A trade mark certificate is the foundation of your brand, guaranteeing exclusive rights to use it. However, these rights do not last forever. The certificate has a limited validity period, which requires timely and competent renewal. Neglecting this process can lead to the loss of a valuable asset and potential problems with competitors. In this article we will consider the term of validity of a trade mark certificate in Ukraine, the detailed procedure for its renewal, as well as the possible consequences of untimely validity. Understanding these nuances is the key to protecting your brand in the long term.
Section 1: Term of validity of the TM certificate in Ukraine
Protection of your trade mark is not indefinite. The certificate confirming your exclusive rights has a clearly defined expiry date. Understanding this aspect is key to responding in a timely manner and ensuring continued protection of your brand. In this section, we will look in detail at the validity period established by the Ukrainian legislation for trade mark certificates and what options exist for its renewal.
1.1 Term of validity of the certificate
A trade mark certificate in Ukraine grants exclusive rights to use your brand, but the duration of this protection is limited. It is important to be clear that this period is not indefinite, but has a clearly defined term of 10 years, which starts from the date of filing the application for registration with the Ukrainian National Institute of Intellectual Property (UKRNOIVI). This period should not be confused with the moment of obtaining the certificate, as it is counted from the date of filing.
This 10-year period is the period of protection of your trade mark. During this time, you have the exclusive right to use it for the goods and services specified in the application. This means that others cannot use an identical or similar trade mark for similar goods and services without your permission. This right is the basis for protecting your brand from unfair competition and provides some assurance to investors and business partners.
Understanding that expiry dates are limited is critical to running a successful business. Identifying and properly addressing the issue of certificate renewal is an important step for the smooth protection of intellectual property. In the future, if you miss the renewal deadline, you lose exclusive rights to use your trade mark, which can lead to serious legal and financial consequences. Therefore, timely planning and preparation for renewal is a key strategic task for every trade mark owner.
1.2 Extension of validity
The ten-year term of a trade markcertificate is an important, but not the only, element of protecting your brand. Legislation provides for the possibility of extending this term for a further 10 years, which is key to long-term success. This is a strategic opportunity to not only preserve but also strengthen your exclusive rights to use your trade mark.
Trademarkrenewal is not just a legal formality, but a proactive market position that confirms your seriousness and long-term investment in your brand. Without an extension, you lose the exclusive right to use your trade mark, which poses a risk to your reputation and the future of your business. Other companies may use similar names, leading to consumer confusion, reduced profitability and diminished customer loyalty. This can lead to loss of market share and losses for your company.
It is important to understand that certificate renewal is a process that requires timely and thorough execution. Failure to meet deadlines can result in loss of protection, and regaining capacity can be difficult and costly. Therefore, planning and timely application for renewal is an important aspect of strategic management of your trade mark. Hiring professionals who understand legal procedures is advisable to avoid potential mistakes. This is not just a document renewal, but a strategic investment in the long-term success of your brand and company.
Section 2: Certificate renewal procedure
Renewing yourtrade markcertificate is a procedure that needs to be completed in a timely manner to keep your brand protected. In this section, we detail the steps required to renew your certificate, from filing the application to receiving the renewed document. Understanding each step of the procedure will help you avoid mistakes and ensure the continued protection of your rights to trade mark.
2.1 Filing an application to extend the validity of the certificate
The first step in the process of extending the term of validity of the trademarkcertificate is filing the relevant application with the Ukrainian National Institute of Intellectual Property (UKRNOIVI). This is an important stage that requires a careful approach and compliance with the established requirements.
What must the application contain?
The application must contain complete and accurate information about the applicant, the number and date of registration of thetrade mark, as well as the goods and services for which protection is being extended. It is important to provide a clear reference to the existing certificate. The application may be accompanied by additional documents confirming the applicant’s right to renewal (e.g. copies of previously submitted documents, evidence of the use of trade mark). It is necessary to comply with all the requirements set out on the UKRNOIVI website to ensure that the application is processed correctly and in a timely manner.
Key aspects of the application form:
- Reliability of information: The application must contain only valid and up-to-date information. Inaccurate information may result in denial of renewal.
