АЛЕРТ: Практичні аспекти реєстрації торгових марок (ТМ) в Україні.
Ukraine is one of the members of the World Intellectual Property Organization (WIPO), and has ratified major international treaties in the field of Intellectual Property (IP) that are in effect in Ukraine.
The status of IP rights in Ukraine is similar to that of EU countries.
In Ukraine, the legal protection of IP rights can be confirmed by TM certificates. They prevent labels from being misused and act as an indicator of the origin and quality of goods and services. TM certificates are registered by the State Enterprise “Ukrainian Institute of Intellectual Property” (Ukrpatent). The procedure for obtaining a TM certificate are briefly described belowю
I. Description of the procedure of registration
If you want to expand your business into Ukraine, we recommend you register your IP assets in country. To save time and money, you should make a preliminary preparation before filing an application for a TM registration to Ukrpatent. For this you must define the class of goods of your future TM. Every class includes a definite list of goods and services that will protected. Classes are determined according to The Nice Agreement, which establishes a classification of goods and services for the purposes of a TM registration (the Nice Classification).
Ukrpatent’s website contains different databases, one of which is the Database of registered TMs (TM Register). It gives the possibility to examine Ukrainian-registered using different search criteria.
Initially, we recommend you carefully investigate and analyze the TM Register. If the same TM has already been registered, it may be an obstacle to register your TM in the future.
Also, it is important to determine the type of TM. For example, a TM can be registered as “word mark”, “figurative mark” (logo), “combined mark” (it includes word and figure elements) or as “volume mark” (3D mark). The type of TM is important for the scope of the TM’s legal protection.
Filing of the application and payment of service fee
In Ukraine, an application for TM registration on behalf of foreign entities has to be filed by a patent attorney – a certified person who is authorized to represent client interests before Ukrpatent. In particular, an application must contain an image of the proposed TM and a list of goods and services according to the Nice Classification.
Ukrpatent assigns a special number for every application. During the procedure of a TM registration, this number will be used as an application ID.
The State fee for the filing of the application is UAH 1 000 (about USD 36). The amount of the state fee depends on the nature of the TM and additional costs may be payable, such as:
- UAH 1 000 (about USD 36) for each class of goods;
- UAH 500 (about USD 18) for a colour TM.
After filing of the application and payment of the applicable fee, Ukrpatent will check the submitted documents and make the Decision on the establishment of the date of filing of the application. This stage is very important, as the protection of a TM’s IP rights will start on this date.
In fact, Ukrpatent’s Decision on the establishment of the date of filing can take from 2 weeks to 2 months from the date of filing of the application.
Examination of the application
The process of examination of the application consists of two stages:
- Formal Expert Examination,
- Qualification Expert Examination.
The result of the Formal Expert Examination is Ukrpatent’s Conclusion on the compliance of the application with the formal requirements. At this stage, Ukrpatent checks the correctness of documents, compliance with the list of documents and payments of the State fee. If Ukrpatent establishes that the application is filled, they will notify an applicant about the necessity to clarify or correct the application.
The Qualification Expert Examination is the most significant aspect of a TM registration. At this stage, Ukrpatent checks a TM for compliance with the applicable safety criteria specified by the Law. Ukrpatent may request additional information if the expert examination is impossible without such information, or in case of reasonable doubt as to the accuracy of any information, which is contained in the application materials. The applicant must provide the required additional information within 2 months from the date of receipt of Ukrpatent’s notice.
This stage also involves Ukrpatent searching for any similarity with previously registered TMs and filed applications.
If the application for TM meets all the established criteria of protection (Annex 1), Ukrpatent will issue the Decision on Registration. The Decision on Registration of a TM shall be sent to the applicant.
Ukrainian Law doesn’t provide clear time limits for both examinations. The period of examinations depends on the compliance of the application with all the requirements of the Law and timing of provision of additional information by the applicant if requested by Ukrpatent.
In practice, the average term of Formal Expert Examination is about 6 – 7 months from the date of filing an application, and the period of Qualification Expert Examination is about about 12 – 14 months from the date of filing an application.
Publication and issuance of a certificate of TM
Upon receipt of the Decision on Registration of the TM, the applicant has to pay two official fees:
• fee for publication of information on the issuance of a certificate in official Ukrpatent s official Bulletin UAH 150 (about USD 5,5);
• fee for issuance of a certificate. The amount of this fee depends on the applicant: if an applicant is a Ukrainian resident, it needs to pay UAH 85 (about USD 3 ); if an applicant is non resident of Ukraine, the fee is USD 200.
These fees need to be paid within 3 months from the date of receipt of the Decision on Registration of the TM by the applicant. If fees aren’t be paid in time, Ukrpatent will not publish information in its official Bulletin and the application is considered withdrawn.
The publication on the issuance of a certificate is an official confirmation of completion of the procedure of TM registration.
Ukrpatent issues a certificate within a month of the TM registration, subject to the payment of the applicable fees.
II. Practical tips and important notes
According to the Law, the period of TM registration can be shortened.
In general, the average term for a TM registration is from 14 to 18 months. However, if an applicant
uses the accelerated procedure this term can be from 7 to 9 months.
The request for an accelerated procedure can be applied 3 months from the date of filing of an
application. The applicant must file a petition to Ukrpatent and pay the fee to apply for this procedure.
Fees depend on the type of TM:
- for a word “mark” and a “figurative mark” the fee is UAH 5 832 (about USD 212 ) per TM;
- for a “combined mark” the fee is UAH 10 536 (about USD 383 ) per TM.
Objection against a TM registration
Any person may file with Ukrpatent an objection against an application for a TM registration. The objection can be filed not later than 5 days before the Decision on Registration of the TM.
According to the Law this procedure involves only two steps:
- submission of objection by the plaintiff, and
- submission of counter objection by the TM applicant.
However, Ukrainian Law does not limit the provision of so called additional explanations/arguments.
As such, both parties (plaintiff and applicant) have the right to repeatedly submit to
Ukrpatent new arguments. Furthermore, consideration of an objection takes place at the stage of Qualification Expert Examination without the participation of the parties. This means that the results of consideration of the objection will be known only after the completion of the TM registration procedure i.e. the TM is registered (unsuccessful objection) or the TM is not registered (successful objection).
Finally, an applicant has the right to appeal a refusal or previous refusal of a TM registration at the Appeal Chamber of Ukrpatent . If such an appeal is unsuccessful then the applicant can appeal the decision in court. However, a plaintiff may only appeal a TM registration by Ukrpatent in court.
An objection can be submitted against any application so we recommend applicants always monitor their registration process.
Control and monitoring of registration procedure
Ukrpatent’s website provides the ability to search for information according to different criteria. For example, it is possible to search for information by TM name, applicant name, or application number. Also, Ukrpatent’s databases contain information about fees, decisions which were made by Ukrpatent and documents which were filed by an applicant. As such, applicants can remain informed about the
status of their application or the existence of conflicting registrations by third parties.
However, please note that Ukrpatent’s databases are only informational in nature. In some cases, information can be out of date by a few weeks and additional crosschecking through other sources is also recommended. Nonetheless, Ukrpatent’s databases are a useful monitoring tool. Taking into account the length of the TM registration procedure and its complexities, we recommend you proactively monitor your registrations. In particular, we provide our clients with regular tabulated updates of information regarding their TM applications, as well as a chronological history of all procedures relevant to them. This allows you to take corrective measures should they become necessary.
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