How to protect the brand?

Barbashyn Law Team
15 February, 2024 6 min for reading
15 February, 2024 6 min for reading

A brand is a unique word or image identifying a product or service. It can also refer to the set of ideas and values that it conveys to consumers through goods and services. In a competitive market with many similar goods or services, the primary function of a brand is to distinguish one manufacturer or service provider from others.

 

To protect your brand and prevent infringement, you must register it as a trademark. The brand’s owner receives a certificate certifying their right to the trademark for 10 years. After the 10-year period, the certificate’s validity can be extended for another 10 years, with no limit on the number of times it can be renewed.

 

Types of TM

1. Words consist of numbers, letters, words, or combinations. It can be made with an original font or color, which will help give the word distinction.

2. Graphic, consisting of real or abstract images without verbal elements.

3. Combining verbal elements with a pictorial element.

4. Bulk, registered in the form of the product or its packaging. Such TM can also act, for example, a box of sweets.

5. Colored – the brand’s object is a color or a combination of colors.

6. Sound represented by a set of sounds. Most often, TV or radio broadcast screensavers are registered, giving them a distinctive character and recognition among viewers and listeners.

7. Olfactory, represented by a certain set of smells. This type of TM is not registered in Ukraine because the registration procedure is not established, and there is no registration ban.

Before applying for TM registration, searching to identify similar and identical TMs claimed or registered is also recommended. This step is essential because TMs that are identical or similar enough to be confused cannot be registered. Accordingly, this will help to avoid legal problems in the future.

Who can register a TM?

TM registration is available to individuals and companies, regardless of their nationality or place of registration. Several applicants may also be specified in the TM registration application.

However, we note that a natural person-entrepreneur (FOP) can register a TM exclusively as a natural person.

What does a registered TM provide to the owner?

🔹  Use the TM differently: apply it to goods, install signs, use it in business documentation and the Internet, advertise, etc.

🔹  Transfer TM rights to another person under the contract in full or concerning part of the goods and services specified in the certificate.

🔹  Grant permission (license) to other persons to use the TM in any way or with a clearly defined list of ways of use.

🔹 Prevent any illegal use of your brand without consent.

Ways of protecting TM rights

Exercising the right to defense is possible in pre-trial and judicial proceedings.

The TM owner has the right to request the owners of online stores to remove publications that mention his brand. It is recommended to keep track of submitted TM applications in available registers to prevent the registration of a similar brand in the same classes of goods and services, which may lead to a decrease in the uniqueness of your brand. In this case, the owner has the right to file an objection against the registration of a specific TM to the intellectual property authority within 3 months from the application’s publication date. If an application is submitted for registration of a similar brand but for other goods and services classes, the registered TM owner cannot prohibit its use. However, registration can be objected to because another person will use the brand’s reputation to achieve commercial success in their industry.

The Antimonopoly Committee of Ukraine is a unique body protecting violated TM rights in Ukraine. It is necessary to turn to this body when there is unfair competition, for example, using a brand on goods and selling copies of products. In such a case, the certificate owner can demand recognition of the unfair competition, stop such activity, impose a fine, and confiscate the goods.

If the owner of the certificate goes to court, he has the right to demand:

  • remove goods or packaging on which the TM or a similar brand is illegally used;
  • destroy manufactured images of a TM or similar brand that may confuse.

A person has the right to apply to the court to invalidate a TM certificate issued to another person. A TM certificate may be invalidated if the registered TM misleads consumers, directly indicates goods or services, or consists of a single letter, number, or word that does not help consumers distinguish between goods and services. Also, you can apply to the court to prematurely terminate the validity of another person’s certificate. This requires that the TM has not been used for 5 years about part or the entire list of goods and services in which the TM is registered. Accordingly, if it is possible to prove the fact of non-use successfully, the certificate’s validity may be wholly or partially terminated.

Another way to protect TM rights is to indemnify. Also, in the EU, compensation for moral damages in case of copyright infringement is practiced; that is, there is an opportunity to protect the company’s business reputation and collect compensation for the moral damage caused.

Conclusion

A unique brand’s presence allows an entrepreneur to occupy a specific niche in the market and achieve success in his activity. However, the brand owner’s rights can easily be violated by others, which can cause losses. Today, the search for an effective, fast way to protect the brand with minimal costs is an urgent issue. Brand protection itself requires a comprehensive approach. The “Barbashyn Law Firm” lawyers will help you build an effective strategy for protecting your brand.

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