Ukraine

TRADEMARK REGISTRATION IN UKRAINE

Effective trademark protection allows avoiding problems and potential losses especially in cases of infringement or/and unfair competition by third parties. To ensure respect for the trademark rights, registration of a designation is paramount; although it is not a straightforward process, assistance of an experienced and highly qualified trademark attorney will ensure successful prosecution of an application.

The ways to obtain the exclusive right to a Trademark:

In Ukraine a trademark shall be granted legal protection by virtue of:

State registration in accordance with the order established by the Law;
Declaring a mark as well-known in Ukraine
International registration in accordance with the Madrid Agreement and the Protocol.

The following should be taken into account for registration of a trademark in Ukraine:

APPLICANT

Anyone claiming to be a proprietor of a trademark may apply for the registration. Nationals and foreigners have equal right in this regard, but a foreign applicant must be represented by a Ukrainian Attorney.

CLASSIFICATION OF GOODS

The International (Nice) Classification of goods/services (latest edition).

POWER OF ATTORNEY REQUIREMENTS

POA should be provided with the position and name of the signatory, date and place of signing, authorized by the company stamp. Notarization or Legalization is not required.

POA signed by legal representative and not authorized by the company stamp should be submitted with the document confirming authorization of the representative to authorize documents on behalf of the company.

PROCEDURE

The procedure for obtaining Trademark registration in Ukraine is full examination of the Application. The first stage after filing is formal examination, and the second stage is the substantive examination.

TRADEMARK SEARCH:

Trademark search is not obligatory for Trademark Registration in Ukraine, but it is highly recommended in order to avoid confusing similarity of claimed designation to already registered and applied marks, which can result in a refusal.

Considering the search results and evaluations of our experienced Ukrainian Trademark Attorney, it would be possible to estimate the risks of receiving a refusal and evaluate the possible strategies to overcome it as well as the chances of success.

In this estimation the following factors would be assessed:

The similarity of the designation to any existing trademark phonetically, semantically or by a visual criterion.
The similarity in the nature of the applied goods/services, similarities in their intended purpose as well as method of use.
It will also be assessed if any similar goods/services are in competition with the applied goods/services or related.
Other factors, which would be considered are the distribution channels of said similar goods/services and if the degree of similarity is to the point of causing confusion in the views of the general public.
The probability of the refusal on absolute grounds, such as a lack of distinctiveness and/or misleading character as to the goods manufacture, origin of goods etc.

This preliminary assessment of the protectability of the mark assists the applicant to avoid unnecessary costs, while considering all available options in obtaining protection for the mark.

APPLICATION FILING:

The following information and documents are required for Application filing:

Trademark name/image
Applicant’s name and address;
List of goods/services in compliance with the latest edition of the Nice Classification;
POA signed by applicant. Notarization or Legalization is not required.

EXAMINATION

Formal examination: The formal examination entails checking the compliance of the application and accompanying documents with statutory requirements.

Substantive Examination: In the substantive examination, the mark is thoroughly examined in respect of distinctiveness, similarity (or being identical) with existing marks on the Register of Trademarks, and compliance with the requirements of the Trademark Law and Rules of Examination.

Refusals: In case of a refusal, our Ukrainian Trademark Attorney will carefully review the refusal to provide a Legal Opinion and discuss with the Applicant or representing attorney, options available in overcoming the said refusal.

TIME FROM FILING TO REGISTRATION:

If no obstacles, from twelve (12) to eighteen (18) months.

The procedure of expedited examination is available in Ukraine, which allows to obtain registration within 6-8 months, if no provisional refusal is issued.

OPPOSITION

Any person has the right to submit to the Examination a grounded objection (opposition) against the application in respect to the unconformity of the applied mark with the requirements of granting legal protection.

Objection could be filed during the whole term of the application examination and is taken into consideration if it is received not later than five days prior to the date decision on the application.

For International registrations there is an opposition period for applications which passed the substantive examination without issuing the provisional refusal.

Such applications enter the opposition period for three months and this information is published in the Madrid Monitor.

PROTECTION TERM

The registration is valid for ten (10) years from the filing date.

RENEWAL REQUIREMENTS

The validity of a Trademark can be extended through a request for a renewal.

The renewal is valid for ten (10) years. The renewal request can be submitted within six (6) months prior to the expiration date of the trademark.

The registration may be renewed within a six-month period following its expiry, provided that an additional official fee is paid for the late renewal.

The following information and documents are required for renewal:

Power of Attorney
The number of the trademark certificate
Payment of relevant official fees.

DECLARATION OF USE

Not required.

NON-USE GRACE PERIOD

The non-use grace period is five (5) years from the trademark registration (publication) date.

ASSIGNMENT
LICENSING
RECORDAL OF THE HOLDER’S NAME/ADDRESS CHANGE