Overcoming objections and refusals to register trademarks in Ukraine

Read the objection or denial

The first step in overcoming an objection or refusal is to carefully review the written notice received from the intellectual property authority. It is worth analyzing the reasons underlying the denial or rejection and understanding which specific requirements were not fulfilled.

Most often, the following reasons can be the reason for refusal or objection:

• TM has no distinctiveness or has not acquired such due to use.

Yes, signs consisting of a single number, letter, geometric figure, or line cannot be registered. A realistic image of the goods for which the TM is registered also has no distinguishing ability.

• TM is descriptive.

Designations that indicate the type, quality, quantity, properties, composition, place, or time of manufacture or sale of goods or provision of services are considered descriptive — for example, the name “Homemade honey” for honey production.

• TM can mislead consumers about the product, service, or person who produces the effect or provides the service.

For example, a sign with the indication “made in Italy” can be considered misleading, although the product produced under this sign has nothing to do with Italy.

• TM is identical or similar to another TM.

For example, if you decide to register TM “Nike” for the sale of sportswear, the registration will be refused because such a TM is already registered in Ukraine.

Prepare a motivated answer

Starting from receipt of the objection or notice of preliminary refusal, the applicant has two months to submit a reasoned response that contains valid reasons why the TM should be registered. The deadline for submitting an answer can be extended based on a request and payment of the relevant state fee, but only for up to six months.

However, during the period of martial law, all time limits are suspended, and the answer may be provided during the period of martial law and no later than 90 days from the day following the date of suspension or cancellation of martial law without payment of fees for renewal, extension or extension of time limits.

The answer is submitted in writing in an arbitrary form. The letter must include the application number, the number and date of the Office’s message to which the response is provided, and the applicant’s signature.

The central part of the motivated answer should be structured and contain all the necessary evidence, arguments, and explanations that confirm the suitability and uniqueness of your TM. This may include additional documentation, proof of use of the mark, evidence of popularity, or distinctiveness from other patterns.

For example, in the event of a denial based on lack of discernment, the applicant may provide evidence of acquisition of understanding through use. Such evidence can be used for online markings, advertising materials, and customer reviews. Contracts, letters, acts, POS products, and other materials mentioned in TM can also be attached to the letter.

However, evidence of use before applying for TM registration is required.

In case of receiving an objection or a preliminary refusal based on similarity with another TM, the applicant can justify his answer as follows:

• TMs differ among themselves in writing, font, and graphic design.
  Provide evidence of the use of your TM, before filing the application, as a result of which it has acquired distinctiveness and cannot be confused with other TMs.
• TMs are used in various fields. For example, the applicant wants to register TM “Sonechko” to sell children’s clothing, while the opposed
• TM “Sonechko” is used to sell cookies. Since TMs are used in different areas, there is a low probability of their confusion.

Conclusions

Overcoming objections and refusals to register a TM in Ukraine can be a challenge, but with the right strategy and approach, it is possible to get a decision on registration. Thorough research, a practical design, and an informed response can decide the registration process.

We are happy to take on cases for work on previous refusals. Thanks to a properly constructed defense strategy, proper preparation of evidence, and preparation of a detailed response together with our specialized lawyers, it is possible to obtain a favorable decision on TM registration.