Professional registration of trademarks (marks) in Ukraine: verbal, figurative, combined, three-dimensional, musical trademarks, etc.

   Ukraine is one of the Contracting Parties of the following international acts concerning trademarks:  

•  Paris Convention for the Protection of Industrial Property
• Convention Establishing the World Intellectual Property Organization (WIPO Convention)
• Madrid Agreement Concerning the International Registration of Marks
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
• Trademark Law Treaty (TLT)
• Nairobi Treaty on the Protection of the Olympic Symbol
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
• Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks

   Foreign and stateless persons have the same rights as Ukrainian citizens according to international conventions, the Constitution of Ukraine, and the Code of Laws of Ukraine. However, they can communicate with the Ukrainian Patent Office only through registered Patent Attorneys of Ukraine.

 What can be a trademark?

    A trademark is a sign, which identifies goods or services of a particular source from those of others. A trademark can also be a brand name or logo.

    A trademark can be expressed by any sign or a combination of signs. Trademarks can be divided into several types:

•  verbal trademarks, or signs consisting only of words and letter combinations
• figurative trademarks, or signs consisting of drawings, patterns, geometric figures
• three-dimensional trademarks, or 3D objects (i.e. original packaging, flasks, bottles, etc.)
• combined trademarks, or signs combining all or some of the elements stated above.

What objects cannot be registered as trademarks?

    You cannot register as a trademark any sign which picture or imitate:

• state symbols (emblems), such as coat of arms, flag, etc.
• official names of states
• emblems, abbreviated or full names of international intergovernmental organisations
• official signs and hallmarks indicating control and warranty, assay marks, and seals
• awards and other decorations.

 Nevertheless, these signs can be included into a trademark as unprotected elements, provided the competent body or owners agree.

    Moreover, no legal protection can be given to the signs that:

• have no distinctiveness
• contain only signs that are commonly used as the signs of goods and services of a certain kind
• contain only descriptive signs, i.e. stating the kind, quality, composition, quantity, properties, application, value of goods and services, the place and time of their manufacture, sale or offer
• are deceptive or misleading as to the goods or services
• represent only the form caused by the natural state of the goods.

You cannot register signs similar to trademarks registered or filed for registration in Ukraine on behalf of another person for the same or related goods and services.

 How do you apply to register a trademark in Ukraine?

    There are three ways:

•  file a national application for trademark registration
• file an application for trademark registration according to the Paris Convention
• file an international application according to the Madrid Agreement or according to the Protocol Relating to the Madrid Agreement

 Forms (documents) required for filing a trademark application

• Filing particulars – name, country of incorporation, and address of the applicant (and their transliteration into Ukrainian)
• An image of the sign being claimed
• List of goods the trademark registration is applied for, grouped under headings of Nice Classification
• Certified copy of the priority application (if claiming priority according to Paris Convention) and its translation in Ukrainian
• Power of Attorney, simply signed by applicant (no legalization or notarization is required)

 What document certifies the right to a trademark?

 The right to use a trademark is certified by a trademark certificate. The term of validity of a trademark certificate is 10 years and can be extended an unlimited number of times.

Download the certificate

Trademark registration procedure

 The application is examined by the Ukrainian Intellectual Property Institute (Ukrpatent). The aim of the examination is to determine whether the trademark conforms to the criteria stipulated by the law and to search for similar trademarks. Any person can view the materials of the application and, after payment of the official fee, submit an objection against the registration of this trademark.

   If the examination results in a positive decision, a trademark certificate is issued and the registration of the trademark is published in an official bulletin "Promyslova Vlasnist" ("Industrial Property”) of the Ukrainian Intellectual Property Institute.

   If the decision is negative, the applicant receives a provisional refusal, which can be disputed within 2 months. In case of failure to dispute the provisional refusal and receiving the final refusal, the applicant can contest the refusal at the Board of Appeal.

 Time required for registration

   In Ukraine, it is possible to choose between two different different procedures for the registration of a trademark:

•  the standard procedure, which lasts about 18-24 months;
• accelerated procedure, which lasts 7.5-8 months.

   Regardless of which procedure you choose, the entire registration process will take place under the same rules. This means that the requirements for the application are the same irrespective of the procedure chosen. The only thing that distinguishes between these procedures (except for the terms, of course) is the cost of registration.

   You may choose between these two different procedures depending on your wishes and requirements.