Trademark registration is a key aspect of intellectual property protection that ensures exclusive rights to use a brand. How and where you register your trademark determines the security of your business and its competitiveness in the market. Find out more about how to go through the registration procedure in Ukraine, Europe and the USA

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Registering a trademark is an important step in protecting your business and brand both in Ukraine and internationally. Regardless of whether you plan to operate exclusively in the national market or expand your business abroad, proper legal protection of your trademark will provide confidence in the future and protection from unfair competition.

What are the rules and conditions to consider when registering a trademark in Ukraine, the United States and European countries? We will discuss this further in our article.

Trademark registration in Ukraine: what you need to know

A trademark (TM) is a unique designation that distinguishes the goods or services of one manufacturer from those of another.

In Ukraine, a trademark can be any designation or combination of designations: proper names, letters, numbers, slogans, images, colors, the shape of goods or packaging, and sounds. The main thing is that such designations can effectively distinguish goods or services on the market. 

Thus, a trademark is an important element of identification and marketing for a business.

Registration of a trademark gives the owner the exclusive right to use it. This includes the possibility of prohibiting the use of this mark by competitors in connection with certain goods and services.

In addition, a registered trademark allows the owner to sell franchises and receive income from their use. Also, only on the basis of a registered TM can a domain name be registered in the .UA zone.

In Ukraine, as in the rest of the world, you can register an unlimited number of TMs. This allows companies to use different variants of trademarks in their activities, depending on their needs.

The owner of a TM can be an individual, a legal entity or several persons jointly.

Classes of the International Classification of Goods and Services 

All trademarks are registered in accordance with the classes of the International Classification of Goods and Services (ICGS). There are 45 classes, and each of them covers certain goods and services. 

It is important to note that registration is possible in one or more classes. However, you should choose only those classes that really correspond to the company's activities.

Trademark search: importance and procedure

Before applying for trademark registration in Ukraine, it is important to conduct a trademark search. 

Trademark search is a procedure for checking the existence of already registered or filed for registration marks similar to your TM. It is important that your trademark is unique and complies with the requirements of the law to avoid refusal of registration. In particular, the refusal may be due to the following reasons:

1. Commonly used or descriptive designations: Designations consisting only of general or descriptive words cannot be registered as TMs, as they do not create a unique connection with a particular product or service.

2. Marks that are contrary to morality and public order: Marks that violate generally accepted moral norms or are contrary to public order cannot be registered either.

3. Misleading: If a mark is likely to mislead the consumer as to the nature, quality or geographical origin of goods or services, or as to the identity of the producer, it is also not subject to registration.

4. Use of state symbols: TMs cannot contain state emblems, flags, other symbols or official names of states.

A full list of grounds for refusal is contained in the Law of Ukraine “On Protection of Rights to Trademarks and Service Marks”.

When is the best time to register a trademark?

It is best to register a trademark before entering the market to protect your brand and avoid legal problems. If you plan to operate not only in Ukraine, consider registering a trademark in other countries.

How to register a trademark in the United States

The United States is an attractive market for manufacturers from all over the world, including Ukrainian companies. 

A legal entity or an individual from any country in the world, including residents of Ukraine, can own a trademark in the United States. However, certain requirements must be met for successful registration:

- The trademark must not contain elements of an immoral nature.

- The US state symbols cannot be used.

- The mark must not be similar to other already registered TMs.

- Copyright infringement is not allowed, including the use of names or quotes of famous people without their permission.

Why register a trademark in the United States?

Many Ukrainian manufacturers sell goods through popular marketplaces such as eBay and Amazon. These marketplaces require a registered TM to access most of their features. Registering a trademark in the United States also helps protect consumers from low-quality products and counterfeits.

Stages of trademark registration in the USA

1. Checking the protectability

First, you need to check whether your trademark does not violate the rights of others and whether it complies with US law.