- Completeness: The application must be completed in accordance with the established forms and include all necessary details.
- Timeliness: The application must be submitted to UKRNOIVI no later than three months before the expiry date of the certificate. Timeliness is key for the continued protection of your brand.
- Copies of documents: Always include copies of all necessary documents (e.g. copy of previous application, proof of use of the trade mark).
Correct execution and timely submission of the application is the basis for the successful renewal of the certificate. Compliance with the established requirements guarantees a smooth procedure and preservation of your rights to trade mark.
2.2 Renewing your certificate: How to preserve your trade mark rights
Atrade mark certificate protects your exclusive rights, but it has a limited validity period. In order to extend the protection of your brand, it is necessary to timely apply for the extension of the validity of the certificate. In this section, we will detail the procedure for extending the validity of the certificate for trade mark in Ukraine.
Important: Starting from 2023, the Ukrainian National Institute of Intellectual Property (UkrNOIVI) is responsible for registration and renewal of trade mark certificates . All procedures and requirements should be clarified on the official website of UkrNOIVI.
Renewal of the certificate is a series of clearly defined steps that should be carefully followed for a successful outcome.
- Confirming the status and validity: The first step is to make sure that your trade mark certificate is valid and has no arrears from the previous validity period. This can be done by checking the status of your certificate on the official UkrNOIVI website.
- Finding out the amount of the fee: Be sure to check the current amount of the state fee for renewal of the certificate on the official website of UkrNOIVI. The amount of the fee depends on several factors.
- Preparing the application: After confirming the status and finding out the amount of the fee, prepare an application for renewal of the trade mark certificate in accordance with the requirements of UkrNOVI. The application should clearly indicate the number of the certificate, the period to be extended and contact details.
- Payment of the fee: Pay the renewal fee according to UkrNOVI instructions. The documents on payment of the fee must be submitted together with the application.
- Submission of the application: Submit the prepared application, together with all necessary documents, to UkrNOIVI.
- Receive a response: UkrNOIVI will review your application and inform you of the result.
What is important to remember:
- Carefulness is the key to success: All actions should be performed carefully and according to UkrNOIVI instructions.
- Consultation with a lawyer: If you have questions, consult a lawyer specialising in intellectual property. He or she can help you prepare your documents correctly and reduce the risk of mistakes.
- Deadlines and timelines: Compliance with application deadlines is extremely important to maintain the validity of your certificate.
Always check the latest up-to-date requirements on the official UkrNOIVI website.
2.3 How long does it usually take to renew a trade mark certificate?
The renewal of a trade mark certificate with UkrNOIVI is a process, the duration of which depends on various circumstances. There are no clear-cut deadlines, but it usually takes from three to six months. There are cases when it is quicker, but sometimes it takes longer – sometimes even up to a year.
What does it depend on how long to wait?
- How busy UkrNOIVI is: If there are many applications, it takes longer to process each one.
- How complicated is your case: Sometimes additional expertise is required and this takes time.
- How correct the documents are: If everything is filled out correctly and nothing is missing, the process goes faster. Any mistakes or incomplete documents will lead to delays.
- UkrNOIVI internal procedures: There are certain stages of review that also affect the timeframe.
What to do to make everything go smoothly?
- Apply early: It is better to start the process 4-6 months before the expiry date of the certificate – this will give you more time.
- Check your documents carefully: Before you submit, make sure everything is filled out correctly and all the required documents are attached. This will help you avoid unnecessary delays.
- Consult a lawyer: A lawyer can help you navigate the process and avoid potential problems.
Remember: these deadlines are approximate. If you want to know more precisely, contact UkrNOVII directly.
Section 3: Consequences of non-renewal of a trade mark certificate
Failure to renew a trade mark certificate in a timely manner has serious consequences for the owner. In this section, we will look at what happens after the expiry of the certificate, as well as the options for reinstating trade mark protection. Understanding these implications will help you avoid losing rights to your brand.
3.1 Termination of the certificate
Failure to renew your trade mark certificate in a timely manner results in its automatic termination, which has far-reaching and often irreversible consequences for your business. Losing trade mark protection is not just a formality, it is a serious blow to your reputation, financial position and future development.
