Today, many people start their own business. The fields of activity are completely different, from small-scale production of chocolates, to large factories for the processing of secondary raw materials. Regardless of the scale of the enterprise, they have a lot in common - they all have to, as it is called.
At the stage of developing business plans or just ideas, any future entrepreneur comes up with a name for his creation. It does not take hours, but days or even weeks. In the throes of choosing between hundreds of options, a person or team comes to one, in their opinion, a successful name.
What to do next with this name? You can simply register the enterprise of the same name and go to the implementation of the main business objectives - the production of goods or the provision of services. The second option is to get the legal protection of your name and register a trademark. This can be done both independently and by turning to professionals - patent attorneys .
In our article, we want to focus on how to register a trademark yourself . We will describe in detail what pitfalls can be expected in the process and on what you should pay attention to when registering the mark yourself.
What to look for when registering a trademark yourself.
First of all, for a general understanding, let's say that the process of obtaining a mark in Ukraine is regulated by the Law of Ukraine "On the Protection of Rights to Marks for Goods and Services." This legislation fully regulates the entire process, it describes all the procedures and conditions that must be passed before obtaining a certificate for a mark for goods and services - this is the official name of the document confirming the registration of a trademark. The issuance of such a document in Ukraine is the responsibility of the State Intellectual Property Service and the State Enterprise Ukrainian Institute of Industrial Property (UKRPATENT).
Here are the steps and possible options for self-registration of a trademark:
1. Application to UKRPATENT,
2. Passing a formal examination,
3. Getting a decision on a successful formal examination or comments on the documents submitted,
4. Qualification examination
5. Obtaining a decision on the qualification examination or preliminary refusal to register a trademark
6. State registration and publication in the bulletin "Industrial Property"
7. Obtaining a certificate for a mark for goods and services (TM)
Application to UKRPATENT.
To issue a registration application correctly, you should decide on:
- Type of brand;
- Countries in which the brand will be registered;
- Classes of goods and services
The main types of brands are: word, image and combined. This means that you can get a guard, roughly speaking, a word, a logo (image) or a combination of a word and a logo.
Protection for a sign applies to the territory of a particular, selected state, today we will talk about the peculiarities of self-registration of a brand in Ukraine, in the following articles and on international registration.
There are so-called classes that reflect information about what protection applies to. In total, the International Classification of Goods and Services (ICGS) has 45 classes. They are also divided separately into products and services. 1-34 are goods, the rest respectively services. This moment is very important for future TM. According to the Law, protection will apply only to goods or services that are specified during registration. To make it clearer, consider this with an example: we independently register the “Izveny” brand only for the “33” class (alcoholic beverages, with the exception of beer). We go through all the stages and get the brand. At the same time, someone else registers the brand of the same name “Izveny”, but for the class “32” (mineral and carbonated water and other non-alcoholic beverages). Such registration will be made by “Ukrpatent” and this means that tomorrow not only your wine will appear on the store shelves, but also, for example, mineral water with the same name. This example suggests that before submitting your application you need to properly approach the selection of classes. Large companies often register the brand in all 45 classes, of course, such pleasure is expensive, but definitely makes it impossible to use your brand in other areas.
Passing a formal examination.
In simple words, formal examination means checking the completion and execution of declared documents with the requirement of legislation, as well as the compliance of the list of classes with the current version of the international classifier. There are a lot of examples of registration of applications on the Internet and if everything is filled out and indicated correctly, you go through this stage and get a decision on the successful completion of a formal examination. If not, you get comments on the submitted documents and then you have two months to correct errors and make corrections.
Qualification examination.
This stage is the main and key in the process of trademark registration. At this stage, Ukrpatent employees are studying the possibility of issuing a certificate. They check the similarity of the mark you declared with the already registered marks. To do this, the so-called search for identity and similarity with the already registered signs.
Tip: Before starting the procedure for self-registration of a trademark, we recommend conducting a “preliminary search”. This is a paid service that you can safely order from the state-owned enterprise Ukrainian Center of Innovative Technologies and Patent Information Services. The cost of such a procedure is from 770 hryvnia, depending on the number of classes to check (each class + 144 UAH.). What gives a preliminary search? The search result will show the complete “picture” of the registered and already registered stamps, which means that you can correct the claimed mark and reduce the possibility of receiving a refusal to register.
A nice bonus: the base of already registered marks is in the public domain. Now everyone, independently, without labor and investment of funds will be able to look at which brands have been issued security documents. The downside of such a base is the absence of applications submitted.
Getting a decision on the passage of qualification expertise.
The time of the qualification examination depends on the chosen registration period. Minimal when choosing an expedited procedure, it takes 3 months. In case of choosing a longer procedure - from 4 months. The applicant will find out about the decision by receiving notice by mail. In this article, we will not touch upon the option of a preliminary refusal; we will devote a separate publication to this and tell you what to do in this case.
State registration and publication in the bulletin "Industrial Property"
The final step in the process of self-registration of TM will be the publication of information about your brand in the so-called bulletin "Industrial Property". This is such a book, produced by the same Ukrpatent. This newsletter has been published twice a month since 1993 and contains information on brands, industrial designs and inventions registered during a certain period. It’s not completely clear why in the digital age and the Internet to release such a rather expensive “newsletter”, but we tell it “as it is”.
Obtaining a certificate for a mark for goods and services (TM)
The final part of obtaining a certificate for a sign for goods and services. You can receive this document directly from the office, and if you or your representative does not come, the certificate will be sent by registered letter to the address for correspondence you specified in the documents. The certificate looks quite simple, it is printed on a strict reporting form in blue. The document contains information about the number under which the mark is registered, the date of registration, the signature of the head of the State Intellectual Property Service of Ukraine and, accordingly, the seal of this organization. The validity of the document - 10 years. If you wish to extend the validity period, you will need to renew the certificate. This is done 6 months before it ends. The renewal period is also 10 years.
This article is designed to answer the question of how to register a trademark in Ukraine independently . In this case, we still recommend to apply for such services to professionals.
Before applying for registration, you can check the trademark using the form below:
