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Intellectual property Objection to trademark registration

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.

Objection to trademark registration

Registration of a trademark in Ukraine is an important step for the protection of intellectual property. At the same time, third parties or state bodies have the right to object to such registration if there are certain grounds.

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What is an objection and who can file it?

Objection to a mark or the extension of an international registration is a formal protest filed by a person or organization that believes that the application for TM registration infringes its rights or does not meet the requirements of the law. In Ukraine, any natural or legal person can submit such a document at the stage of examination of the application, if he believes that the registration of this mark violates his interests.

The main grounds of objection

There are several main reasons for which an objection may be filed against the registration of a mark for goods and services (TM), which the legislator defines by the general term “non-compliance with the grounds of legal protection”. Let’s consider them in more detail:

Lack of distinctiveness: The sign must have the ability to distinguish the goods and services of one enterprise from the goods and services of another. If it is too general, descriptive, common knowledge, or consists of elements commonly used in commerce (for example, generic terms, quality designations of goods), it may be rejected. For example, the term “xerox” would not have received legal protection, since it turned from a TM into a generic name for goods of this type.
Misleading consumers: If a mark is likely to mislead consumers about the characteristics of the goods or services, such as their nature, quality and/or geographical origin, it cannot be registered. For example, the use of the designation “Champagne” is possible only in reference to the province of Champagne in France.
Contradiction of public morals or public order: Signs that contradict generally accepted norms of morality and violate public order are not subject to registration (offensive, discriminatory or obscene elements).
Similarity to state symbols and emblems: The law prohibits the registration or imitation of state symbols, coats of arms, emblems of states, international organizations without appropriate permission.
Conflict with the rights of third parties: If the claimed mark infringes the rights of third parties, for example, is identical or similar to the degree of confusion with a previously registered trademark, trade name, or geographical indication, it cannot receive legal protection as a brand. Also, the mark may contain a copyright object without the author’s written permission for such use.

All these aspects can be grounds for refusal to register a trademark, if the objection proves that the applied sign does not meet the requirements of the law. Proper consideration of these criteria when preparing an objection is important to protect the interests of your brand.

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Objection review procedure

In Ukraine, the National Office of Intellectual Property and Innovation (UKRNOIVI) examines documents regarding the registration of marks and grounds for rejection of such an application. The review procedure includes the following stages:

Submission : A person or organization submits a document, adding evidence to support their position.
Review: UKRNOIVI experts send a copy to the TM applicant and provide an opportunity to write their arguments, after which they analyze the objection and the response to it, checking the validity of the claims.
Making a decision: Based on the results of the review, a decision is made to refuse registration of the TM, partially satisfy the comments made in the document, or reject the objection itself.

How to file an objection against trademark registration?

In order to file an official protest against the registration of a trademark in Ukraine, it is necessary to prepare an official statement to UKRNOIVI. In the application, you must specify the reasons why the mark cannot be registered, how it violates your rights and provide relevant evidence that proves the non-compliance with the grounds of legal protection. In addition, a separate fee is paid for such filing, so a receipt for payment of such a fee is a mandatory attachment.

The objection is submitted within the term specified by the legislation – in accordance with Part 8 of Art. 10 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services” within three months from the moment of publication of the TM registration application. The agency must also determine the requirements for the form and content of the submitted document, which is set out in a separate order.

The document must indicate all essential justifications and be submitted in two copies.

Often, at this stage, the help of a qualified patent lawyer is needed, who will collect the necessary evidence, competently and clearly formulate all the arguments, note all the grounds for consideration of the relevant complaint and present them to UKRNOIVI.

Consequences of a successful denial

If the filing of documents against the registration of a mark for goods and services was successful, there are serious consequences for the applicant. First, the application may be rejected in whole or in part, which will make it impossible to use the mark on the market. Secondly, it can lead to financial losses due to the need to change the brand and restart marketing campaigns.

On the other hand, if the document was submitted without sufficient grounds, and the applicant managed to reject it, it is possible to appeal against such rejection of the complainant’s arguments to the NOIP Appeals Chamber within 2 months of receiving such a decision.

It will also be useful: Protection of trademark rights

Objecting to a trademark or extending the validity of an international TM is an opportunity to protect your mark for goods and services from potential “legitimate” copying and obtain legally permitted protection. Understanding the reasons, procedure and possible consequences allows you to prepare for such situations and effectively protect your rights by using such a mechanism effectively.

Engaging an experienced patent lawyer of the Prykhodko and Partners law firm can be the key to successfully resolving the conflict and ensuring reliable protection of your brand on the market.

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