Ukrainian Trademarks | Detailed Analysis of of the procedure for Trademark Filing & Prosecution in Ukraine

Trademark registration in Ukraine is a multi-stage process, in the course of which a Patent Attorney determines the scope of protection for the trademark, based on the client's needs, prepares the necessary documents, and manages the registration procedure during the state examination.

How to begin the trademark registration process in Ukraine?

When preparing for trademark registration, you need to determine the following blocks of issues:

1. In what form is registration anticipated

The following types of trademarks are registered most often:

• Word marks—trademarks consisting of existing or invented words or combinations of letters and numerals (for example, company names, designations used to individualize goods or services, slogans used for advertising purposes, or mottos);
• Figurative marks—trademarks consisting of graphic compositions of any shape on a plane (for example, logos, emblems, or labels);
• Three-dimensional marks—trademarks in the form of three-dimensional figures or their compositions (for example, the shape of a bottle, packaging, or signage);
• Combined marks—trademarks in the form of a combination of word designations, flat graphic compositions, and/or three-dimensional figures.

2. Who will be the Applicant/Owner of the TM

The Applicant may be:

• An individual person—a citizen of Ukraine, a foreign citizen, or a stateless person;
• A legal entity—Ukrainian or foreign.

3. In what field will the TM be used

Based on the field in which the trademark is planned for use, the Patent Attorney selects classes according to the International Classification of Goods and Services (Nice Classification or NCL) and forms a list of goods and/or services within the selected classes.

The Classification contains 45 classes (34 goods classes and 11 services classes). The number of classes included in the trademark registration application directly influences the cost of registration, as an official fee is required for each class.

To correctly decide on the registration option (choosing the type of trademark, classes, goods, and services), it is necessary to understand the advantages and disadvantages of each option.

During the process, specialists at the Patent and Legal Agency DESTRA assist with the selection, providing the necessary information and comments when preparing for registration.

What documents are prepared with the Patent Attorney to initiate trademark registration?

After discussing the optimal registration option with the Applicant, the Patent Attorney prepares the following documents, which, among other things, authorize the Patent Attorney to represent the Applicant's interests during the trademark registration process:

• Service Agreement for TM registration services—signed by the Patent Attorney and the service Customer.
• Power of Attorney—signed by the applicant (future TM owner) and does not require notarization. Documents can be signed in person at the office, sent via mail, or certified with an electronic signature.

Documents can be signed in person at the office, sent via mail, or certified with an electronic signature.

In what form is the trademark registration application filed, and how long does the examination take?

A trademark registration application can be prepared and filed in two ways:

• In paper form.
• In electronic form.

 

After coordinating all registration aspects with the Customer, we file the application within 1–2 business days.

Because we maintain an electronic account within the system of the National Intellectual Property Authority (NIPO), our Clients save money on the official fee payment (the advantage of electronic filing is a 25% reduction in the official filing fee, for example, 3,000 UAH instead of 4,000 UAH for one NCL class).

The examination period is usually 18–20 months from the filing date under the ordinary procedure. Under the accelerated procedure, the expert's decision is usually received within 6–7 months from the filing date.

How does the application examination and trademark registration occur?

1. Formal Examination

During the Formal Examination, the filing date of the application is established, and the application is checked for compliance with the formal requirements of the current rules for drafting and filing applications, as well as verification of compliance with the established requirements for payment of the filing fee.

1.1. Submission of the document confirming payment of the filing fee to the National Intellectual Property Authority (NIPO) (if not done at the time of filing)

The document confirming payment of the filing fee must be submitted to the NIPO within two months of the filing date. This period may be extended by six months if a relevant petition is filed and the associated fee is paid before the expiration of the original term. Failure to meet these requirements results in the application being deemed withdrawn, about which NIPO provides a corresponding notification.

