OVERVIEW OF TM REGISTRATION PROCEDURE IN UKRAINE

PROCEDURE OF TM REGISTRATION IN UKRAINECOMPRISES THE FOLLOWING STAGES

• Preliminary Search (optional, but strongly recommended).

• Filing a Trademark application.

• Formal Examination.

• Substantive Examination.

• Registration and Publication of a Trademark.

• Renewal of a Trademark.

1. PRELIMINARY SEARCH

• A trademark search is the critical legal stage in the process of selecting a new mark among

candidates. The search allows trademark lawyer to conduct legal analysis and to determine

whether a mark is available e.g. registrable. Trademark search is a little investment will save

you a lot of time and money later on.

• Searching trademarks is easier said than done, however, since there is no single source that

lists every unregistered mark in current use in the Ukraine. There are many sources potentially

contains tones of critical information must to be searched, and it is not economical to try to

process them all. Thus, Bragarnyk & Partners conducts such searches using as conventional tools

(PTO sources) and its own processes value added (such as Pharmascan) allowing our clients to

see generalized landscape of the of the names and images.

1. PRELIMINARY SEARCH

• A trademark search is the primary means for assessment of risks and

possibilities. A trademark lawyer uses the search as a tool to determine, with

high confidence, whether the proposed mark is likely to be confused with a

mark in of another entity already registered or used.

• In addition, a proper availability search and further analysis answering

whether proposed mark is distinctive and protectable and respectively –

registrable.

2. FILING A TRADEMARK APPLICATION

• According to the Ukrainians Law filing fee depends on:

1) number of applicants (if application filed by one or several applicants);

2) number of Nice classes;

3) claiming color;

4) the selected registration procedures;

*The official fee for filing application must to be paid within 2 months¹ from the date of

filing. In case of failure to pay of this fee in above said period, application is

considered withdrawn.

1) This grace period could be extended for six months for additional fee.

2. FILING A TRADEMARK APPLICATION

• There are the three TM registration procedures differentiating by time and costs:

1) Standard procedure - takes in average 14 months.

2) Accelerated procedure (after six mounts from filling date) - it takes in average 10

months.

3) Accelerated procedure (before six mounts from filling date) - it takes in average 5

months.

In order to use the accelerated procedure applicant have to file special petition to the

PTO and pay official fee.

2. FILING A TRADEMARK APPLICATION

• After payment of the filing fee PTO confirms taking application into consideration,

and establish filing date of application (normally, in 2 weeks from the date of

payment fees).

• The filing date is important because it establishes priority of given application over

other applications with later filing date. So, if an application filed after given is likely

to cause confusion with yours, that application will be blocked, or, technically,

suspended, until application either registering or deemed abandoned.

3. FORMAL EXAMINATION

• After the filing date established, the Formal Examination started. It is carried out to

ensure satisfaction the formal requirements set out to application for registration of a

trademark.

• Experts verified accuracy of application materials and their compliance with the Law

and checks compliance of the claimed list of goods/services to the Nice Classification.

3. FORMAL EXAMINATION

• In case, if the application materials inadequacy of the requirements established by

the Law, Institution of Examination sends the official letter with invitation to make some

corrections or reformulate list of goods/services.

*Within two months¹ the applicant allowed to correct mistakes or make a clarification in

the application.

1) This grace period could be extended for six months for additional fee.

4. SUBSTANTIVE EXAMINATION

• Once the examiner decides that the application complies with formal requirements, a

substantive examination will began. Substantive examination is the examination

carried out to determine whether the application meets requirement set out for

registration of a trademark.

• During the substantive examination, the claimed denotation shall be examined on the

does not falling to grounds for refusal and conformity with the requirement for

granting the legal protection defined by the Law. In this case, PTO`s database, of

registered marks and filed applications, as well as external information sources and

relevant official publications are studied.

4. SUBSTANTIVE EXAMINATION

• If there are reasons to consider that the claimed sign does not meet fully or partially the

requirements for granting or it is likely to cause confusion with another mark that is already

registered, the institution of examination shall send to the applicant the motivated preliminary

refusal with the proposition to give a motivated answer to support the registration of mark.

• In order to attempt to overcome the rejection, Bragarnyk & Partners research, prepare, and

submit arguments and evidence to the PTO pointing out all of the differences between the

two marks and detailing why the trademark application should be approved.

*Response must be filed within two months¹ from notifying the motivated preliminary refusal

against a trademark application.

1) This grace period could be extended for six months for additional fee.

5. REGISTRATION AND PUBLICATION OF TRADEMARK

• After the receipt of the positive decision of the substantive examination applicant

paying the official fee TM Certificate and the publication fee, so registration appears

in PTO`s Register of registered trademark in Ukraine.

• Information about granting TM certificates are published in the official bulletin.

• Applicant have to pay the official fees mentioned above, within three months¹ from

receipt of the positive solution of the substantive examination. In case of failure of this

fee, application is considered withdrawn.

1) This grace period could be extended for six months for additional fee.

6. RENEWAL OF A TRADEMARK

• The validity period of the certificate in Ukraine is 10 years from the filing date and

this term could be extended for 10 years each time in case of filing the petition for

renewal the trademark and paying official fee.

• Applicant have to payed the official fee for renewal before expiration date¹.

1) This grace period could be extended for six months for additional fee.

THANK YOU FOR ATTENTION