Insights Archives - Page 12 of 13 - Polikarpov Law Firm

Question 1

How long is a trademark patent valid?

Accepted Answer

In fact, the term of a trade mark patent is a bit misleading. Patents are generally granted for inventions and provide protection for a limited period of time. In contrast, trademarks can be valid in perpetuity, provided they are continuously used in commercial activities and the registration is properly maintained.

Here is a more detailed explanation:

Unlike trademarks, patents have a clearly defined and limited term of validity. In Ukraine, a patent for utility models is valid for 10 years, and a patent for an invention is valid for 20 years, provided that annual patent maintenance fees are paid in a timely manner. Upon expiry of this term, the invention or utility model passes into the public domain, and anyone can freely use it without the permission of the previous patent holder.
Once you have successfully registered a trademark with the Ukrainian Intellectual Property Institute, it will be protected by law for the initial period of time10 years.
To maintain the legal protection of your trademark beyond the first 10 years, you must file an application for renewal during the last year of this period. This renewal procedure must be repeatedevery next 10 years.
The key to ensuring the perpetual validity of your trademark is itscontinuous use in commercial activity. The owner must actively use the trademark to identify the same goods and services for which it was registered. If a trademark is not used for a long time, it may be cancelled due to non-use.

If you continue to actively use your trademark and follow the procedures for renewing your trademark registration, you can maintain the protection of your trademark in perpetuity.

Question 2

Can I use a trademark without a patent?

Accepted Answer

You can use a trade mark without a patent. Patents and trademarks are different types of intellectual property and serve different purposes:

Patents: protect new, useful and non-obvious inventions (products, processes, technical solutions). They grant the owner the exclusive right to use the invention for a limited period of time.
Trademarks: Protect words, phrases, symbols, logos or other signs that distinguish the goods and services of one business from others. They help customers identify the source of goods and services, building trust and brand image.

Examples:

A company can patent a new type of engine (invention) and at the same time register the company’s name and logo as trademarks (branding)
A coffee shop can use a unique name and symbol as its trademark, while the technical filling of the coffee machine can be protected by a patent of the coffee machine manufacturer.

Important to note:While a trademark does not directly protect the invention itself, it can be a valuable tool for commercialising and building the reputation of your patented product or service.

Question 3

What actions can be taken if my trademark patent is infringed?

Accepted Answer

It is important to clarify here that there is no such thing as “patenting a trade mark”. Trademarksare registered,and inventionsare patented. If your trademark is infringed, here are the steps you can take:

Collecting evidence

Gather as much evidence as possible of your trademark infringement. This may include photographs of infringing goods, advertisements, websites, etc.
Determine how the breach affects your business: reduced sales, brand dilution, negative customer feedback.

Contact a qualified intellectual property lawyer

A lawyer will help you assess the strength of your trademark, whether there is an infringement, and develop a defence strategy.
They can manage all the necessary legal processes.

Send a cease and desist letter:

This is an official letter demanding that the infringer immediately cease the illegal use of your trademark.
Often, a legally sound letter from your lawyer can be sufficient to resolve the situation without further litigation.

A lawsuit in court

If the infringer continues to operate, you can file a lawsuit against them.
In court, you can demand that the use of your trademark be stopped and that damages be paid.

Trademark protection can be a complex process. Consulting a qualified lawyer is the best way to protect your intellectual property rights.

Question 4

Can I transfer my rights to a trademark patent to another organisation or person?

Accepted Answer

Yes, you cantransfer your trademark rightsto another organisation or person!

Unlike patents, which are not transferable after their expiration, trademark rights can be transferred in whole or in part to another legal entity or individual. This process is called the assignment of trademark ownership.

Here are the key points about the transfer of trademark rights:

Transaction formalisation:The transfer of trademark ownership rights must be formalised in a written agreement (contract) between you (the rights holder) and the person or organisation that acquires the rights (the transferee).
Registration of the assignment:After signing the agreement, you need to submit an application for registration of the assignment to the Ukrainian Institute of Intellectual Property. This officially formalises the transfer of ownership of the trademark.
Rights holder’s consent:Your consent is required for successful registration of the assignment (if you are the current rights holder).
Scope of the transfer:You can transfer all of your trademark ownership rights or only part of the rights to use it for certain goods or services.

Recommendations:

Involvement of a lawyer:Consulting a qualified intellectual property lawyer will help you to properly draft the assignment agreement and ensure compliance with all legal requirements.

Verification of the acquirer: Before concluding a transaction, it is recommended to check the reliability and reputation of the person or organisation to whom you are going to transfer the rights to the trademark.

Question 5

Can I extend the term of a trademark patent?

Accepted Answer

Not really. You can’t renew a patent for a trademark, because they are different types of intellectual property.

Patents: patents protecting inventions have a clearly defined term of validity (in Ukraine, 10 years for utility models and 20 years for inventions) and cannot be extended after its expiry. To protect your invention for a longer period of time, you need to apply for a new patent.
Trademarks:The validity of a trademark can indeed be extended, but not indefinitely. Every 10 years, you must submit an application for renewal and pay the appropriate fee.

Subject to these procedures and continuous use, a trademark may be protected in perpetuity.

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