How to register trademarks or brand?
This task arises on different “life” cycles of their business.
If you are guided by a systematic approach and do everything correctly and in a timely manner, then the need to register a brand should arise after the initial stage of business organization has been completed, in which, as a rule, the overall business model is already defined, including the legal form of the legal entity and its name, list of participants (partners, owners), main activities, sources of financing, and other necessary organizational components of the business process.
Why the question of how to register a trademark is important to put at the initial stage of creating a business? First, it is desirable to identify, distinguish your company or products / services that you plan to produce/provide in the market, among many similar ones. Secondly, legal aspects are important, in particular, it is necessary to preempt the possibilities of illegal use of your trademark (in Ukraine, a trademark is also often called a “sign for goods and services”, and in the Russian Federation – a “trademark”, that is, a trademark, a mark for goods and services are synonymous) by third parties in order to be legally able to obtain brand legal protection, moreover, it is necessary to preempt the very possibility of registering your brand as a trademark by unscrupulous third persons that may also have a negative impact on your business.
The correct step in this case, of course, is to involve a specialized external consultant/specialist to accompany the procedure for registering a trademark in Ukraine.
However, if for some reason you decided to take up the question of how to register a trademark yourself, then in general terms such a process of “legitimization” of rights to a trademark or brand would look like this.
How to register trademark on your own?
- The first thing you need to do when registering a trademark in Ukraine yourself is to determine the appearance of your trademark (brand) in a verbal or pictorial form, volumetric or combined, in any color or colors, and create a layout for the future trade mark and its informative description. In this case, special attention should be paid to the transliteration of the verbal trademark.
- If this part is completed, then it is necessary to decide in which business area the brand will be used and, accordingly, to which classes of goods and/or services this field of activity belongs. You can solve this task yourself by familiarizing yourself with the International Classification of Goods and Services. It is important to correctly identify the relevant classes, since trademark will have legal protection in the future within them.
- Then you need to check whether there are already registered similar trademarks or applications for registration of such trademarks in those classes of goods and / or services that you have identified as priority. As a general rule, you will be denied a trademark registration if you already have a registered trademark or filed an application for trademark registration in those classes of goods and / or services in which you want to receive legal protection, and if that trademark and your the brand has a similarity, which causes confusion when they are perceived and does not allow the consumer to distinguish them from each other, taking into account their similarity and use in similar fields of activity (for example, DOBROBUT and DOBRO-BUT).
For this purpose, as a rule, a preliminary search is conducted for the presence of similar already registered trademarks or submitted applications for registration of similar trademarks in the databases.
As in the previous case, it is important to conduct such a search correctly, that is, to check whether the trademark is registered, otherwise there is a risk of refusal to register the trademark, which will lead to loss of time and the impossibility of obtaining proper legal protection in the period after filing the appropriate application. Moreover, if your company will use such a trademark in its activities and the right holder of a similar but properly registered trademark will know about it, it is possible that he will contact you with a demand not to violate his rights, which can ultimately lead your company to financial losses (the need to pay fines, damages).
- If you are convinced that similar trademarks have not been registered and applications for such trademarks have not yet been submitted for registration, then you can pay an application fee (its amount depends on the number of classes of goods and/or services you choose and whether legal protection is only in Ukraine or abroad), fill in the application for registration of a trademark in the established form and submit it for registration to Ukrpatent.
- You need to be patient, as this process is not fast. Directly the procedure of registering a trademark in Ukraine will require an examination of the application (formal and qualification). In the process of conducting such examinations, letters sent to the examiner will be sent to the address (for correspondence with the applicant) indicated in the application, which the applicant must respond to in a timely manner (such deadlines are usually indicated in the text of the letters).
- If during the examinations there are no inconsistencies of your trademarks with the legislation of Ukraine and their registration does not violate the rights of other rightholders, then ultimately, a positive decision will be made to register your trademark, you will be notified about the corresponding letter.
- Next, you need to pay a state fee for issuing a trademark certificate and a fee for publication of a trademark certificate and provide proof of such payment (bank receipts) to Ukrpatent.
- The procedure for registering a trademark is completed with the registration of a corresponding trademark certificate, which, as a rule, is sent to the applicant by mail to the address indicated in the application, as the address for correspondence.
Vladislav ZOLKIN, Legal Consulting Center
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