state fee depends on the number of ICTU classes for which the applicant requests to register the mark.
Application procedure:
An application for trademark registration can be submitted online through the electronic office on the UKRNOIVI website or in paper form by mail or in person.
Recommendations on preparation and submission of the application:
- Carefully fill in all fields of the application: Any error or inaccuracy may be grounds for refusal of registration.
- Make sure that the image of the trademark complies with the UKRNOIVI requirements.
- Keep copies of all documents you file.
- Consult a patent attorney: If you have difficulties with the preparation and filing of the application, it is recommended to consult a specialist.
Once the application is filed, UKRNOIVI starts the examination process. We will talk more about this in the next subsection.
Subsection 2.4: Examination of the application
After filing a trademark application with UKRNOIVI, it undergoes an examination process, during which its compliance with legal requirements and the uniqueness of the trademark are checked.
Stages of examination:
The examination of an application consists of two main stages:
- Formal examination: At this stage, the correctness of the application and the availability of all necessary documents are checked. The payment of the state duty is also checked.
- Qualification examination: At this stage, UKRNOIVI experts analyze the trademark for its compliance with the requirements of the legislation and check it for the presence of similar or identical marks already registered or filed for registration.
Possible reasons for refusal of registration:
UKRNOIVI may refuse to register a trademark for the following reasons:
- The trademark does not meet the legal requirements: For example, the mark may be descriptive, misleading or contrary to public policy.
- Presence of similar or identical marks: If the examination finds a mark that is similar or identical to yours and is registered for similar goods or services, you may be refused registration.
- Incorrect application or incomplete documents: Formal errors may also be grounds for refusal.
Examination timeframe:
The timeframe for the examination of an application depends on the complexity of the mark and the workload of UKRNOIVI experts. Usually the examination takes from 12 to 18 months.
What to do in case of a refusal?
If UKRNOIVI has refused to register a trademark, you have the right to appeal this decision to the UKRNOIVI Appeal Chamber or in court.
Recommendations:
- Prepare the application thoroughly and check it for errors: This will reduce the risk of rejection at the formal examination stage.
- Conduct a thorough search for similar marks: This will help you assess the chances of successful registration and avoid rejection at the qualification examination stage.
- Contact a patent attorney: The specialist will help you prepare your application correctly and increase the chances of successful trademark registration.
After a successful examination, you will receive a trademark certificate, which will be discussed in the next subsection.
Subsection 2.5: Obtaining the certificate
So, your trademark application has successfully passed all stages of examination at UKRNOIVI. This is great news! Your mark is officially recognized as unique and meets all legal requirements. The final step is to obtain the coveted certificate, which will secure your rights to the trademark.
How to get the certificate?
After a favorable decision of the examination, UKRNOIVI will inform you about it and publish information about the registration of your trademark in the official bulletin “Industrial Property”. From the moment of publication, the three-month period during which third parties have the right to file objections against the registration of your mark begins. If no oppositions are filed within these three months or they are found to be unfounded, UKRNOIVI will issue you a trademark certificate.
What is a certificate?
A trademark certificate is an official document that confirms your exclusive right to use the mark in Ukraine. The certificate will contain your name (or the name of your company) as the owner of the mark, the image of the mark itself, the list of goods or services for which it is registered, the date of registration, and the term of validity of the certificate.
How long is the certificate valid?
The term of validity of a trademark certificate is 10 years from the date of filing the application. But don’t worry, after this period expires, you can easily renew the certificate for another 10 years by paying the state fee.
Why is the certificate so important?
A certificate is not just a piece of paper. It is your main proof that you are the legal owner of the trademark and have the exclusive right to use it. It enables you to protect your brand from illegal copying and use by competitors. If someone infringes your rights, you can go to court, presenting the certificate as proof of your ownership, and demand that the infringement stop and compensation for damages.
Having obtained a trademark certificate, you can sleep easy knowing that your brand is under the reliable protection of the law.
Below we will look at the cost and terms of trademark registration in Ukraine so that you can plan your budget and time.
Section 3: Cost and timing of trademark registration
Trademark registration is an investment in your brand and its future, and like any investment, it requires certain costs. In this section, we will look at the main components of the cost of trademark registration in Ukraine, as well as the estimated timeframe for the UKRNOIVI to consider your application. Understanding these aspects will help you plan your budget and the time required to obtain a certificate for your trademark.
Let’s start by looking at the government fees and charges you need to pay when registering.
