Using and protecting a trademark: the rights of the owner

Obtaining a Trade Mark Certificate is not the final point, but only the beginning. From that moment on, you become the full-fledged owner of a valuable business asset that gives you a whole range of exclusive rights, but also imposes certain responsibilities. In this article, we will look in detail at how to properly use your intellectual property and how to effectively protect it from any encroachment.

Section 1: Basic rights of the owner of a registered TM

So, you have the Trade Mark Certificate in your hands. From this moment on, your brand officially passes into the status of a valuable intangible asset, and with this status you receive a whole arsenal of exclusive rights. And this is not just a declaration of intent on paper. It’s your set of very specific legal tools that allow you to control the use of your brand, profit from it, and vigorously defend it against any encroachment. Let’s go through each of these key rights step-by-step so you can use them to their full potential.

1.1 The exclusive right to use the TM for certain goods and services

This is the cornerstone, the heart of all the rights of a trade mark owner. The exclusive right means that only you and no one else on the territory of Ukraine can legally use your brand. But here there is a critically important clarification: this right is not absolute, it is valid only within the “boundaries” that you yourself defined when registering – that is, for specific classes of goods and services. If you have registered TM “Sunny Bunny” for the production of children’s clothing (class 25), it is you who get a monopoly on this name in clothing. If someone else starts producing Sunny Bunny children’s jackets, he becomes an infringer. However, if another entrepreneur opens an agency for organising children’s parties under the name Sunny Bunny (Class 41), this may not be an infringement because the services are not the same as the goods. Therefore, choosing the right classes when registering is actually defining the perimeter of your future defence. This right allows you to invest safely in marketing, knowing that all the fruits of your labour and reputation belong only to you.

1.2. What is meant by “use”: putting it on goods, packaging, using it in advertising, business documentation, domain name

The term “use of a trademark ” is extremely broad and covers any commercial activity where your brand comes into contact with a consumer or partner. The law protects you in all of these ways. Here’s what that means in practice:

• On products and packaging: This is the most direct use. It can be an embossed logo on a leather bag, a label on a bottle of craft sauce, a tag on a pair of jeans, or a brightly coloured box that comes with a board game. All of this is legitimate territory for your brand.
• In advertising: Any advertising communication. It can be a billboard on the highway, a video on YouTube, banner ads on websites, a targeted post on Instagram or Facebook. If a competitor tries to use your logo or name in their Google Ads campaign to capture your customers, it will be a direct violation of your rights.
• In business documentation: This forms the official image of the company. You have the right to place the TM on letterheads, commercial offers, contracts, invoices, reports and on employee business cards.
• On the Internet:This is the field for the most frequent battles. Your right of use extends to:
  • Domain name: You have a priority right to a domain that matches your TM. Having a certificate is the main argument in the fight against cybersquatters.
  • Social media: Names of pages, groups, nicknames on Instagram, Facebook, TikTok.
  • Content: Using the logo as a watermark on photos, in website design, in infographics, in videos.

Each of these items is your legal way of making your brand visible and recognisable, and each of them is protected by a certificate.

1.3 The right to prohibit others from using your or a confusingly similar TM without your authorisation

This is the mirror image of your exclusive right. It is your “sword” with which you defend your “territory”. You can prohibit anyone from unauthorised use of your brand. And most importantly, this prohibition applies not only to 100 per cent copying, but also to the use of confusingly similar signs. This is where the greatest value of protection lies.

Imagine you have registered a combined TM “Korolivske Smak” with a logo in the form of a crown over a cake for your patisserie. The law would allow you to prohibit a competitor from not only using the name “Korolivsky Smak”, but also, for example:

• “Tsarsky Smak” (semantic similarity).
• “Karaliuskij Smak” (phonetic similarity in transliteration).
• Using a logo with a very similar stylistic crown over a cupcake, even if the name will be different (visual similarity).

The criterion here is one: could the average consumer be misled into thinking that a competitor’s product or service is somehow related to you? If the answer is yes, you have every right to demand that such use be stopped.

1.4 The right to dispose of the rights to the TM: sell, donate, grant licences for use

A registered TM is not just a legal construction, but a full-fledged intangible asset of your company. It has a real market value, it can be valued, put on the balance sheet and, most importantly, it can be disposed of like any other property. Here are the main ways:

• Sale (transfer of rights): You can fully sell your brand to another person or company. This is formalised by a formal contract, which is registered with UKRNOIVI. Often the value of the brand can be many times greater than the value of all the physical assets of the company.
• Licensing (brand leasing): This is the most common way of monetisation. You remain the owner, but for a certain fee (royalty) you allow others to use your TM. This is the foundation of the entire franchising industry. Coffee shop chains, fast food restaurants, clothing shops – they all operate under licence agreements. This allows you to scale your business without having to invest your own money to open new outlets.
• Collateral: In developed economies, the value of a well-known brand is so high that it can be used as collateral for a bank loan.

This turns your brand from a marketing tool into a powerful financial asset.

