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Intellectual property Appealing a refusal to register a trademark in Ukraine

Zal Dmytro Oleksandrovych

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zal@prikhodko.com.ua

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Specializes in protection of honor and dignity, of copyrights, inventions, patents, trademarks, support of tenders, protection of consumer rights, disputes with insurance companies, legal support in cases of administrative offenses.

Appealing a refusal to register a trademark in Ukraine

Registration of a trade mark (TM) is an important step for business, allowing to protect the brand and ensure its uniqueness. However, getting a refusal to register a TM can be a significant challenge. In this article, we will consider how to proceed in the event of a refusal, what grounds to appeal, as well as the procedure for filing a complaint.

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Grounds for refusal to register a trademark

Ukrainian legislation provides for a number of reasons for which TM registration may be refused. An exhaustive list is provided by Article 6 of the Law of Ukraine “About the most common of them:

TM has designations that cannot be registered under current legislation (imitations of named states or organizations, their symbols, official stamps and seals, as well as awards)
TM is descriptive or commonly used (for example, indicates the type of goods or services or their characteristics)
The sign can be misleading about their origin (for example, you are compatible with the geographical indications of the product)
The sign contradicts the principles of public morality or contains forbidden symbols.
The designation reproduces another object of intellectual property that is protected in Ukraine (already registered) – the name of the plant variety, geographical indication, copyright, industrial design, etc.
If the new TM is too similar to the existing one, it may mislead consumers.

How to find out the reasons for refusal?

The reasons for the refusal are indicated in the decision – conclusion of the examination, which is sent to the applicant of the Ukrainian National Office of Intellectual Property and Innovation (UKRNOIVI). This solution contains a detailed description of the problem and justification for the refusal.

In advance, under certain circumstances, the applicant may be sent a preliminary refusal, in response to which it is possible to provide the necessary evidence or correct the shortcomings of the registration of the application.

It will also be useful: Trademark protection in Ukraine

The procedure for appealing a refusal

The first step is to carefully analyze the document, determine the grounds and justification for such a refusal.

Appeal to the Appeals Chamber of UKRNOIVA

You can file an appeal within three months from the date of receipt of the refusal.
The appeal is submitted to the Appeals Chamber of the UKRNOIVE. It is necessary to prepare a written appeal, where your objections to the refusal are substantiated and pay the necessary fee for filing such an appeal.

Preparation of evidence base:

Support the appeal with documents confirming your position.
For example, the results of a search for the uniqueness of the TM, evidence of the use of the mark in commercial activities.

Consideration of mourning:

The trial lasts up to two months. If necessary, additional explanations can be invited, and the expert must provide his vision of the situation

Decision of the Appeals Chamber:

If the appeal is successful, the TM registration will be renewed.
If the decision of the Chamber does not satisfy the complaint, it is possible to appeal such actions to the court.

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Judicial appeal procedure

If the appeal did not give the desired result, the applicant has the right to appeal to the court. Main stages:

Preparation of the statement of claim:

It should indicate all the circumstances of the case, the reasons for disagreement with the decision of the UKRNOIVA and the Appeals Chamber, as well as a reference to the legislation that substantiates the requirements.

Representation of interests in court: Participation in court hearings to defend one’s claims.
Final decision: The court can cancel the decision of UKRNOIVA and oblige the body to renew the register

How to avoid rejection when submitting an application?

Previous TM search:

Before submitting an application, check for similarity with already registered TMs.

Correct definition of MKTP classes:

Carefully select the classes that correspond to your goods or services.

Consultation with a lawyer:

A lawyer will help you make the application correctly and avoid common mistakes.

Why is it important to contact professionals?

Appealing a refusal to register a TM is a complex process that requires knowledge of legislation and practice. Intellectual property specialists Prykhodko and partners will help:

Will prepare a competent appeal.
Collect the necessary documents.
Represent interests in the Appeals Chamber or in court.

Refusal of TM registration is not a final decision. Knowing your rights and a clear action strategy will help you successfully overcome this obstacle. If necessary, contact Prykhodko and partners to ensure maximum protection of your brand.

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