In order to distinguish own manufactured products from the similar one of competitors and to stimulate demand for own products, the company decided to create its own trademark. How register property rights to it – in the following.
A trademark may be any designation or any combination of designations suitable for distinguishing goods/services produced/provided by one person from goods/services produced/provided by other persons. Such designations may be, in particular, words, letters, numbers, figurative elements, color combinations (Art. 492 of the Civil Code of Ukraine; hereafter - CCU).
Trademark (product mark and service mark) is the subject of intellectual property rights. In its turn, the acquisition of intellectual property rights to a trademark is certified by a certificate (Art. 420, 494 of CCU).
The conditions and procedure for issuing the certificate are established by the Law of Ukraine “On the Protection of Rights to Trademarks for Goods and Services” 15.12.1993, No. 3689-ХІІ (hereinafter - Law No. 3689).
The following steps should be taken to get the Ukrainian certificate for goods and services:
1. Application for the registration of a mark for goods and services.
The main requirements for the application are established in Art. 7 of the Law No. 3689 and Chapter 2 of the Regulations for the Formation and Submission of Applications for the Issue of the Ukrainian Certificate for the Mark for Goods and Services, approved by the Order of the State Patent of Ukraine dated 28.07.1995 No. 116 (hereinafter - Regulations No. 116).
The application should be submitted in writing and filled in only in Ukrainian.
The application must contain:
- application for registration of the mark. It is submitted in the form given in the Annex to Regulations No. 116;
- image of the claimed mark;
- list of goods/services for which the applicant requests registration of the mark, grouped according to the International Classification of Goods/Services for the Registration of Marks;
- appendices to the application, in particular, the document on payment of the fee for submitting the application (including for the expert study). The procedure for payment of fees for actions related to the protection of rights to intellectual property objects, approved by the CMU Decree No. 1716 of 23.12.2004. The sizes of the fees are given in the annex to this Procedure. For submission of the application it is provided a fee of UAH 1 000, and then there are “upcharges”: for example, for submitting the color image of the sign in the application it should be additionally paid UAH 500, and if you want to include the designation reflecting the name of the state “Ukraine” in the sign - additional UAH 6 000.
An application form with Annexes should be submitted to SC “Ukrainian Institute of Intellectual Property” (known as Ukrpatent), which is a part of the Ministry of Economic Development.
2. Expert study of the application.
Expert study of the application for registration of the mark for goods and services is carried out by Ukrpatent and consists of:
- formal study (establishment of the date of filing in an application; verification of the application and the document on payment of the fee for compliance with the established requirements);
- qualification study (verification of the conformity of the declared designation with the established requirements).
3. Making a decision on the registration of the mark for goods and services.
4. Publication of information about issuance of the certificate.
On the basis of the decision on the registration of the mark and the availability of documents for payment of the state fee for the issuance of the certificate and the fee for the publication, it should be made a publication on the issue of a certificate on the mark for goods and services in the official bulletin of the information.
The state fee for the issuance of the certificate of Ukraine on the marks for goods and services is paid on the basis of the Decree of the CMU “On State Duty” of 21.01.1993, No. 7-93:
- an individual or a legal person who is a permanent resident of Ukraine - in the amount of 5 tax-exempt minimum (UAH 85);
- an individual or a foreign legal entity who is a permanent resident outside of Ukraine – USD 200.
A fee of UAH 150 is established for publishing in a black and white image, and for the publication of the color image of the mark it is necessary to pay extra UAH 100.
If within three months from the date of receipt of the decision on registration of the mark, the documents on payment of the said state duty and fee have not been received, publication is not carried out, and the application is considered withdrawn (Art.12 of Law No. 3689).
5. Registration of the mark
Registration of the mark by entering relevant information in the State Register of Ukrainian certificates on signs for goods and services is carried out simultaneously with the publication of information about the issuance of a certificate (Art.13 of Law No. 3689).
6. Issuance of the certificate
The issuance of the certificate is carried out within a month after the state registration of the mark. A certificate is issued to a person who is entitled to receive it. If several individuals have the right to obtain a certificate, they are given one certificate.
A patent attorney - representative of the intellectual property can pass all those steps for additional pay.