1.2. Possible claiming of priority (if not done at the time of filing)

Priority may be claimed when filing the application or within three months of the filing date in the following manner:

Based on the date of a previous application for the identical trademark concerning the identical goods and services (provided that six months have not elapsed since the filing date of the previous application, and that previous application was filed with the NIPO, or with the relevant authority of a state that is a member of the Paris Convention or a member of the World Trade Organization Agreement);

Based on the date of the first public display at an official or officially recognized international exhibition of an exhibit in which the trademark was used or presented concerning the identical goods and services (provided that six months have not elapsed since the date of display, and the exhibition took place in the territory of a state that is a member of the Paris Convention or a member of the World Trade Organization Agreement).

1.3. NIPO establishing the filing date of the application

NIPO issues a Notification establishing the filing date, provided the application contains:

A request for TM registration stated in the Ukrainian language;

Information about the applicant and their address stated in the Ukrainian language;

A list of goods and services for which the TM is claimed, stated in the Ukrainian language;

A clear image of the designation claimed as the TM;

Confirmation of payment of the filing fee for this application.

If the application is missing any of the listed documents, except for the confirmation of filing fee payment, NIPO sends a notification to the applicant. If the non-compliance is rectified within two months of receiving the notification, the filing date of the application is considered to be the date NIPO receives the corrected materials. Otherwise, the application is deemed not filed, and a corresponding notification is issued.

1.4. Publication of the application

NIPO publishes the application within five business days from the date the Notification establishing the filing date is issued. After the publication of information about the application, any person has the right to review the application materials.

1.5. Three-month period for potential filing of a reasoned Opposition against the application by third parties with NIPO

Within three months of the application publication date, any person (upon payment of the relevant fee) may file a reasoned Opposition with NIPO against the application regarding the non-compliance of the designation with the conditions for legal protection. NIPO sends a copy of the opposition to the applicant. The applicant may inform NIPO of their position regarding the opposition within two months of receiving it. The applicant may refute the opposition and leave the application unchanged, amend the application, or withdraw it. The review of the Opposition and the review of the applicant's response are carried out during the Substantive Examination (examination on the merits).

1.6. Conclusion of the Formal Examination

If the application complies with the current rules for drafting and filing the application, NIPO issues a Notice of Compliance with formal requirements.

If the application complies with the current rules for drafting and filing the application, NIPO issues a Notice of Compliance with formal requirements. In case of non-compliance with the formal requirements or if the paid filing fee does not meet the established requirements, NIPO issues a notice with suggestions for remedying the deficiencies. If the deficiencies concern the grouping of goods and services, the notice includes a list grouped by NIPO and, if necessary, specifies the amount of the filing fee that needs to be supplemented. If a good or service is stated in the application using a term that makes it impossible to assign it to a specific NCL class, the applicant is offered to replace the term or exclude it. If the applicant fails to comply, that term is not included in the list of goods and services grouped by NIPO.

During the Formal, as well as the Substantive, examination of the application, NIPO may require the submission of additional materials if examination is impossible without them, or if reasonable doubts arise regarding the authenticity of any information or elements contained in the application materials.

he elimination of deficiencies specified in the NIPO notice or the submission of additional materials requested by NIPO must be done within two months of the date of receiving the corresponding NIPO notice. Failure to meet this deadline results in the application being deemed withdrawn, about which NIPO issues a corresponding notification. This period may be extended by six months if a relevant petition is filed and the associated fee is paid before its expiration. If this period is missed, but a relevant petition is filed and the fee for its submission is paid within six months of the expiration of this period, the applicant's rights regarding the application are reinstated.

2. Substantive Examination (Examination on the Merits)

During the Substantive Examination, the claimed designation is checked for compliance with the conditions for granting legal protection, and any filed oppositions are reviewed. This involves searching for and checking the similarity of the claimed trademark with previously filed and already registered trademarks under national and Madrid procedures. The examination also utilizes reference and search tools and relevant official publications. A filed opposition is reviewed within the scope of the grounds stated therein, taking into account the applicant's response, if provided within the established timeframe. The results of the opposition review are specified in the examination conclusion for the application. A copy of the NIPO decision, adopted based on that examination conclusion, is sent to the person who filed the opposition.

