Family Furniture Brand: The Need for Protection

Trademark registration is not merely a formality. It represents an investment in business value, market distinctiveness, and reputation.

DESTRA Patent Law Firm supported the process of registering the “МІА” trademark mia.ua. This brand is underpinned by a family furniture workshop with over 20 years of experience. The trademark owner, his wife, and daughter work to create unique furniture featuring original designs, embedding craftsmanship, inspiration, and a creative approach into every project. The client serves as the leading designer and initiator of ideas, while his daughter, a designer, focuses on the furniture design. “МІА” translates from Italian to “my,” which conveys the meaning: "my furniture, my family, my ideas".

In this particular case, our specialists fully assumed responsibility for the legal support, managing everything from preparing the application to obtaining the certificate. However, a specific situation arose during the registration process that required separate legal focus.

The applicant previously held a registered TM “МІА” mia.ua, and the certificate for this mark remained active when the new application was submitted. The client chose not to renew the validity of the older trademark DESTRA Trademark Renewal. Instead, driven by a desire to optimize costs, the client decided to register a new trademark DESTRA Trademarks In Ukraine with the exact same designation and covering the identical Nice Classification (ICGS) classes.

Overcoming Obstacles to Registration

The registration of this specific designation was critically important because the brand already actively utilized the name «МІА» in its domain mia.ua, corporate identity, advertising materials, and all communications.

During the substantive (qualification) examination phase, the newly filed application was formally opposed by the existing, active trademark, despite the fact that both marks belonged to the exact same individual. The preliminary refusal issued during the review of the new application specifically cited the existence of the current certificate as the grounds for the objection.

This opposition reflects a relatively recent practice adopted by UKRNOIVI (the Ukrainian National Office of Intellectual Property and Innovations). Under this practice, a formally active TM—even one whose validity is soon to expire—is automatically deemed an obstacle to the registration of an identical designation.

According to Paragraph 4, Article 5 of the Law of Ukraine «On Protection of Rights to Marks for Goods and Services,» the scope of legal protection is determined by the trademark image and the list of goods and services entered into the Register, and this protection is certified by a single certificate. UKRNOIVI interprets this regulation in its operations to mean that current legislation does not permit the coexistence of two identical TMs that have an identical scope of protection, even when they belong to the same person. UKRNOIVI considers this situation to contradict the principle of exclusive right. For this reason, the client's existing trademark was formally opposed to the new application until the point when its duration ceased.

Successful Registration

One of the key factors contributing to our success was the preparation and submission of the necessary documentation package to UKRNOIVI. This documentation effectively removed the formal obstacle and paved the way for the successful registration of the new mark with the identical designation.

Ultimately, the “МІА” trademark successfully completed the qualification examination and secured registration and legal protection. In achieving this, the client accomplished all stated goals:

  • Preserving rights to the MIA trademark;
  • Savings on the procedure (new registration instead of the renewal of the old registration);
  • Preserving rights to the domain mia.ua.

This case confirms that even in situations that initially appear to be hindrances, an effective and lawful solution can be identified. The primary necessity is having a professional team available.

Thanks to the coordinated effort of our specialists, the client obtained a new trademark registration, which provided legal protection and the necessary scope for development and productive work.

We value the trust placed in our team and are always prepared to support clients throughout every stage of developing their own brand.

Article Author: Anastasiia Lazar, Intellectual Property Lawyer