1.5 The right to affix a warning mark – the Latin letter R in a circle (®)

The ® ( Registered)symbol is a globally recognised way of letting everyone know that your brand is legally protected. Using this mark is your right, not your obligation, but it is a very useful right.

Why you should use ®:

• Image building: It instantly adds solidity and credibility to your brand in the eyes of consumers, partners and investors. It signals that you are serious about your business.
• Preventive defence: This is a powerful deterrent to potential infringers. It non-verbally says, “We have invested in legal defence. We monitor the market. An attempt to copy us will result in a lawsuit. Many small “pirates” will simply not want to get involved with a company that so clearly declares its readiness to defend itself.

A very important caveat: You may use the ® symbol only after the date of registration of your TM and receipt of the certificate. The use of this symbol for an unregistered mark is a direct violation of the law “On Advertising” and “On Protection from Unfair Competition” and can lead to significant fines. For a sign that is still in the process of registration, sometimes the unofficial symbol ™ is used, which has no legal force in Ukraine, but signals your intentions.

Section 2: Obligations of the owner: what you need to do in order not to lose your rights

Owning a trade mark is not only a privilege but also a responsibility. If you want your “shield” to remain strong, it must be taken care of. Legislation provides a number of responsibilities for the certificate holder. Ignoring these responsibilities can lead to the worst case scenario – early termination of your certificate and loss of all exclusive rights. Let’s look at the three key pillars that underpin the longevity of your brand.

2.1 Fair use of the trade mark. Why failure to use a TM for 5 years may lead to early termination of the certificate

This is the most important and most often underestimated responsibility of the owner. The state does not give you a monopoly on a brand so that you can just “keep” a beautiful name in reserve. It gives it to you so that you actively work under that name, develop your business, create jobs and pay taxes. Therefore, the law sets a clear requirement: the trade mark must be used in good faith.

What happens if you have registered a TM but put the certificate “on the shelf” and do not use it in any way? The law says that any interested party (for example, a competitor who wants to use your “mothballed” name) can apply to the court for early termination of your certificate due to non-use of the TM for 5 years continuously from the date of registration (or from another date after registration).

To prove use, you will need to provide the court with evidence of actual commercial activity under this brand over the last 5 years:

• Contracts with counterparties where your TM appears.
• Customs declarations for export or import of goods with your labelling.
• Product catalogues, advertising materials, screenshots of the website for different periods.
• Financial documents confirming the sale of goods or provision of services under this TM.

If you cannot provide convincing evidence, the court can cancel your certificate and your brand becomes free for registration by anyone. This is done to combat so-called “patent trolls” who register hundreds of names not for use, but for further resale or blackmail of real businesses. So the rule is simple: your registered brand must work.

2.2 Monitor the market and keep track of possible infringements by competitors

Your certificate does not work automatically. The state will not itself monitor whether someone is copying your brand. This is solely your responsibility as the owner. Imagine that you have installed an expensive alarm system in your house, but you never check if someone is trying to break into it. It’s the same with TM: you must constantly “scan” the market for possible infringements.

What monitoring involves:

• Regular internet search: Search your name and similar variants in Google, social networks, marketplaces (Rozetka, Prom, OLX).
• Monitor applications for TM registration: It is worthwhile to periodically review the UKRNOIVI bulletins to monitor whether someone is trying to register a similar mark. If such an application is detected early on, it is possible to file an opposition and stop the registration of the “clone” before it is even on the market.
• Analyse competitors’ activities: Keep an eye on what names and logos your direct competitors are using in their advertising and on their products.
• Customer feedback: Sometimes customers themselves may tell you that they have seen “similar” products elsewhere.

If you discover an infringement and do not respond in any way, you are effectively acquiescing to the fact that the market is “diluting”. Over time, this can lead to your TM losing its distinctiveness and uniqueness, and it will be much more difficult to prove your rights in court. Active monitoring is proactive protection of your investment.

2.3 Timely renewal of the certificate every 10 years

A trade mark certificate is not issued for life. It has a validity period of 10 years from the date of application. However, unlike a patent, a TM certificate can be renewed indefinitely, each time for another 10 years. This allows your brand to live as long as your business exists.

The renewal procedure is not automatic. It is your responsibility to apply to UKRNOIVI in time with the relevant application and pay the state renewal fee. You can do this during the last 6 months of the current validity period of the certificate. There is also a grace period of another 6 months after the expiry date, but at this time the renewal fee will be 50% higher.

If you miss this 6-month grace period, your certificate will expire. It will be impossible to reinstate it. Your brand will be free, and anyone, including your worst competitor, will be able to apply and register it for themselves. You will have to go through the whole registration procedure from the beginning, with the risk that someone will beat you to it. Therefore, timely renewal of rights is a critical administrative task that must not be forgotten. For more details on how long a trade mark is valid and how the procedure is carried out, see our separate article “Trade Mark Certificate Validity and Renewal“.