2.1. Possible preliminary conclusion of the Substantive Examination regarding the non-compliance of the claimed designation with the conditions for granting legal protection

A preliminary conclusion (Office Action) regarding the full or partial non-compliance of the claimed designation with the conditions for legal protection is issued with justification if there are grounds to believe that the claimed designation does not meet the requirements set by current legislation for granting legal protection for all or part of the goods and services listed in the application. Such a conclusion must contain an exhaustive list of the grounds for the designation’s non-compliance. This conclusion may be issued only once and must include a proposal to provide a reasoned response in favor of the trademark's registration.

The applicant must provide the reasoned response in favor of trademark registration within two months of receiving the corresponding NIPO Preliminary Conclusion. Failure to meet this deadline results in the application being deemed withdrawn, about which NIPO issues a corresponding notification. This period may be extended by six months if a relevant petition is filed and the associated fee is paid before its expiration. If this period is missed, but a relevant petition is filed and the fee for its submission is paid within six months of the expiration of this period, the applicant's rights regarding the application are reinstated.

2.2. Final Conclusion of the Substantive Examination

Based on the results of the Substantive Examination, taking into account the review of any reasoned response to the preliminary conclusion and any response to an opposition, and after the expiration of the deadline for the applicant to provide the reasoned response, NIPO issues one of the following final conclusions:

- Conclusion of compliance of the trademark with the conditions for legal protection for all goods and services listed in the application;

- Conclusion of compliance of the trademark with the conditions for legal protection for part of the goods and services listed in the application;

- Conclusion of non-compliance of the trademark with the conditions for legal protection for all goods and services listed in the application.

2.3. NIPO Decision based on the results of the application examination

Simultaneously with the issuance of the final conclusion of the Substantive Examination, NIPO issues a corresponding decision:

- Decision on the registration of the trademark for all goods and services listed in the application;

- Decision on the registration of the trademark for part of the goods and services listed in the application and a refusal of registration for the other part of the goods and services listed in the application;

- Decision on the refusal of registration of the trademark for all goods and services listed in the application.

If NIPO issues a Decision on Registration (fully or partially) after reviewing an Opposition, the application review is paused until the expiration of the two-month period established for a potential appeal of that decision by the person who filed the Opposition.

The Applicant or the person who filed the Opposition against the application may appeal the NIPO decision to the Appeal Chamber within two months of the date of receiving the NIPO decision.

3. Publication of Certificate Issuance and State Registration of the Trademark

3.1. Submission of the document confirming payment of the publication fee for certificate issuance and the document confirming payment of the state duty for certificate issuance to NIPO

Within 3 months of receiving the Decision on TM Registration, the document confirming payment of the fee for publication of the certificate issuance must be submitted to NIPO.

Within 3 months of receiving the Decision on TM Registration, the document confirming payment of the state duty for certificate issuance must be submitted to NIPO.

If the specified conditions regarding deadlines and the amounts of the fee or duty are violated, publication is not carried out, and the application is deemed withdrawn. The deadline for providing each of these documents may be extended by six months if a relevant petition is filed and the fee for its submission is paid before its expiration. If the deadline for receiving the document confirming payment of the state duty or the publication fee is missed due to valid reasons, the applicant's rights regarding the application may be reinstated, provided a relevant petition, along with the document confirming payment of the state duty and the fee for publication of the certificate issuance and the fee for filing the petition, is submitted within six months of the expiration of the specified period.

3.3. Publication of information about the issuance of the Trademark Certificate

NIPO publishes information about the issuance of the Trademark Certificate based on the Decision on Trademark Registration and upon receiving the document confirming payment of the state duty for certificate issuance and the fee for publication of certificate issuance.

3.4. State Registration of the Trademark

Simultaneously with the publication of information about the issuance of the Trademark Certificate, NIPO performs the State Registration of the trademark by entering the relevant information into the State Register.

4. Issuance of the Trademark Certificate

NIPO issues the Trademark Certificate within one month after the State Registration of the trademark. The Certificate is issued to the person entitled to receive it. If several persons are entitled to receive the Certificate, one certificate is issued to them.

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