One of the main means of identification is a trademark (hereinafter - TM)or, as it is called, the mark for goods and services.Information on peculiarities of its registration in Ukraine is in the following.
Peculiarities of TM
According to the norms of legislation of Ukraine trademark can be any designation or combination of designations suitable for distinguishing goods (services) produced (provided) by one person from goods (services) produced (provided) by others. These designations can be, in particular, words, letters, numerals, visual elements, colour combinations, as well as any combination of such designations.
It should be noted that TM is the result of human creativity, so there is intellectual property right for it.
An intellectual property right on trademark includes the following property components:
- the right to use TM;
- exclusive right to authorize the use of TM;
- exclusive right to prevent illegal use of TM, including to prohibit such use etc.
For official certification of own rights for TM, a business entity should pass the registration procedure provided for by the Civil Code of Ukraine (hereinafter − CCU) and the Law of Ukraine “On Protection of trademark” (hereinafter − the Law) and receive corresponding certificate for a sign for goods and services. This certificate is an official protection document and is issued on behalf of the country by the State Intellectual Property Service.
Restrictions on TM registration
The legislation set certain restrictions on the TM registration, and therefore any sign can not be registered and taken under the protection of the law. Thus, Art. 5 of the Law assumes that the legal protection is provided only to that sign, which does not contradict the public order, principles of humanity and morality, the Law of Ukraine “On the condemnation of Communist and National Socialist (Nazi) totalitarian regimes in Ukraine and prohibition of propaganda of their symbols”. For example, if there will be submitted for registration the mark containing immoral slogans or communist symbols, such registration will be definitely refused.
In addition, a significant list of grounds for refusal under Art.6 of the Law, in particular, can not be registered as trademarks signs which are identical or similar enough that they can be confused with signs previously registered or applied for registration by another person for the same or similar goods and services, signs of others, if those marks are protected without registration, including trademarks recognized as well known.
Ways to minimize the risk of refusal of TM registration
In order to minimize indicated risks of refusal of registration, before submission of documents it is required to conduct preliminary search for identity and similarity of filed and registered marks.
If it is revealed already registered identical or similar sign as a result of preliminary search, it is not necessary to immediately refuse registration and try to develop something new, because the legislation provides for certain mechanisms out of this situation.
In particular, according to para. 2 of Art. 494 of CCU, scope of legal protection of TM is defined by its given images and a list of goods and services in the certificate. Regulations of sec. 4 of Art. 7 of the Law establish that the application for registration of the mark must contain, including the list of goods and services for which the applicant requests to register the mark, grouped according to the International Classification of Goods and Services (hereinafter − ICGS). ICGS consists of 45 classes − from 1 to 34 class are listed products, and from 35 to 45 − services.
Thus, if it is found identical or similar mark with yours, but it is registered on other classes of goods or services under ICGS, in this case, we can safely apply for registration, as appropriate grounds for refusal of its satisfaction will be absent.
In addition, para. 4 of Art. 18 of the Law provides for that if the sign in Ukraine is not used in full or in respect of part of goods and services specified in the certificate there is no information about the issuance of a certificate within three years from the date of publication or from the other date after the publication without valid reason, any person may apply to the court for early termination of the certificate in whole or in part.
Another mechanism for out of this situation in the case of identical or similar mark is the annulment of its certificate by the court. But remember that for effective implementation of such actions there should be available grounds under the law.
Another tool to overcome the refusal of TM registration if there is registered similar mark is the receiving of letters-approvals. Thus, it is possible to address to owner of the registered mark with for permission to register similar marks and if the reply is positive, to add it to own application for registration. However, considering the lack of regulation of this issue at the legislative level, the submission of corresponding letter-approval can not guarantee the absence of refusal of TM registration, but, in practice, in most cases a positive result is obtained.
