TM registration

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An Iryna

Head of Commercial and Civil Law Practice

Lawyer, specialist in intellectual property. Specializes in registration and protection of copyrights, inventions, patents, trademarks, as well as development of intellectual property transfer agreements, license agreements.

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TM registration

A trademark or, under Ukrainian law, a “mark for goods and services” is a verbal, pictorial, three-dimensional, sound, smell, or combined designation that allows distinguishing goods or services from other similar ones.

In a competitive market, it is trademarks that allow you to promote your goods and services, develop their recognition and distinguish them from other manufacturers.

In addition, a registered trademark allows you to fight against counterfeiting – other manufacturers who try to sell their goods and services under your name.

 

Features of TM registration

Unfortunately, the protection of competitive goods develops more slowly than the processes of globalization, so trademarks are protected separately in each country only after their registration in such a country or through recognition of the trademark as well-known.

For registration, it is necessary to determine which goods and services will be covered by protection, provide a sample of the trademark itself and information about the person who is the owner of such a trademark. Additional fees are paid for the registration process.

Registration of a mark by the patent office of the relevant country consists in checking the correctness of the application for registration of such a mark (formal examination), as well as the compliance of the mark with patentability requirements (qualification examination).

The patentability of a brand includes its:

  • distinctiveness (that is, the ability to stand out from other similar marks and to distinguish the goods or services of one person from the goods or services of others),
  • observance of public order and morality
  • the absence of commonly used designations for a specific product (for example, the term “quality” cannot be patentable, because it applies to all products, or the term “oil”, because it corresponds to a type of product, and not to an individual manufacturer)
  • Good faith (a trademark that misleads as to manufacturer, geographical origin or quality cannot be registered)
  • Absence of copying other intellectual property objects (it is not possible to register as a trademark the name of a plant variety, a geographical indication, an industrial design, or a trademark already registered or submitted for registration by another person, if they are identical or similar to the extent that they can be confused )
  • Absence of parasitism on famous names without their consent (names of works of science, literature and art, quotes, characters, surnames, names, pseudonyms and their derivatives, portraits and facsimiles of famous persons are not registered)

Some countries also prohibit the registration of certain symbols on their territory, including communist, fascist, etc.

In addition, trademarks are registered in connection with classes of goods and services – a generalized list of goods and services, which are divided according to the principle of purpose to facilitate registration and protection. There are a total of 45 classes in the International Classification of Goods and Services, including 11 classes of services and 34 classes of goods.

Registration through UKRNOIVI

In Ukraine, the patent office that performs TM registration is UKRNOIVI – Ukrainian National Office of Intellectual Property and Innovation (previously it was a separate enterprise – SE UKRPATENT). To register a trademark, you need to submit an application of the established sample, an image of the designation, its description, a list of goods and services, and pay the appropriate fees for such filing.

Non-residents are also required to register through an authorized person in intellectual property matters – a patent attorney. This requirement exists in many countries.

TM registration fee

The cost of TM registration depends directly on the country of registration and its requirements for the procedure. Most countries have their own fee rates for such a procedure.

The size of the fees is tied to the number of classes that must be attached to the trademark, as well as the type of sign (its volume, color, etc.).

Fees can be paid in one payment on the date of application or be divided into several stages, for example, the application fee, the examination fee and the publication fee for the issued registration certificate.

The cost of the trademark should also include the support of a patent attorney or an intellectual property specialist, if you are not a resident of the country in which you want to register the TM.

Some countries provide for different amounts of fees for individuals and for companies, or, as in the US, gradation of the amount of fees depending on the size of the company/business.

In addition, when using a brand, additional costs may arise – for example, when re-registering a brand from one owner to another, when registering the issuance of a license for use or renewing the validity of a TM.

That is why, in order to understand how much TM registration will actually cost in one or another jurisdiction, you should contact the specialists of Prykhodko and Partners.

 

Registration in the EU

Registration of a trademark in the EU allows one application to obtain protection in the territory of 27 member states of the Union, but it requires residency or the involvement of a patent attorney from the EU for registration.

Prychko and partners has an extensive network of partners that will allow you to register your trademark throughout the EU even if you or your company do not have a legal address in this territory.

Registration in the USA

TM registration in the USA is most often of interest to businesses that want to sell their brand’s products through the Amazon platform and take advantage of their special functionality for registered brands.

TM registration in the USA requires residency or a company there. However, even in their absence, it is possible to register a trademark – you just need to involve a US trademark attorney.

TM registration through the Madrid system

Thanks to the globalization of the market and the Madrid Agreement, trademark owners or applicants for registration have the opportunity in a simplified version to obtain protection for their TM in most countries of the world through the World Intellectual Property Organization (WIPO).

This system requires that you have at least a trademark application filed or a registered application in one of the signatory countries of the agreement in order to register your trademark worldwide in a simpler format.

Filing a trademark for registration through the Madrid system allows you not to involve patent attorneys in each individual country (which accordingly reduces costs), to manage the trademark in all countries through the first application, and for many countries, reduced application fees per tom, which reduces costs.

In addition, the Madrid system allows speeding up the processing of the application, because according to the agreement, if there is no response from the country within 18 months from the date of filing, it will be considered that the trademark in such country has received protection.

To apply for Madrid, you need to have already filed an application in one of the countries, fill out the application form, pay the appropriate fees, and then send the application to the patent office of the country of first registration. Our specialists can help you at every stage of this process, as well as during correspondence with the country’s departments on such an application and overcoming possible objections.

Since in the conditions of a competitive market and globalization, one’s own brand is becoming an increasingly valuable asset, it is worth registering a trademark in order to protect one’s product from competitors, gain recognition from consumers, and provide ways to combat counterfeiting and counterfeiting.

The intellectual property lawyers of Prykhodko and partners will be happy to help you protect your brand at any stage of registration and use. To calculate the cost of registration in the countries you are interested in, leave a request in the form below.

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An Iryna
Head of Commercial and Civil Law Practice

Lawyer, specialist in intellectual property. Specializes in registration and protection of copyrights, inventions, patents, trademarks, as well as development of intellectual property transfer agreements, license agreements.

Contact now
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