Specific consequences of the termination of a certificate:
- Loss of exclusive rights: The most important consequence is the loss of the exclusive right to use your trade mark. This means that anyone can use your trade mark to produce and sell goods or provide services similar to yours. You can no longer control the use of your brand, leading to direct competition and loss of market share.
- Breach of reputation and trust: The use of your brand name by other companies, especially if they are low quality goods, can negatively affect your reputation and reduce customer trust. Consumers may begin to confuse your goods/services with counterfeits, leading to a drop in sales.
- Financial losses: Depending on the extent to which your trade mark is used by others, you may suffer significant financial losses. This includes both loss of profits due to reduced sales and the cost of potential litigation to recover rights.
- Difficulty of recovery: Although in some limited cases it is possible to re-register a trade mark after the certificate has lapsed, the process is complex, time-consuming and financially costly. You also run the risk that the trade mark may already have been registered by another person.
- Reduced competitiveness: Losing trade mark protection significantly reduces your competitiveness. Your competitors will be able to use your brand, putting you at a disadvantage in the marketplace.
The termination of a trade mark certificate is a serious threat to your business. A timely application for renewal is the only sure way to avoid all the above-mentioned negative consequences, preserve your brand and protect your investment.
3.2 Possibility of re-registration:
Although termination of a trade markcertificate due to non-renewal has serious consequences, in some cases it is possible to regain rights through re-registration. However, this is not a guaranteed process and is subject to certain difficulties and limitations.
Is re-registration possible?
Re-registration of thetrade mark after the termination of the certificate is possible only under certain conditions, which are carefully checked by UkrNOVI. It depends on many factors:
- Time elapsed since termination: The more time that has elapsed since the termination of the certificate, the less chance of successful re-registration.
- Use of the trade mark after termination: If the trade mark has been actively used after the termination of the certificate, this may increase the chances of re-registration. However, it is important to prove continuous use and document this fact.
- Existence of registered counterparts: If, after the termination of your certificate, another person has registered a similar trade mark, re-registration will not be possible.
- Proof of ownership: You need to provide convincing evidence of your previous ownership of the trade mark.
The re-registration procedure is similar to the initial registration, but with some differences. You will need to submit a new application, provide the necessary documents, undergo an examination and pay the relevant fees. However, the process itself may be more complex and require significant legal advice.
Re-registration of a trade mark after the termination of the certificate is not an easy path that requires considerable effort, time and resources. It is much easier and more effective to prevent the termination of a certificate by renewing it in a timely manner.
Conclusion
Timely renewal of your trade mark certificate is critical to protecting your intellectual property. Loss of exclusive rights to trademark due to non-renewal of the certificate can result in serious financial loss, damage to your reputation and loss of competitive advantage. Although re-registration is possible in some cases, the process is complex and does not guarantee success. Therefore, we recommend that you always keep track of the expiry date of your certificate and apply for renewal in a timely manner. For advice on the renewal procedure and other issues related to trade marks, please contact Polikarpov Law Firm specialists. For more information, please read our articles “How to choose a memorable name for a trade mark” and “Trademark registration for IE: peculiarities and nuances“.
What is the liability for a trademark owner if he/she misses the deadline for renewal of the certificate?
Missing the renewal deadline for a trade mark certificate has serious consequences for the owner. It is equivalent to losing the exclusive right to use the trade mark, which can lead to significant financial loss, damage to reputation and loss of competitive advantage.
Here are the main consequences of missing the renewal deadline:
- Loss of exclusive rights: Once your certificate expires, anyone is free to use your trade mark. You can no longer prevent others from producing and selling goods or providing services under that trade mark.
- Damage to reputation and trust: The use of your trade mark by others, especially if the goods are of poor quality, can significantly damage your reputation and reduce customer confidence.
- Financial loss: You may suffer significant financial losses due to reduced sales, the need for litigation to regain trade mark rights, and loss of investment in brand development.