Subsection 3.1: State duties and fees
Trademark registration in Ukraine, like any official procedure, involves the payment of state duties and fees. The amount of these fees depends on several factors, the main of which is the number of classes of the International Classification of Goods and Services (ICDS) for which you want to register your mark. The cost is also affected by the method of filing the application – online or in paper form.
Basic state fees and charges (as of 2024):
- For filing an application for trademark registration: This is a basic fee that is paid when filing an application. Its amount is directly proportional to the number of ICTU classes in which you want to protect your mark. The cost of filing an application for one class of ICTU is UAH 3150.
- For issuing a trademark certificate: After successfully passing the examination and publishing information about the registration of your mark in the official gazette “Industrial Property”, it is necessary to pay the fee for issuing the certificate. On average it amounts to 850 UAH per class of ICTU.
- For publishing information on trademark registration: There is also a fee for publishing information on your registered mark in the official gazette “Industrial Property”. On average, it amounts to UAH 600 per one class of ICTU.
Please note: Amounts of state fees and charges may change over time. Therefore, before filing an application, we recommend checking the current information on the official website of UKRNOIVI or consulting a patent attorney.
In the next subsection, we will look at the indicative timeframes for processing a trademark application at UKRNOIVI so that you have an idea of the length of the registration process.
Subsection 3.2: The frame for processing the application
Apart from cost, an important aspect of trademark registration is also the time it takes to obtain a certificate. The processing time of an application at UKRNOIVI depends on various factors, such as the complexity of your mark, the workload of the examiners and the presence of objections from third parties.
Approximate timeframes for processing an application:
- Formal Examination: This stage usually takes about 1-2 months from the date of application submission. At this stage, the correctness of the documents and the availability of all necessary papers are checked.
- Qualification examination: This is the longest stage, which can take from 17 to 20 months from the date of application submission. At this stage, UKRNOIVI experts thoroughly analyze your mark to ensure that it is unique and complies with legal requirements.
- Publication and issuance of the certificate: After successful examination, information about the registration of your trademark is published in the official bulletin “Industrial Property”. A three-month period is then granted for third parties to file objections. If there are no objections, UKRNOIVI issues a trademark certificate. This stage usually takes about 1-2 months.
Thus, the total term of trademark registration in Ukraine may take from 20 to 24 months.
It is important to remember that the indicated terms are indicative and may vary depending on the specific situation. For more precise information we recommend contacting a patent attorney.
Now that we have considered the cost and timing of trademark registration, let’s move on to conclusions and general recommendations.
Conclusion
Registering a trademark is an important step for any business looking to protect its uniqueness, enhance its reputation and secure a competitive advantage in the marketplace. While the registration process may seem complicated, understanding the steps and basic requirements will help you successfully navigate this journey and obtain a certificate for your trademark.
Remember:
- Careful search for similarity, correct choice of ICTU classes, and careful application are the key factors for successful registration.
- Contacting a patent attorney will significantly increase your chances of obtaining a certificate and protect you from possible mistakes.
Do not postpone the registration of your trademark until later. Protect your brand today and give it a solid foundation for future development!
For more information on protecting your brand, please read our articles:
Is it possible to register a trademark that is already in use but not registered by another company? What are the risks and opportunities in such a situation?
The situation when you want to register a trademark that is already in active use by another company, but not registered by it, is quite common and requires careful consideration. It has both certain risks and opportunities.
Opportunities:
- First priority right to registration: In Ukraine, the principle of “first to file – first to receive” applies. This means that if you are the first to apply for registration of a trademark that is already in use by another company but not registered, you have the best chance of obtaining a certificate.
- Protecting your brand: Successful trademark registration will give you the exclusive right to use your trademark and protect your business from unfair competition from a company that has used the mark before without registration.
- Strengthening your market position: Registering a trademark can increase your competitiveness as consumers are more likely to trust companies with registered brands.
Risks:
- Objections from the company that is using the trademark: A company that is already using the trademark may file an opposition to your application for registration. In this case, you will have to prove your right to register the mark, which can be a lengthy and costly process.
- Litigation: If the company that uses the mark believes that your actions infringe on its rights, it may file a lawsuit in court. This can result in significant financial costs and loss of time.
- Negative impact on reputation: A trademark dispute can have a negative impact on your company’s reputation, especially if you are accused of trying to “take” the brand from another company.
