Under Ukrainian laws, non-residents should exercise their rights and powers in respect of intellectual property via patent attorneys. The patent attorneys of our Agency provide comprehensive services and legal assistance with respect to trademarks (trade names for goods and services) in the territory of Ukraine.

Please contact us if you need to:

 register a trademark in Ukraine;

Our patent attorneys will professionally select the specific classes of the International Classification of Goods and Services in which your trademark should be registered; provide advice on the registration procedure and its possible pitfalls; prepare a preliminary legal opinion as to whether your trademark meets the Ukrainian registrability requirements; and conduct a preliminary search for identical or similar trademarks already registered or filed for registration in Ukraine.

– prepare a substantiated response in favor of the trademark registration; or

– draft a license agreement or a rights transfer agreement for a trademark registered in Ukraine; or

– protect trademark rights in the course of court proceedings; or

– seek other services related to trademarks.

Our patent attorneys are skilled experts in contractual law and specialize in the taxation of royalties under agreements with both residents and non-residents. They will prepare legally sound documentation, develop the optimal taxation model for payments under the contract and provide advice on all essential matters. The most popular types of agreements are agreements for the assignment of rights to a trademark and license agreements.

For instance, a rights assignment agreement for an international trademark registered in the territory of Ukraine under the Madrid system has its own specifics. Firstly, it should be registered with the State Intellectual Property Service of Ukraine, and, traditionally, this authority is very scrupulous about registration of agreements. Secondly, such agreement can stipulate the assignment of rights not only in whole but in part as well, however only in relation to goods and/or services. Meanwhile, such assignment will not be allowed if it can mislead consumers of the respective goods or services as to the person who produces the goods or provides the service. It is not possible to sell a trademark only for a part of the country’s territory, for example, only for the territory of one of its regions, but only for the whole territory of each individual country where the trademark is registered.

In addition, it is strongly recommended to check the current status of the trademark prior to its purchase in order to determine whether it really belongs to the seller at the time of the assignment of rights, whether the registration of the trademark is still in force, whether it is being disputed in any court proceedings, and whether there are any disputes over infringement of rights.

A license agreement to which a non-resident is one of the parties requires thorough elaboration. A range of factors should be taken into account, and special clauses affecting the tax treatment of payments to the non-resident should be stipulated. Registration of a license agreement for a trademark is performed by the State Intellectual Property Service of Ukraine. Such registration is not mandatory and is usually performed upon the decision of the parties involved in the agreement.

Our patent attorneys and lawyers provide comprehensive legal services associated with protection of trademark rights in the territory of Ukraine. We have successfully represented the interests of our clients in courts of different instances for more than 7 years and we have an extensive history of winning cases and obtaining favorable judgments on trademarks, as well as on domain name disputes. If you have a disputable situation with respect to a trademark in the territory of Ukraine, please contact our patent attorneys. Upon a thorough legal analysis of your situation, they will offer you one or several procedures for the protection of your trademarks rights.

For more detailed information about our services, you can directly contact our lawyers. CONTACT US