Insights Archives - Page 10 of 12 - Polikarpov Law Firm

Question 1

What are the main differences between "brand patenting" and "trade mark registration"? Why are they not the same thing?

Accepted Answer

Although one often hears the phrase “brand patenting”, from a legal point of view, this is an incorrect use of terms. A patent and a trade mark are different tools for intellectual property protection, dealing with different subject matter.

Patent:

Object of protection: An invention, i.e. a technical solution that provides a new effect or improves an existing one. It can be a new formula, a manufacturing process, a device design, etc.
Right to Use: A patent grants the exclusive right to use, manufacture, sell and import the patented invention for a specified period of time (usually 20 years from the date of filing).
Example: A company that has developed a new technology for producing environmental packaging can take out a patent on the technology.

Trade mark:

Object of protection: A designation by which consumers can identify and distinguish the goods or services of one producer from similar goods or services of other producers. It can be a name, logo, symbol, colour, melody, etc.
Right of use: Registration of a trade mark grants the exclusive right to use this designation to mark one’s goods or services in Ukraine for 10 years with the possibility of further extension.
Example: The name “EcoPack” and the logo of a company producing ecological packaging can be protected by a trade mark.

Why are they not the same thing?

Different objects of protection: A patent protects a technical solution, while a trade mark protects a designation.
Different rights of use: A patent grants the right to use an invention, while a trade mark grants the right to use a designation.
Different validity periods: A patent is valid for 20 years, while a trade mark is valid for 10 years with the possibility of renewal.

It is important to realise that “patenting a brand” is wrong. A brand is a much broader concept than just a name or logo. A brand includes the reputation, associations and emotions it evokes in consumers. Brand protection is achieved through trade mark registration rather than patenting.

Question 2

Can I patent a brand myself or do I need to contact a lawyer or patent attorney? What are the advantages and disadvantages of each option?

Accepted Answer

Patenting a brand independently, i.e. registering a trade mark in Ukraine, is theoretically possible. Ukrainian legislation allows applying for registration of a trade mark without the assistance of lawyers. However, this way is associated with significant risks and difficulties.

Self-registration:

Advantages:
- Cost savings: You don’t pay attorney or patent attorney fees.
Disadvantages:
- Complexity of legislation: Ukrainian legislation in the field of intellectual property is quite complex. Studying it on your own and understanding its nuances can be difficult and time-consuming.
- Risk of mistakes: Incorrectly completed application, incorrect selection of the ICTU classes, insufficient similarity searches – all of these may lead to refusal of registration.
- Limited defence: In case of disputes or problems with registration, you will have to defend your rights yourself, which can be difficult without appropriate knowledge and experience.
- Incomplete protection: The wrong choice of ICTU classes may limit the scope of protection for your trade mark, making it vulnerable to copying by competitors.

Involvement of a lawyer/patent attorney:

Advantages:
- Expertise: A lawyer or a patent attorney knows all the nuances of the legislation, the rules of filing an application and can conduct a thorough similarity search.
- Protection of rights: In case of problems, a lawyer or a patent attorney will represent your interests and protect your rights in court or in Ukrpatent.
- Saving time: The registration process can take much less time with the help of a professional, as he will take care of all the necessary steps.
- Ensuring strong protection: A professional approach maximises the protection of your brand and avoids potential problems in the future.
Disadvantages:
- Additional costs: You will have to pay attorney or patent attorney fees.

Conclusion:

While it is possible to register a trade mark on your own, it involves many risks and complexities. Hiring a lawyer or a patent attorney may seem like an additional cost, but it is an investment in the reliable protection of your brand and the smooth development of your business.

Question 3

How do I determine which ICCT classes to choose for trade mark registration to maximise brand protection?

Accepted Answer

Choosing the right ICCM (International Classification of Goods and Services) classes is a key step for successful trade mark registration and effective trade mark protection.

Here are some tips to help you make the right choice:

Determine the scope of your business:

What products and services do you offer or plan to offer in the future?
What categories do they fall into?

Familiarise yourself with the ICTU system:

The ICTU consists of 45 classes that cover all possible goods and services.
You can find the full list of classes and the description of goods/services in each class on the Ukrpatent website.

Identify the classes corresponding to your activity:

Review the lists of goods/services in each class and find the ones that match your field.
Make sure you select all classes that may be relevant to your business, even if you don’t plan to use the brand name for all these goods/services now.

Consider potential business expansions:

Select classes that may be relevant to your business in the future if you plan to expand.

Use specialised resources:

There are online services that can help you identify the right ICTU classes based on your brand name and field of activity.
You can contact a patent attorney for professional advice on selecting the right ICTU classes.

Do not limit yourself to just one class:

For maximum protection, it may be necessary to choose more than one class of the ICTU that covers your field of activity.

Examples:

If you manufacture clothing, you need to select the classes of the ICTU covering clothing (e.g. Class 25) as well as classes covering clothing accessories, as you may expand your activities in the future.
If you provide design services, you need to select the classes of the ICTU covering design services (e.g. Class 42) as well as classes covering advertising and marketing, as you may expand your activities in the future.

Remember:

Incorrect selection of ICTU classes may limit the scope of your trade mark protection and may lead to conflicts with other trade mark owners.
Contact an intellectual property specialist for professional advice on the selection of ICTU classes.

Choosing the right ICTU classes is an important step in the trade mark registration process. This will help you maximise the protection of your brand and avoid problems in the future.

Question 4

What should I do if, after registering a trade mark, I discover that another company is using a similar designation? What are the ways to protect my rights?

Accepted Answer

Detecting another company using a similar designation to your registered trade mark can be a serious problem. You need to act quickly and decisively to protect your rights and avoid further problems.

Here are some steps you can take in such a situation:

Gather evidence:

Take screenshots of websites, advertising materials, packaging materials, etc. where the similar designation is used.
Keep other information confirming the use of the similar designation (e.g. date of discovery of the infringement, name of the infringing company, contact details).

Contact a lawyer or patent attorney:

An intellectual property specialist will help you assess the situation, determine the degree of similarity of the designations and advise you on the best course of action.

Possible courses of action:

Contact the offending company: You may be able to agree to voluntarily stop using the similar designation or make changes to their brand.
File a complaint with Ukrpatent: If you believe that the use of a similar designation is illegal and infringes your rights, you can file a complaint with Ukrpatent.
Go to court: If negotiations with the offending company fail or you receive a refusal from Ukrpatent, you can go to court to protect your rights.

Ways to protect your rights:

Stop using the similar designation: A court can order the offending company to stop using the similar designation and remove it from all advertising materials and websites.
Seeking compensation for damages: You can seek compensation from the offending company for the financial losses you have suffered as a result of the use of the similar designation.
Profit from infringing use: In some cases, you may be able to recover a portion of the profits that the infringing company made from the use of the similar designation.

Important:

Take timely action: The sooner you take action to protect your rights, the greater the chances of a successful resolution of the problem.
Consult specialists: Contact a lawyer or patent attorney for professional advice and assistance in protecting your rights.

Remember that registering a trade mark is only the first step in protecting your brand. It is important to monitor the use of your trade mark and take steps to protect your rights in case of infringement.

Blog

Privacy settings

Manage settings

Necessary

Marketing

Personalization

Analytics