Recommendations:
- Conduct a thorough similarity search: Before applying, make sure that the trademark you wish to register is not being used by other companies, even if it is not registered.
- Assess the risks: Weigh up all the possible risks associated with registering a trademark that is already in use by another company.
- Consult a patent attorney: An intellectual property specialist can help you assess the situation and advise you on the best course of action.
- Consider negotiation: If the company that uses the mark does not oppose your registration, you may be able to negotiate the sharing of the mark or changes to your mark to avoid conflict.
Conclusion:
Registering a trademark that is already in use by another company, but not registered by it, can be a profitable solution, but it involves certain risks. Careful analysis of the situation, consultation with a specialist, and a well-considered approach to decision-making will help you minimize risks and maximise the benefits of registering your trademark.
What are the specifics of trademark registration for products sold online, such as through an online store?
Registering a trademark for goods sold online has its own peculiarities that are worth considering to ensure maximum protection for your brand in the digital environment.
- Classification of Goods and Services (ICTU):
- Inclusion of classes relating to online commerce: In addition to the ICTU classes corresponding to the category of your goods, it is also important to include classes relating to the sale of goods online, such as Class 35 (advertising, marketing, retailing). This will ensure that your mark is protected not only for the goods themselves but also for the way in which they are sold.
- Domain name and social media:
- Domain Name Registration: Make sure your domain name does not infringe on already registered trademarks. Preferably, the domain name should contain your trademark or part of it.
- Register social media accounts: Register your brand’s accounts on popular social media platforms using your trademark. This will help you control the use of your brand on social media and prevent the creation of fake accounts.
- Territorial protection:
- International registration: If you plan to sell your goods outside Ukraine, consider registering your trademark internationally, for example, through the Madrid system.
- National registration in the countries where you do business: If you do not use the Madrid system, register your trademark separately in each country where you plan to sell your goods.
- Evidence of use:
- Keep evidence of the use of your trademark in the online environment: This can be screenshots of your website, social media pages, advertisements and the like. You may need this evidence in the event of a dispute over your trademark rights.
- Privacy and use of personal data policy:
- Develop and publish privacy and use of personal data policy on your website: This is important not only from a consumer protection perspective but also to protect your brand from potential claims.
- Site Terms of Use:
- Develop and post on your website This will help prevent illegal use of your brand.
- Monitoring:
- Monitor the Internet regularly for illegal use of your trademark: Use specialized services for automatic monitoring or conduct manual searches.
Conclusion:
Registering a trademark for goods sold online has its own nuances that are worth considering to ensure maximum protection of your brand in the digital environment. Following the above-mentioned recommendations will help you avoid problems and strengthen your brand’s position in the online market.
What should I do if my trademark application was denied because of a similar mark, but I believe my mark is sufficiently distinctive?
Being refused trade mark registration due to the presence of a similar mark can be unpleasant news, especially if you are sure that your mark is sufficiently different and not misleading to consumers. However, don’t despair – you have the option to appeal the decision.
- Analyse the rejection decision:
- Carefully analyse the UKERNOIVI decision to refuse: Pay attention to the reasoning of the examiners, what aspects of similarity they consider to be essential, and what evidence they rely on.
- Consultation with a patent attorney:
- Contact a patent attorney for: The specialist will help you analyse the rejection decision, assess the chances of a successful appeal and develop an optimal strategy of action.
- Possible courses of action:
- Filing an appeal to the UKRNOIVI Appeal Chamber: This is the first step in appealing the refusal decision. In the appeal, you need to justify why you believe that your mark is sufficiently different from a similar mark and is not misleading to consumers. You can provide additional evidence to support your position, such as market research that shows that consumers do not confuse your mark with a similar mark.
- Appeal: If the Appeals Chamber rejects your appeal, you can appeal the decision to the courts.
- Arguments in favour of the distinctiveness of your mark:
You may rely on the following arguments to justify distinguishing your sign from similar signs:
- Visual difference: Different colours, fonts, graphic elements.
- Phonetic difference: Different sounds of the name.
- Semantic difference: Different meanings of the name.
- The impression the mark makes on consumers: Even if the marks have certain similar elements, the overall impression they make on consumers may be different.
- Additional evidence:
You may provide additional evidence to support your position, such as:
- Market research results Research shows that consumers do not confuse your mark with a similar mark.
- Expert testimony: Expert testimony from marketing, design, and linguistic experts confirms that your mark is distinctive.
