What the ideal process of registering a trademark in Ukraine looks like:
You have a developed logo and you contact us for a preliminary assessment of the TM for protectability and for the selection of the necessary classes of goods and / or services (classes from the International Classifier of Goods and Services (ICGS)).
- Preliminary check and search for the TM
Upon your request and on our strong recommendation, a preliminary search for identity and similarity may be carried out. The procedure involves comparing your logo with all the TMs registered or filed for registration in Ukraine in the selected class at the time of the search. It is optional, but without it, we cannot assess the chances of registration success.
The search is carried out by the Patent Office within 10 working days, and it issues a report which displays the TMs that are identical or similar to your TM. Our specialist analyzes the report, assesses the chances of registration and gives his recommendations to the report.
- Filing an application for the registration of the TM
If nothing prevents the registration of the trademark, then an application for the registration of the TM is prepared and lodged with the Patent Office (Ministry of Economic Development), and state fees are paid.
- Waiting and expedition
Standard registration of a trademark in Ukraine takes from 18 to 20 months after the application is submitted. For an additional fee, you can speed up the examination of the application and have it done within 7 – 8 months.
- Publication and issue of a certificate
After a successful examination of the trademark, the Office decides on its registration. We happily inform you about this and pay the last fees and customs duties. The Office publishes information on the issue of a certificate for the TM, we receive the certificate and give it to you.
As soon as we know the number of the TM certificate, it is possible, if necessary, to obtain a domain in the .UA zone.
TRADEMARK AFTER REGISTRATION
Renewal of trademark registration
The period of trademark registration validity in the territory of Ukraine is 10 years from the date of filing an application. The period of validity can be renewed for a further 10 years an unlimited number of times, under the condition of payment of the fee and filing of the relevant application within the specified time frames.
We track the TM registrations’ expiration dates through our agency and notify you in advance about the need to renew them.
If you have missed the deadline for the renewal of your registration, we can help you reinstate the deadline or apply for registration of the same TM, if the renewal deadline cannot be reinstated.
After receiving a trademark certificate, its owner can effectively use it not only for their goods and /or services, but also for:
– Trademark licensing – the rights to a TM can be effectively monetized by concluding licensing and franchising agreements. Such agreements imply permission to use the trademark for all or part of the rights for a fee for a specified period.
– Transfer of rights to a trademark – a transfer agreement implies the complete or partial assignment of rights to a third party for the entire duration of such rights.
Our agency’s specialists will help you understand the nuances of managing trademark rights, develop and conclude the necessary agreements, negotiate with counterparties, understand the taxation of trademark transactions, and register contracts for utilization of trademark rights.Related services
Through monitoring, the Synergy agency specialists will help you identify TM designations, identical and similar to yours, which are submitted for registration by third parties. This will allow you, by filing an objection to the registration, to prevent the violation of the rights to your TM, while a third party’s application is still at the stage of consideration by the Patent Office. After issuing a certificate for a “conflicting” TM, it can be declared invalid only in court, which is more time consuming and expensive.
Why should such actions be taken?
In some countries, including Ukraine, when registering a TM, a substantive examination of the designation is carried out (for the presence of similarity with a TM previously registered or submitted for registration). In most cases, such an examination prevents the registration of identical or similar designations. At the same time, cases of registration of competing trademarks are not uncommon due to the human factor and the subjective assessment of an expert.
The monitoring service is even more relevant for countries where substantive examination is not carried out. In particular, the EU Patent Office, after checking the application for a TM on formal grounds (correct paperwork, payment of fees, etc.) publishes it, and all interested parties can file objections to its registration. In this case, monitoring is the only effective mechanism to prevent the registration of a trademark which violates your rights.
Recognition of a trademark as well-known
If you have been in the market for a long time and your brand is known and loved by consumers, then you should think about recognizing your brand as well-known.
Benefits of a well-known brand:
– a trademark that has not been previously registered, but has a long-term existence and certain fame, may receive legal protection in the form of being recognized as well-known “retroactively” (known from the date determined in the decision of the Appeals Chamber or the court);
– protection is valid indefinitely;
– the protection of a well-known trademark also actually extends to goods and services that are not similar to those for which the TM is recognized as well-known (if the use of this trademark by another entity in relation to such goods and services indicates a connection between them and the owner of a well-known trademark and there is a possibility that his interests will be compromised);
– if it is necessary to protect a trademark in many classes, it is more economical to recognize a trademark as well-known;
– a well-known trademark may serve as a basis for invalidating the certificate for a trademark previously registered in bad faith.
Our agency’s specialists fully carry out the procedure of recognizing a trademark as well-known from examining the existence of grounds and collecting evidence to submitting an application to the Appeals Chamber of the Ministry of Economic Development and Trade or in court and carrying out the application process.