REGISTRATION OF TRADEMARKS

A trademark (a sign for goods and services) is a kind of business card of a manufacturer which is “handed” to a consumer being applied to manufacturer’s goods or signboard.

The main function of a trademark is to distinguish goods and services of one manufacturer from goods and services of another manufacturer.

It is important to note that a trademark is registered for specific goods and/or services, which are divided into 45 classes, according to the International Classification of Goods and Services.

Our specialists will help you select the classes that are necessary for your trademark.

WHO CAN BE THE OWNER OF A TRADEMARK?

Both a natural person and a legal entity can be the owner of a trademark.

RIGHTS OF A TRADEMARK OWNER:

A registered trademark grants to its owner the following:

• right to use the trademark;
• exclusive right to authorize another person/entity to use the trademark (to issue a license for its use to other persons/entities);
• prohibit other persons/entities from using the same trademark in respect of similar goods and/or services or a trademark that is confusingly similar to it.

STAGES OF REGISTRATION OF A TRADEMARK:

1. Preliminary search for identity and similarity.

The recommended stage with the purpose to assess the chances of getting a trademark registered and minimize the risk of denial of its registration.

2. Preparation and submission of an application.

We will analyse the results of the preliminary search and compile a package of documents for trademark registration and submit it to the state enterprise “Ukrainian Institute of Intellectual Property”.

3. Obtaining a trademark Certificate.

After a favourable decision on trademark registration and payment of state fees, a notice on the registration of the trademark is published in the Official Bulletin "Industrial Property of Ukraine" and a Ukrainian trademark certificate is issued within one month.

TRADEMARK REGISTRATION PERIOD

A trademark is normally registered within 12-18 months, or within 4-4.5 months through an accelerated registration procedure.

WHAT IS THE VALIDITY TERM OF A TRADEMARK CERTIFICATE?

The validity term of a Ukrainian trademark Certificate is 10 years from the application filing date, and validity of such certificate can be extended for another 10 years.

Registration of trademarks is based on a territorial principle (the owner of a trademark only gets legal protection in the country where the owner registered it), and their owners often face the need to register their items in other states.

INTERNATIONAL REGISTRATION OF TRADEMARKS IN ACCORDANCE WITH THE MADRID SYSTEM

International registration of a trademark in accordance with the Madrid system is one of the best ways to register a trademark if you need to secure legal protection in several states.

Advantages:

The cost of registration of a trademark in accordance with the Madrid system is most often less than the cost of registration with national agencies of individual states. A trademark registered through the Madrid procedure is granted the same extent of legal protection as if it was filed for registration with a national agency.

Disadvantages:

To register a trademark through this procedure, it is necessary to have a Ukrainian trademark certificate or a pending TM registration in Ukraine.

The Madrid Agreement covers only 90 states in which you can secure legal protection for your TM.

TM REGISTRATION IN THE EU MEMBER COUNTRIES.

If you are aiming at using your trademark in the EU member countries, you should know that it is possible to register a trademark in all countries of the European Union by filing a single application and paying a single fee.

Advantages:

A single application is filed with a single agency in one language, which significantly reduces TM owner's costs for patent attorney services. For this registration procedure, Ukrainian trademark registration is not required.

Disadvantages:

When registering a trademark through this procedure, if your trademark registration is denied in either of the EU countries there is a risk of denied registration in rest of the EU countries.

FILING TM REGISTRATION APPLICATIONS WITH NATIONAL AGENCIES

Registration of a trademark can be carried out by filing an application directly with the patent office of the country in which you want to secure legal protection.

We have vast experience in registration of trademarks in the USA, Russian Federation, Kazakhstan, Belarus, Moldova, Lebanon, United Arab Emirates, Nigeria and other countries.

Advantages:

This method is convenient if you want to secure registration for your trademark in one or two foreign countries. With such registration, Ukraine trademark registration is not required.

Disadvantages:

This method of securing legal protection is more expensive since you have to apply to a patent attorney in each state separately and to pay their fee and the cost of documents translation.

Our company's specialists will help you select the best way of trademark registration in other countries!