Author: Viktoriia Staryk, lawyer at F&P
Trademark is any unique sign that allows you to distinguish your goods or services from competitors and protect intellectual property. It can be registered by individuals as well as legal entities. A trademark can take different forms: verbal (name), graphic (logo), combined, or even sound. Its registration offers a range of advantages:
- Protection from copying. Once registered, third parties will not be able to use your mark without your permission. A trademark certificate is official confirmation of your rights and simplifies the procedure of protecting them in legal disputes both in Ukraine and abroad.
- Increased trust. A registered brand inspires more respect and confidence among customers and partners, enabling the creation of a unique image for your business.
- Investment in the future. A trademark is an intangible asset that can increase the value of your business when selling or attracting investors.
Trademark registration is quite a comprehensive and lengthy process that requires following certain steps.
- Checking the uniqueness of the mark and preparing necessary documents. Before submitting your application, it is important to ensure that your mark is original and unique. To do this, you should search the database of registered trademarks, which will help avoid potential disputes with competitors. To check information about an already existing trademark, use this link. If you plan to enter the international market, it is recommended to check for similar trademarks in international databases such as TMview and DesignView.
You should prepare a complete set of documents, including a description of the trademark, a list of goods and services it will represent, an application for registration, filled out according to the approved form, a document confirming the payment of the state fee, and a power of attorney (if the application is submitted by a representative). The fee amount depends on the number of Nice Classification (NCL) classes for which you are registering the trademark and the chosen method of submitting the application (online/mail/in person).
- Preparing the application. At this stage, it is necessary to define the elements of your mark (name, logo, colors) and select the classes of goods and services according to the International Classification (NCL). It is important to clearly formulate the description to ensure that the mark aligns with your goals.
International Classification of Goods and Services also known as the Nice Classification is a universal system that divides all goods and services into 45 classes: 34 for goods and 11 for services. Each class covers a specific category of goods or services grouped by common characteristics. This system is widely used in the process of trademark registration in most countries around the world, including Ukraine.
Why NCL is key for trademark registration?
- Providing legal protection
When you register a trademark, it is only protected for the goods and services listed in your application. If you do not include all relevant classes for your activity, your brand will remain unprotected for those goods or services.
- Preventing conflicts with other brands
Proper classification helps avoid conflicts with trademarks that are already registered for similar goods or services. This reduces the risk of rejection due to the presence of identical or similar marks.
- Optimizing the registration process
Defining the class of goods or services according to the NCL helps you correctly prepare the application, reduce preparation time, and avoid potential mistakes. This is especially relevant if you plan to register in several countries, as NCL is used internationally.
- Submitting the application to the Ukrainian Intellectual Property Institute (UKRIP). The application for registration and the document package can be submitted through the official website of the Ukrainian Intellectual Property Institute, by mail, or directly to their office. It is important to include all necessary data and documents, including evidence of the uniqueness of your mark.
- Examination. UKRIP conducts two types of examination: formal and substantive. Each of these has its own terms, which can vary depending on the workload of UKRIP and the complexity of your application, but it is the examination that determines whether your mark will be registered.
Formal examination: usually takes about 1-2 months from the date of submission of the application. At this stage, the correctness of the document’s design and the presence of all necessary details are checked.
Substantive examination: this is the longest stage, which can last from 17 to 20 months. At this stage, UKRIP experts conduct a thorough analysis of your trademark for compliance with legal requirements and uniqueness.
- Receiving the certificate. In the case of a successful examination and after state registration, information about your trademark is published in the official UKRIP bulletin. After publication, a three-month period opens for third parties to file objections. If there are no objections, UKRIP issues a trademark certificate. This stage usually takes about 1-2 months.
Note! A trademark certificate is issued for 10 years and can be extended for the next 10 years upon your request.
Trademark registration is a complex legal process that requires an understanding of the legislation. Incorrectly filled applications, wrong selection of classes, or underestimating potential conflicts with other brands may lead to rejection or limited legal protection. Our lawyers, specializing in intellectual property, will help avoid these risks, ensure proper document preparation, and provide effective protection for your brand at every stage of registration both in Ukraine and abroad.
