Trademark: How to register your own?

Imagine waking up one fine morning and realizing you want to launch a product or provide services under your own trademark. What's more, you've already come up with a name for this trademark and are confident it's unique. It seems like a simple matter: apply to the right authorities, find out what documents to collect for registration, order a logo from a top designer, and that's it—you're a businessman with your own trademark. Everything will be just as it should be, you just need to familiarize yourself with the steps.TM registrationTo stay up to date with all the nuances, this will significantly save your time and money.

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What is a Trademark (TM)?

A trademark is what distinguishes one entrepreneur or manufacturer from another. For example, there are many manufacturers in the furniture market, and an official trademark distinguishes them from each other.

What can be a trademark:

• word;
• picture;
• word + picture;
• combination of words (with or without a picture);
• letter;
• number;
• color;
• sound.

Trademarks may be in color or unlimited. Ownership of a trademark is confirmed by a certificate, which is valid for 10 years and can be renewed upon expiration.

The certificate is issued by the authorized body: the National Intellectual Property Authority, the functions of which are performed by the State Enterprise “Ukrainian Institute of Intellectual Property” (hereinafter referred to as Ukrpatent).

Important:A brand and a trademark are similar concepts, but not the same. A trademark is a manufacturer's mark placed on a product, packaging, or label, while a brand is a trademark that has gained market popularity and has attracted significant consumer interest.

How does the trademark registration process begin?

By checking the combination you've decided to register. The fact is, Google doesn't provide definitive information about the uniqueness of your name, although our clients often mistakenly believe that checking it in the search engine is sufficient.

Google won't be able to provide you with a full search, as it must be conducted using Ukrpatent's databases. Before searching, we select a class based on your business description and then conduct a preliminary check. After receiving positive search results, we submit an application for trademark registration with Ukrpatent.

There are 45 classes for trademark registration. Classes 1 through 34 are for goods, and classes 35 through 45 are for services. Selecting a class is crucial; it's important to clearly define them before registration, as it's impossible to change or add a class once the registration application has been submitted and the trademark certificate has been received. If this becomes necessary, you must re-apply for registration, which incurs additional costs.

Preliminary verification of your trademark's compliance with legal requirements by our staff is important. After you submit your application to Ukrpatent, you'll need to pay all state fees and then wait for the examination results. Very often, the examination results in a refusal to register your trademark for various reasons. Therefore, it's best to delegate this process to our specialists right away—it's more reliable, cost-effective, and faster.

Attention:During the registration process, once the procedure has been initiated or the registration certificate has been received, it will be impossible to add additional words or images to the trademark or remove any trademark element. All these aspects must be carefully considered before submitting the registration documents.

How much does it cost to register a trademark in Ukraine?

It is impossible to answer this question with a single figure, as the cost depends on a number of factors, namely:

1. The number of specialized classes (we wrote about them above).
2. Distinctive features (combination of phrases, presence or absence of an image, color palette of the trademark).
3. Terms: standard registration 22-24 months or accelerated 7-8 months (the latter is more expensive).
4. The applicant is a resident or non-resident. For non-residents, the registration cost increases.
5. The number of applicants also affects the cost of trademark registration.

A preliminary estimate of the cost of registration services and all government fees can be obtained from our trademark specialist.

Is it possible not to register a TM?

Now you're probably thinking, "Why do I need all this? I can produce goods or provide services without a trademark; I just need to work with a designer to create a logo and come up with a name for my brand."

But consider that you are depriving yourself of official benefits, such as:

• protection of rights to one's own designation or TM;
• transfer of the use of TM to third parties for commercial purposes, for example, for franchising;
• .UA domain registration(only owners of a trademark registered in Ukraine have the right to do this);
• permission to use one's own designation for advertising services or goods;
• to be entered into the customs register so that no one has the right to import the same product under the same name into Ukraine without your permission.

Can Ukrpatent refuse to register a trademark?

If you've read this far, it means you're truly committed to registering your own trademark. Let's discuss the risks of receiving an unsatisfactory decision on trademark registration following Ukrpatent's qualification examination.

Essentially, an applicant can receive two responses to an application for TM registration: positive or negative.

Upon receiving a positive response, the applicant pays the state fees and collects their trademark title deed. The trademark title deed is valid for 10 years (with the possibility of renewal).

If the applicant receives a negative response, they can take the following steps:

1. Don't worry, there are no hopeless situations.
2. Review the expert's justification for the certificate denial and prepare documents on the trademark's use to challenge the decision (a reasoned response). The applicant has two months to collect and submit the documents to challenge the decision.

We do everything possible to ensure that the applicant receives a positive response immediately:

• we help to form a correct distinctive sign;
• We carry out a high-quality preliminary check to avoid rejection.

But even if clients contact us after half the process has already been completed without the help of our experts and a negative response has already been received, we do everything we can to rectify the situation and help them obtain the long-awaited trademark title.

What cannot be registered as a trademark?

To avoid a negative response based on the results of the qualification examination, it is important to know what cannot be registered as a trademark (these are not all the points, but the most common ones):

1. State symbols (images of coats of arms, seals, awards, etc.).
2. Trademarks that lack or have not acquired distinctive characteristics. For example, TM Sladkie Konfety, TM Myagkie Divany, TM Solenaya Sol, etc.
3. That which is contrary to the principles of morality, humanity and social order.
4. TMs that already exist or are similar to existing ones.
5. Designations that mislead the consumer.
6. TMs that are descriptive in relation to the claimed class.
7. Commonly used symbols and terms.

Let's sum it up:

1. Registering a TM as a way to differentiate your product or service from competitors is a procedure that provides advantages and has a positive impact on business.
2. It is better to carry out the registration process with a specialist to avoid unnecessary time and material costs.
3. Once you receive a trademark certificate, you can take advantage of all the benefits: packaging your product, selling a franchise, transferring your trademark to third parties, asserting your intellectual property rights, registering a .UA domain, and more.
4. In case of a negative response from the qualification examination, it is possible to challenge the response through the Appeals Chamber of Ukrpatent/court.

We believe your trademark will quickly become a well-known brand in its niche. So don't hesitate to register your trademark, and we'll be happy to help you navigate the process correctly, in accordance with Ukrainian legislation.

To order TM registration, go toNIC.UAor get a free consultation by phone: 0 800 210-990 right now.