Insights Archives - Page 7 of 12 - Polikarpov Law Firm

Question 1

If I develop software as an FLP, do I need to register my trade mark with an individual or is it better to register it with an FLP? What are the differences and consequences in each case?

Accepted Answer

When developing software as an individual entrepreneur (PE), you have the choice of registering a trade mark (TM) for an individual (i.e. yourself as a citizen) or for an PE (i.e. yourself as a business entity). Both options have their differences and consequences.

Registration for an individual:

Advantages:
- Easier registration: You need a smaller package of documents.
- Greater flexibility: If you subsequently change your line of business or decide to close the FLP, the TM will remain your personal property.
Disadvantages:
- Restrictions on use: You will not be able to use the TM for the activities of other legal entities (e.g., if you create an LLC).
- Potential accounting problems: It is more difficult to justify the cost of registering and protecting a TM if it is not used directly in the activities of an FLP.
- Bankruptcy risks: In the event of bankruptcy of an individual, the TM may be included in the liquidation estate.

Registration on FLP:

Advantages:
- Direct link to business: Clear link to FLP’s activities, which facilitates cost accounting and use of TM in commercial activities.
- Easier licensing: It is more convenient to enter into licence agreements for the use of a TM if it is registered to an FLP.
Disadvantages:
- More documents for registration: Need to provide copies of documents confirming FLP status.
- Dependence on FLP status: If the FLP ceases to operate, the TM will need to be reissued to another person or organisation.
- Limitations when expanding your business: If you later decide to create a legal entity, the TM registered to the FLP will need to be transferred to that legal entity.

Implications of the choice:

Ownership: Determines who owns the TM – an individual or an FLP.
Usability: Affects how you can use the TM in your business.
Tax accounting: Determines how you can account for the costs associated with the TM.
Bankruptcy Risks: Affects how TM will be distributed in the event of bankruptcy.

Recommendations:

If you plan to use the TM exclusively in your business as an FLP, it is better to register it with the FLP. This will simplify the accounting of expenses and the use of the TM.
If you plan to expand your business in the future, create a legal entity or engage in other activities that are not associated with an FLP, it is better to register the TM for an individual.
If you are not sure which option to choose, consult a lawyer or a patent attorney.

The choice between registering a trade mark as an individual or as an FLP depends on your plans and needs. Both options have advantages and disadvantages that should be taken into account when making a decision. It is recommended to analyse your current situation and future plans in order to make the right choice. Polikarpov Law Firm specialists will help you analyse your situation and choose the best option for trademark registration. Please contact us for a consultation.

Question 2

Can I make changes to a trade mark application after it has been filed? Which amendments are allowed and which are not and how to do it correctly?

Accepted Answer

Yes, it is possible to amend a trade mark application after it has been filed, but it is restricted by certain rules and conditions. Not all amendments are permitted and failure to follow the amendment procedure may result in negative consequences.

Permitted changes:

Correction of obvious errors: Correction of grammatical errors, typos, inaccuracies in the applicant’s data, etc.
Change of address for correspondence: Changing the address to which UKERNOIVI will send correspondence.
Clarifying the list of goods and services: Narrowing the list of goods and services, i.e. removing some items from the list.
Priority Statement: Adding priority information if you have applied for this TM in another country within the last 6 months.
Change of Representative: Change of representative if you decide to use a different lawyer or patent attorney.

Unauthorised changes:

Change of designation: Change of the trade mark image itself (name, logo, slogan).
Expansion of the list of goods and services: Adding new goods and services to the list.
Change in the type of designation: For example, replacing a verbal designation with a pictorial designation.
Change of applicant: Change of the person who filed the application (except in cases of reorganisation of a legal entity).

How to properly make changes:

Filing a Petition: In order to make any changes to an application, a formal petition for amendment must be filed with UKRNOIVI. The petition must be in writing and signed by the applicant (or their representative).
Justification for the change: The petition must clearly state what changes you want to make and justify the need for the change.
Adding supporting documents: You must attach documents to the petition to justify the change (e.g., a copy of the change of address certificate, a copy of the power of attorney for the new representative).
Paying a fee (if applicable): Some changes may be subject to a fee. Information on fees can be found on the UKRNOIVI website.
Compliance with deadlines: The application for amendments must be submitted on time, before a decision is made on the application. Once a decision has been made, it is usually not possible to make changes.

Important:

All amendments that are made to the application must be justified and must not significantly affect the essence of the applied designation.
UKRNOIVI has the right to refuse to make changes if they do not meet the requirements of the legislation.

