Non-registration of a trademark can become a source of legal and financial problems as well as limit the opportunities for business growth and development. In the latest article our Senior Partner Ihor Derevianko shares useful recommendations on a step-by-step strategy for reliable protection of your intellectual property.
WHAT IS A TRADEMARK AND WHY IT SHOULD BE REGISTERED?
Today, registering a trademark in Ukraine is an important element in building a successful business, and following the practical advice of leading specialists regarding its registration will allow you to avoid certain difficulties in this process.
First of all, let’s clarify what is a trademark is and why you should register it?
A trademark (TM) is a designation by which the goods and services of one person differ from the goods and services of another person or company. It is a verbal, graphic or combined sign made in one color or a combination of colors. A businessman can register one or more marks for his product: a word or image in black and white and color, a single word or phrase, an image or a combination thereof, and apply any of the options as needed. Such a set of signs is called “trademark series”.
Entrepreneurs often register three-dimensional trademarks, such as a specific form of packaging for FMCG products. According to experts, this approach is quite weak from the point of view of protecting rights and evidence of their non-fulfillment. To protect the original shape and color range of the product, a patent for an industrial design is provided, which protects the shape and color. Audio, olfactory and light markings have even begun to be registered abroad.
WHO IS ENTITLED TO REGISTER?
The body that registers trademarks in Ukraine is the State Enterprise “Ukrainian National Office of Intellectual Property and Innovation”, or UKRNOIVI in abbreviation. Registration in UKRNOIVI ensures the uniqueness of each registered trademark. This is important so that you can easily distinguish between goods or services from different manufacturers.
In addition, the status of a registered trademark means that others cannot use similar words or images for similar goods or services to register their own trademark.
WHAT TO PAY ATTENTION TO?
However, trademark registration is a long and responsible process where mistakes can be made.
Let’s consider some practical tips for successful trademark registration.
First of all, the name of the trademark you plan to register should not include:
You should use the original names for the trademarks you plan to register since each of them must be distinctive.
In particular, TM should not consist of a single number, letter, geometric figure or line.
Do not use designations or imitation of state emblems, flags and other state symbols; official names of states; emblems, abbreviated or full names of international intergovernmental organizations; official control, guarantee and assay marks, seals; awards and other awards to create your own brand.
Do not use designations or imitations of state emblems, flags, or other state symbols; official names of states; emblems, abbreviated or full names of international intergovernmental organizations; official control, guarantee and assay marks, seals or awards to create your own trademark.
HOW TO CHECK?
Check the trademark you plan to register for relatedness to other TMs.
It is worth checking whether there are similar names, logos or elements of your TM with other registered or submitted for TM registration. This can be done either independently in the WIPO international database and the UKRNOIVI database, or with the help of a specialist, or you can order such a check from the UKRNOIVI.
The trademark that you plan to register must not contradict public order and generally recognized principles of morality and the requirements of the laws of Ukraine “On the Condemnation of the Communist and National Socialist (Nazi) Totalitarian Regimes in Ukraine and the Prohibition of the Propaganda of Their Symbols”, “On the Condemnation and Prohibition of the Propaganda of the Russian Imperial Politics in Ukraine and the Decolonization of Toponymy”.
Define the classes of goods and services for registering your TM but avoid a broad selection of classes that do not correspond to the actual use of your TM.
This stage is one of the most important, as it determines the scope of TM legal protection. However, due to the wide selection of classes that do not correspond to the reality of TM use, there is a risk of refusal of registration due to misleading consumers. In addition, if the TM is not used continuously for 5 years for a part of the selected classes, the validity of the certificate may be terminated in court.
Therefore, taking into account these tips will help you prevent objections and refusals to register a TM in Ukraine and will definitely save you a lot of time.