Recommendations for TM registration in Ukraine and the main grounds for refusal

Barbashyn Law Team Roman Tkan - Lawyer at Barbashyn Law Firm, Anastasia Vladieva - junior lawyer at Barbashyn Law Firm
27 September, 2023 5 min for reading
27 September, 2023 5 min for reading

Trademark registration (from now on – TM) is an essential step for the comprehensive protection of your brand. Ukraine offers an effective TM registration system, but some factors can lead to refusal of registration. In this article, we will share helpful tips regarding the TM registration process in Ukraine and consider the main reasons for the denial of registration. Understanding these aspects will help you build a strategy for successfully registering your TM in Ukraine.

Define classes of goods or services for your TM

The first step in TM registration is the definition of classes, items of goods, and services for which it will be applied. The stage is critical because the scope of the legal protection of the TM is determined, in addition to the image and the list of goods and services. In addition, TM registration in certain classes of goods or services allows its owner to obtain a monopoly on the use of a word or image in these industries. This means that other entities cannot use similar words or images for similar goods or services, helping to avoid plagiarism and confusion among consumers.

When choosing classes of goods and services for TM registration, you should follow several tips:

  • Provide definitions of goods or services by the International Classification of Goods and Services (Nice Classification). This classification contains 45 classes that cover different groups of goods and services. You need to understand which class or classes your TM should be registered for.
  • To correctly choose the classes in which TM should be registered, analyze your product or service in detail and determine its essential characteristics and central functions. Ask yourself what the main area of your business is and what products or services are most closely related to your TM.
  • Avoid a wide selection of classes that do not correspond to the actual use of your TM. First, there is a risk of rejection due to misleading consumers. For example, the registration of TM “Confectioner” in class 30 is not only for confectionery products but also for products that cannot be confectionery products (burritos, bulgur, sausage binders, etc.). Secondly, suppose the TM is not used continuously for five years concerning part of the goods and services specified in the certificate. In that case, the certificate’s validity may be terminated in a court of law for the selected goods or services.

These tips will help you ensure adequate protection of your TM.

Check TM for uniqueness

One of the main reasons why registration of a TM in Ukraine may be refused is its similarity to other TMs that have been submitted for registration or registered in Ukraine by another person, as well as TMs that are recognized as well-known in Ukraine. This is due to the need to ensure the uniqueness of each registered brand. The identity of TM is essential so that consumers can easily distinguish the products or services of different companies. Suppose the TM is identical or similar to the degree of confusion with another already registered mark. In that case, this may create confusion among consumers and harm the interests of the owner of the existing TM.

To ensure there is no reason for rejection, you should check your TM for uniqueness by conducting a search and analysis of identical or similar marks among submitted and already registered TMs. Such a search is performed on international databases and the UKRNOIVI database. It is worth checking if there are similar names, logos, or elements that could be confused with your TM. You can do it yourself or with the help of a lawyer or patent attorney. They can provide professional support and help identify potential conflicts with existing TMs.

Make sure that there are no other grounds for refusal of TM registration

Similarity with other TMs is the main, but not the only, reason for refusal of registration, which should be considered before submitting a TM for registration.

TM also cannot be registered if it:

  • Is descriptive of the goods and services specified in the application or indicates the type, quality, quantity, properties, composition, place, or time of manufacture or sale of goods or provision of services — for example, TM “Cosmetyka” for the sale of women’s decorative cosmetics.
  • Has no distinguishing ability. For example, such designations are considered to consist of one number, letter, geometric figure, or line. A realistic image of the goods for which the TM is registered must also be distinct.
  • May mislead consumers about the product, service, or person who produces the effect or provides the service. For example, TM’s “Fruit pirate” for selling vegetables can be considered misleading.

However, marks that are perceived by the average consumer as fanciful and cannot cause a direct association between the impact and the goods are not considered misleading. For example, the “North Pole” for the production of ice cream, because in this case, it cannot be associated in the consumer’s mind with the place of production or sale of the product.

  • Contrary to public order and generally accepted principles of morality. As an example, in 2021, in Ukraine, the registration of the TM “Yaposhka” was refused because the specified verbal element has a derogatory meaning for persons of Japanese nationality, humiliates the nation based on its national character, and can harm the interests of the relevant state and society.

Understanding these grounds and complying with the relevant requirements is vital for successful trademark registration in Ukraine.

Conclusion

Trademark registration in Ukraine is an essential step in business development. Following the registration guidelines and avoiding the main reasons for refusal will help ensure the successful registration of your TM.

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