- Evidence of long and unhindered use of your mark in the market: If you have already been using your mark for a certain period of time without any complaints from owners of similar marks, this may be an additional argument in your favour.
Conclusion:
A refusal to register a trade mark because of the presence of a similar mark is not a final decision. You have the opportunity to appeal this decision by providing convincing arguments and evidence in favour of the distinctiveness of your mark. Consultation with a patent attorney will help you develop an effective appeal strategy and protect your trade mark rights.
Is it possible to register a trademark to an individual rather than a legal entity or sole proprietor? What are the advantages and disadvantages of this approach?
For example, in Ukraine, it is possible to register a trademark for a physical person, not only for a legal entity or FLP. This is provided for by the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”.
Advantages of trademark registration for an individual:
- The simplicity of the procedure: Registration for an individual can be easier and faster, as it does not require filing additional documents that are required for legal entities or FLPs (e.g. extract from the Unified State Register).
- Lower costs: Some patent attorneys may offer lower prices for trademark registration for individuals.
- Privacy: If you do not want to disclose information about your company or FLP, registering as an individual may be the best option.
- Transferability: You can transfer trademark rights to a legal entity or FLP at any time, for example, if you incorporate a company in the future.
Disadvantages of registering a trademark for an individual:
- Restrictions on use: A natural person can only use a trademark for self-employment. This means that you cannot use the mark for commercial activities unless you are registered as an FLP or a legal entity.
- Licensing and franchising difficulties: An individual cannot enter into licensing or franchising agreements to use a trademark.
- Inheritance risks: If an individual who owns a trademark dies, the procedure for inheriting rights to the mark can be complicated and lengthy.
- Potential problems when selling a business: If you plan to sell your business in the future, having a trademark registered to an individual may complicate the sale process.
Recommendations:
- *Consider carefullyall the advantages and disadvantages of registering a trademark for a natural person.
- Consult with a patent attorney: The specialist will help you choose the best registration option, taking into account your individual needs and future plans.
- *If you plan to develop your business and use the trademark for commercial activities, registration for a legal entity or FLP will be more appropriate.
Conclusion:
Registering a trademark for an individual can be advantageous in some situations, but it has its limitations and risks. Careful analysis of your needs and consultation with a specialist will help you make the right decision.
How to calculate the value of a trademark after its successful registration?
Once successfully registered, a trademark becomes a valuable intangible asset of your company. Its value can be important for various purposes such as:
- Selling a business: When selling a business, a trademark can be valued separately and included in the total value of the company.
- Attracting investment: Investors consider the value of the trademark when assessing the potential of the company.
- Obtaining a loan: A trademark can be used as collateral to obtain a loan.
- Licensing: When entering into licensing agreements, it is important to know the value of the trademark to determine the royalty.
- Franchising: The value of a trademark is an important factor in calculating the value of a franchise.
There are several methods for estimating the value of a trademark:
- Income approach:
This approach is based on estimating the future income that a trademark can generate. For this purpose, such factors as:
- Sales volume of goods/services labeled with the trademark.
- Profitability of sales.
- Projected market growth rate.
- The duration of the legal protection of the trademark.
- Market Approach:
This approach is based on comparing the value of your trademark with the value of similar marks that have been sold or licensed in the market. To do this, factors such as:
- Similarity of the marks in terms of image and word element.
- Classes of ICTU for which the marks are registered.
- The marks’ fame and reputation in the market.
- Terms of sale or licensing transactions.
- Cost approach:
This approach is based on estimating the costs that have been incurred to create and promote the trademark. This may include costs such as:
- Designing the design of the mark.
- Registration of the mark.
- Marketing costs to promote the mark.
- Combined approach:
This approach combines elements of the income, market, and cost approaches to obtain a more accurate estimate of the value of a trademark.
Recommendations:
- Contact a professional valuer: Valuation of a trademark is a complex procedure that requires specialized knowledge and experience. It is recommended to contact a professional valuer who is appropriately qualified and accredited.
- Use multiple valuation methods: To obtain a more objective estimate of the value of a trademark, it is recommended to use multiple valuation methods and compare the results obtained.
- Consider your business and market: The value of a trademark can vary significantly depending on the industry you operate in and the competitive environment.
Conclusion:
Calculating the value of a trademark is an important step for many business processes. A professional valuation, carried out using various methods and taking into account the specifics of your business, will help you maximize the use of this valuable asset.