- Difficult re-registration: After the termination of the certificate, re-registration of the trade mark is possible, but it is a complex, time-consuming and expensive process. In addition, there is a risk that your trade mark has already been registered by someone else.
- Reduced competitiveness: Losing exclusive rights to your trade mark reduces your competitiveness in the marketplace. Your competitors may use your brand to gain an advantage over you.
You can avoid these consequences by applying for the renewal of your trade mark certificate in good time.
Important: Even if you do not plan to actively use your trade mark in the future, it is better to preserve your rights to it by extending the validity of the trade mark certificate. This will allow you to regain use of your brand at any time without having to re-register.
Remember: Renewing your certificate is a strategic decision to protect your brand investment and ensure its stability in the long term.
Is it possible to extend the validity of a trademark certificate if it is not in use?
Thus, it is possible to extend the term of validity of a trade mark certificate even if it is not used. The legislation of Ukraine does not require mandatory use of a trade mark to extend the validity of the certificate.
However, there are several nuances that should be taken into account:
- Risk of loss of rights: Failure to use a trademark for a long period of time can be grounds for cancellation. This happens when others prove that your trade mark is not being used and has no use to protect. To avoid this risk, it is advisable to keep documentary evidence of minor use of the trade mark (e.g. copies of sales documents, advertising materials, etc.).
- Possible conflicts: If you do not use a trade mark, others may register a similar trade mark and use it for their business purposes. To avoid such conflicts, it is recommended that you renew your trade mark certificate even if you are not currently using it.
- Additional costs: The renewal of a trade mark certificate involves the payment of a government fee. If you do not use the trade mark, you will still pay for its protection.
Important: Even if you are not using the trade mark at the moment, it is better to renew the certificate. This will allow you to retain your rights to it and renew its use at any time.
Recommendations:
- Preserve evidence of minor use of the trade mark.
- Regularly check the UkrNOIVI database for similar trade marks.
- Apply for renewal of your trade mark certificate in a timely manner.
Maintaining your trade mark rights, even if you are not currently using it, is an important strategic decision that will allow you to preserve your brand and protect it from unlawful use by others.
How do I know when my trademark certificate expires?
There are several ways to find out when your trade mark certificate expires:
- Check your certificate:
- The easiest way is to look at your certificate. It shows the date you applied for registration. Count back 10 years from that date and you will get the expiry date.
- Check the UkrNOIVI website:
- The official website of the Ukrainian National Institute of Intellectual Property (UkrNOIVI) contains a database of all registered trade marks in Ukraine.
- You can find your certificate by number or trade mark name. The page with your trade mark information will show the expiry date of the certificate.
- Contact a patent attorney:
- Patent attorneys specialise in intellectual property matters. They have access to the UkrNOIVI database and can easily check the expiry date of your certificate.
- They can also advise you on the procedure for renewing your certificate.
- Receive electronic notification from UkrNOIVI:
- UkrNOIVI may send emails when the expiry of a trade mark certificate is approaching.
- However, not all trade mark owners receive these messages, so it is important to check this information yourself.
Recommendations:
- Regularly check the expiry date of the trade mark certificate.
- Plan the renewal of your trade mark certificate in advance.
- Contact a patent attorney for advice.
Are there any penalties for late filing of an application to renew a certificate?
Fortunately, Ukraine does not provide for penalties for late filing of an application for renewal of a trade mark certificate.
However, this does not mean that you can ignore the renewal deadline.
Here’s what happens if you miss the deadline:
- Loss of exclusive rights: After the certificate expires, anyone is free to use your trade mark.
- Difficult re-registration: You can try to re-register your trade mark after the certificate expires, but it is a complicated, time-consuming and expensive process.
- Risk of conflict: Another person may register a similar trade mark and use it for their business purposes.
Therefore, although there are no penalties, missing the renewal deadline for the certificate may result in significant financial losses and legal complexities.
Recommendations:
- Apply for renewal of your certificate in a timely manner.
- Keep evidence of the use of the trade mark in case you need to re-register it.
- Contact a patent attorney for advice on renewing your trade mark certificate.
A timely renewal of your trade mark certificate is the best way to avoid any unforeseen problems and protect your brand rights.