Section 3: Effective trade mark protection against infringement

We’ve already established that monitoring the marketplace is the owner’s responsibility. But what should you do when you do discover a violation? You find an online shop that sells goods under your brand, or you see a competitor’s advert with your logo on it. Sitting idly by is the worst strategy. The law gives you a whole range of tools to vigorously defend your rights, from peaceful negotiation to fierce court battles. Let’s consider three main ways you can go about it.

3.1. Pre-trial settlement: sending a cease and desist letter to the infringer

This is the first, most logical and often the most effective step. Before deploying the “heavy artillery” in the form of courts and government agencies, it is worth trying to resolve the issue peacefully. It is quite possible that the infringer is acting out of ignorance rather than malice. Perhaps he simply did not check the availability of a registered TM before launching his product.

The pre-trial settlement process usually looks like this:

1. Recording the violation. You collect evidence: take screenshots of the infringer’s website or social media, make a test purchase of the goods, take photos of the sign. It is important that the evidence is dated.
2. Preparation of a letter of claim.This is an official document drawn up by a lawyer or patent attorney. It clearly but correctly states the essence of your claims:
   • It indicates that you are the owner of the trademark certificate (with the certificate number).
   • Describe exactly what the infringement of your rights is.
   • Your requirements are formulated: immediately stop the illegal use of the TM, remove it from all materials, destroy counterfeit products, etc.
   • A deadline for fulfilling the requirements is set (usually 10-15 days).
   • It is noted that in case of failure to comply with the requirements, you will be forced to apply to the court and other authorities for the enforcement of your rights, which will lead to much greater financial losses for the violator.
3. Submission of a claim. The letter is sent by registered mail with acknowledgement of receipt to the infringer’s legal address so that you have proof of receipt.

Very often, such an official letter is enough for the infringer to understand the seriousness of the situation and the cost of potential litigation and agree to comply with your demands voluntarily. This is the fastest and cheapest way to achieve results.

3.2 Administrative defence: appeal to the Antimonopoly Committee of Ukraine about unfair competition

If the complaint letter does not work or the infringer deliberately copies your brand to “parasitise” your reputation, you can involve the state body – the Antimonopoly Committee of Ukraine (AMCU). Using someone else’s trade mark without the owner’s permission is a classic manifestation of unfair competition.

The AMCU is authorised to consider such cases and impose serious sanctions on violators. Appealing to the Antimonopoly Committee has a number of advantages:

• Significant fines: AMCU can impose a fine of up to 5% of the infringer’s revenue for the last reporting year. This is a very powerful financial lever that is often much more effective than potential damages in court.
• Speed of consideration: Case consideration in AMCU is usually faster than in courts of general jurisdiction.
• Reputational losses for the infringer: AMCU decisions are public. The fact that a company is recognised as an unfair competitor may cause a serious blow to its business reputation.

To apply to the AMCU, it is necessary to submit an application in which you describe in detail the essence of the violation and add all available evidence (a copy of your certificate, evidence of the violation, a copy of the letter of claim, etc.). This route is an excellent alternative or complement to judicial defence.

3.3 Judicial defence: filing a lawsuit in court with claims for cessation of infringement, compensation of losses, etc.

If neither negotiations nor an appeal to the AMCU have yielded results, the last and most powerful tool remains – trade mark defence in court. This is the most formalised, lengthy and expensive way, but it provides the widest range of opportunities to restore justice.

Having addressed the economic court with a statement of claim, you as the owner of the certificate can demand:

• Cessation of infringement: The court may order the defendant to stop any unlawful use of your TM.
• Seizure of infringing goods: The court may order the confiscation and subsequent destruction of all products labelled with your mark without authorisation.
• Removal of TM from materials: Obligate the infringer to remove your TM from signboards, advertising materials, website, domain name.
• Compensation of losses: You can demand compensation for both real losses (e.g., lost profits) and moral damage. It can be difficult to prove the amount of damages, but the mere fact of such a claim is a serious argument.
• Publication of the court decision: You can demand that the court decision in your favour be published in the media at the expense of the infringer, which is an additional reputational blow for him.

The court process requires impeccable preparation of evidence and qualified legal support. But it is the court judgement, which has entered into legal force, is a final and binding document that puts an end to any dispute.

Conclusions

A trade mark certificate is undoubtedly one of the most powerful tools in the arsenal of modern business. However, its real value and effectiveness depend not on the fact of its existence, but on the active and consistent actions of the owner himself. Ownership of brand rights is not a passive state, but an ongoing process that includes the correct use of the trademark, close monitoring of the market and decisive, timely defence of your interests.

Remember that each ignored infringement “dilutes” the uniqueness of your brand and reduces its value. Therefore, sending a timely claim, appealing to AMCU or filing a lawsuit in court is not a manifestation of aggression, but a necessary action to preserve the health and capitalisation of your valuable asset. If you are faced with violation of your rights or need qualified assistance in building a defence strategy, Polikarpov Law Firm specialists are ready to provide you with professional legal support. After all, this is the only way your brand will not just exist, but thrive, remaining unique and protected for many years to come.