2. Choosing the basis for registration

You can file an application based on the existing use of the TM in commerce (Use in commerce) or on the intent to use (Intent to use). The application can be filed directly with the USPTO (United States Patent and Trademark Office) or through international registration under the Madrid Agreement.

3. Filing an application

The registration procedure requires the participation of a US national patent attorney if you file directly with the USPTO, or through a representative in Ukraine if you use the international procedure.

4. Formal examination

The USPTO checks your trademark for compliance with the requirements of US law.

5. Qualification examination

At this stage, it is checked whether the trademark meets the criteria of protectability and whether it infringes the rights of third parties. In case of a preliminary refusal, you have 6 months to appeal the decision.

6. Publication of the application

The application is published in the official USPTO bulletin. Within 30 days, any person may file an opposition to the registration.

7. Registration and issuance of a certificate

After successful registration, the trademark must be used for the goods or services for which it was registered. In case of impossibility of use, a declaration of non-use for valid reasons may be filed.

Terms and cost of registration

The trademark registration procedure in the United States usually takes 10 to 16 months. After registration, the certificate is valid for 10 years, with the possibility of renewal for another 10 years. After 5 years from the date of registration, it is necessary to submit data on the use of the mark.

The estimated cost of trademark registration in the United States is about USD 1500. It depends on the number of classes of goods and services, the form of application and other factors.

Trademark registration in Europe

Registration of a trademark (TM) in the European Union is an important step in protecting intellectual property and securing the rights to use the brand in all EU member states. This is especially important for businesses seeking to expand their operations in the European market.

Any individual or legal entity, as well as a group of individuals, can apply for trademark registration in the EU. However, applicants who are not residents of the European Union must work through registered European patent attorneys. To do so, it is important to choose a reliable representative with experience in the European market.

Ways to register a trademark in the EU

There are several approaches to registering a trademark in the European Union:

1. Registration in each country separately: This option is advisable if you are interested in protecting your trademark in one or more EU countries only. The application is submitted to the national offices of the respective countries.

2. Regional registration of the European Union TM: Filing an application through the European Union Intellectual Property Office (EUIPO) allows you to obtain legal protection in all 27 EU member states.

3. Registration under the Madrid system: This is a global system that allows you to register a TM in many countries of the world, including the EU, with a single application.

The procedure for registering a TM in the EU through EUIPO

1. Filing an application: The application is filed with the EUIPO, and non-resident applicants must act through a European patent attorney. The application must meet the formal requirements and contain details of the goods or services for which the mark is being registered.

2. Formal examination: EUIPO checks the application for compliance with the law and the absence of absolute grounds for refusal of registration.

3. Search for identical and similar trademarks: At the applicant's request, a search can be conducted to identify similar trademarks already registered in the EU.

4. Publication of the application: If the application meets the requirements, it is published in the official EUIPO Bulletin. Within three months after publication, any interested person may file an opposition to the registration.

5. Registration and issuance of the certificate: If there were no objections or they were rejected, the trademark is registered and the certificate is issued electronically.

Pros and cons of trademark registration in the EU

Among the main advantages:

- Centralized filing of an application with one office in one of the official EU languages.

- Uniform formal requirements for filing an application.

- Centralized payment of fees for renewal of the certificate.

- Possibility to confirm the use of the TM in any EU member state to extend its validity.

Disadvantages:

- If registration is refused in one of the EU countries, the TM will be rejected in all member states. However, there is a procedure for converting an application into national applications in certain EU countries while maintaining the priority date.

Remember that trademark registration is a complex process that requires in-depth knowledge of the law and proper paperwork. To avoid mistakes and ensure reliable protection of your brand, entrust this important task to professionals. 

Visit Ukraine's lawyers have extensive experience in the field of intellectual property and are ready to accompany you at every stage of registration both in Ukraine and abroad. Order the service here to get qualified assistance and guarantee success!

Photo: depositphotos

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Ihor Usyk is the Head of Legal Department at Visit Ukraine

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