Amendments to the application for trade mark registration are possible, but are limited by certain rules. It is necessary to follow the application procedure, justify the need for amendments and attach supporting documents. In order to avoid mistakes and ensure correct amendments, it is recommended to seek the assistance of a patent attorney. Polikarpov Law Firm provides services for amending trade mark applications. We will help you to correctly draw up all the necessary documents and protect your rights. Contact us for counselling!

Question 3

What should I do if I disagree with UKRNOVIA's decision to refuse to register my trade mark? Is there a possibility to appeal against this decision and how to do it?

Accepted Answer

Yes, if you do not agree with UKRNOIVI’s decision to refuse to register your trade mark, you have the opportunity to appeal this decision. Ukrainian legislation provides for an appeal procedure that allows you to protect your rights and review UKRNOIVI’s decision.

Appeal procedure:

Filing an Objection with the Appeals Chamber: The first step is to file an objection with the UKERNOIVI Appeals Chamber. An objection is a written document in which you state your arguments against the rejection decision and ask the Appeals Chamber to reconsider the decision.
Deadline for filing an objection: An objection to the Appeals Chamber must be filed within three months of the date on which you received the refusal decision. It is very important to respect this deadline, as missing it may result in the loss of the right to appeal.
Form and content of the objection:The objection must be in writing and contain:
- Data on the applicant (your data or your company’s data).
- The number of the application for registration of the trade mark. The
- date of the refusal decision you are challenging.
- A clear statement of the reasons why you do not agree with the decision of UKRNOIVI.
- Reasoned arguments in favour of registering your trade mark (references to legislation, court practice, results of market research, etc.).
- List of documents to be attached to the opposition (e.g. copies of documents confirming the use of your trade mark, results of consumer surveys, expert opinions).
- Signature of the applicant (or his representative).
Payment of the filing fee: You must pay a fee to file an opposition with the Appeals Chamber. Information on the fee can be found on the UKERNOIVI website.
The Appeals Chamber: After receiving your appeal, the Appeals Chamber will review it, consider your arguments and evidence, and analyse the case file.
Decision of the Appeals Chamber:After reviewing the opposition, the Appeals Chamber may take one of the following decisions
- : Leave the UKRNOIVI decision unchanged (refuse registration).
- Overturn the UKRNOIVI decision and decide to register your trade mark.
Appealing the decision of the Appeal Chamber in court: If you do not agree with the decision of the Appeal Chamber, you have the right to appeal it in court. The time limit for filing an appeal with the court is limited, so you must act quickly.

Recommendations:

Do not hesitate to appeal: If you believe that the UKERNOIVI decision is unfounded, do not waste time and start preparing your objection to the Appeals Chamber as soon as possible.
Prepare strong arguments: Your objection should be clear, well-reasoned and supported by strong evidence.
Seek professional help: Appealing a UKERNOIVI decision is a complex process that requires knowledge of the law and experience. Applying to a lawyer or patent attorney will help you to prepare all necessary documents and arguments correctly, which will significantly increase your chances of success.

Polikarpov Law Firm has considerable experience in appealing against UKRNOIVI decisions. We will help you to assess the prospects of your case, prepare a strong defence and represent your interests in the Appeal Chamber and court. Contact us for a consultation!

Question 4

Can I sell or transfer the right to a registered trade mark to another owner? What is the procedure for transferring rights and is it necessary to register the agreement on transfer of rights in UKRNOIV?

Accepted Answer

Yes, you can sell or transfer the rights to a registered trade mark to another owner. The legislation of Ukraine provides for the possibility of transferring property rights to a trade mark by entering into a relevant agreement.

Forms of transfer of rights to a trade mark:

Contract of transfer of rights (assignment of rights): This contract provides for the complete transfer of all property rights to the trade mark from one owner (right holder) to another. After the conclusion of this contract, you cease to be the owner of the trade mark and all rights to it are transferred to the new owner.
Licence agreement: This agreement gives another person (the licensee) the right to use the trademark for a certain period of time and in a certain territory. You (the licensor) remain the owner of the trade mark.

Procedure for transferring rights (assignment of rights) to a trade mark:

Conclusion of the agreement on the transfer of rights:The agreement on the transfer of rights must be concluded in writing. The following must be clearly stated in the agreement:
- Data on the right holder (seller) of the trade mark
- . Data on the new owner (buyer)
- Number of the trade mark certificate.
- The list of goods and services for which the rights to the trade mark are transferred.
- The cost of the transfer of rights (if provided for in the agreement).
- Other terms and conditions of the transfer of rights (for example, the liability of the parties).
State registration of the agreement on transfer of rights with the SCRNOVI: In order for the transfer of trade mark rights to acquire legal force, it is necessary to register the agreement on transfer of rights with the SCRNOVI.
Submission of documents to UKRNOIVI:In order to register the agreement on transfer of rights in UKRNIIVI it is necessary to submit
- :Application for
registration of transfer of rights
- . Original or notarised copy of the agreement on transfer of rights.
- Document on payment of the fee for registration of transfer of rights
- . Other documents (at the request of UKRNIIVI).
Consideration of documents by UKRNIIVIVI: UKRNIIVI considers the submitted documents and checks them for compliance with the requirements of the legislation.
Introduction of changes in the State Register of Certificates of Ukraine for Marks for Goods and Services: If there are no comments to the submitted documents, UKRNOIVI makes a decision on registration of the transfer of rights and introduces appropriate changes in the State Register of Certificates of Ukraine for Marks for Goods and Services. After making changes to the register, the new owner acquires all property rights to the trade mark.

Is it necessary to register the agreement on transfer of rights in UKRNOIVI?

Yes, registration of the agreement on the transfer of rights in UKRNOIVI is a mandatory condition for the transfer of rights to the trade mark to acquire legal force. Without registration of the agreement in the register of UKRNOIVI, the new owner will not be able to fully exercise its rights to the trade mark (for example, to prohibit its illegal use by others).

Important:

The agreement on the transfer of rights must be concluded in writing.
It is necessary to follow the procedure for registration of the agreement with UKRNOIVI.
It is recommended to contact a lawyer or a patent attorney to draft the agreement and assist in its registration.

Polikarpov Law Firm provides services on preparation of agreements on transfer of rights to trade marks and their registration in UKRNOIVI. We will help you to properly execute all necessary documents and ensure legal transfer of rights to your trade mark. Please contact us for advice!

Question 5

How long does it take to register a trade mark for software in Ukraine if I apply on my own? What do the application processing times depend on and are there any ways to speed them up?

Accepted Answer

The process of registering a trade mark (TM) for software in Ukraine, when applying independently, can take from 12 to 24 months, and sometimes even longer. This is quite a long process, and it is worth taking this factor into account in advance.

The timeframe for application processing depends on:

UKRNOIVI workload: The timeframe for reviewing applications may vary depending on the workload of UKRNOIVI experts. During periods of high volume of applications, the process may take longer.
Complexity of the examination: If your trade mark is complex (e.g. contains many elements, is used in several ICTU classes), the examination may take longer.
Objections: If third parties file objections to the registration of your TM, the process may be delayed indefinitely.
Quality of application preparation: If your application contains errors or inaccuracies, UKRNIIVI will send a request to correct them, which will increase the processing time.
Speed of response to UKRNIIVI requests: The faster you respond to UKRNIIVI experts’ requests, the faster the application review process will move.
Martial Law: Unfortunately, martial law in Ukraine also affects the timeframe for reviewing applications.

Are there any ways to speed up the process?

Unfortunately, to date there are no official ways to significantly speed up the process of trade mark registration in Ukraine. Previously, there was an accelerated registration procedure, but now it has been temporarily suspended due to martial law.

Nevertheless, there are a few tips to help you optimise the process a little:

Prepare all documents thoroughly: Make sure that your application is filled out correctly, all necessary documents are attached, and the TM image meets the requirements. This will help avoid requests from UKRNOIVI.
Respond promptly to UKERNOIVI requests: If you receive a request from UKERNOIVI, provide a response as soon as possible. This will show your interest in registering and speed up the review process.
Conduct a preliminary search: Carefully check your trade mark for identity and similarity with already registered TMs. This will help to avoid refusal of registration and the need to appeal the decision.
Contact an experienced patent attorney: Although accelerated registration is not available now, professional assistance can optimise the process and minimise the timeframe within the standard procedure. An experienced professional can help you avoid mistakes, prepare all documents correctly and negotiate effectively with UKRNOIVI.

The process of registering a trade mark for software in Ukraine can take quite a long time, especially if you file an application on your own. Unfortunately, there are currently no official ways to significantly speed up this process. However, careful preparation of documents, prompt response to UKRNOIVI requests and contacting an experienced patent attorney can help you optimise the process and minimise the timeframe. Polikarpov Law Firm will help you at any stage of trade mark registration. We have extensive experience and know all the nuances of the procedure, which allows us to effectively protect the interests of our clients. Contact us!

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