Mikhailyuk, Sorokolat & partners offers the full range of legal services related to trademarks in Ukraine including trademark search, trademark registration, renewal of a trademark certificate, recordal of assignment and license agreements, recordal of changes to applications and registrations, as well as representing clients in courts. We do our best to represent our clients' interests in the most efficient and cost-effective manner.
Requirements for trademark registration
According to the legislation of Ukraine, designations that are similar with or identical to the trademarks previously registered or applied for registration in respect of similar goods and/or services cannot be registered.
In order to determine whether there are any similar or identical registered trademarks or filed trademark applications that may be opposed to your mark at the examination stage, please use the online trademark search tool which is available on our website or contact us to order professional trademark search.The online trademark search in Ukraine
Information and documents needed for filing
- Name and address of the applicant;
- Prints of the trademark;
- List of goods and/or services in accordance with The Nice Classification;
- Certified copies of priority documents, if priority is claimed (may be filed to the Ukrainian Trademark Office within three months from the filing date);
- Signed Power of Attorney, legalization and notarization are not required (may be filed to the Ukrainian Trademark Office within two months from the filing date).
Trademark registration procedure
After the completion of filing, the official notification of the receipt of the application is issued and the application is published for a 3 months opposition period. The formal and substantive examination of a trademark in Ukraine usually takes up to 24 months. On condition that the trademark meets the requirements of protectability, the grant decision is issued. If official registration and publication fees are paid in due course the trademark is registered, published and the certificate of registration is issued within approximately 2-3 months. In case the examination finds any obstacles for registration a provisional refusal in trademark registration is issued, which may be appealed within further 2 months.
The smooth trademark registration procedure takes about 2 years and two months in Ukraine
Foreign applicants must be represented by a registered Ukrainian trademark attorney
Possible oppositions and cancellation requests
Any interested party may file opposition against registration of applied designation within three months from the date of publication of the application data in the Official Bulletin.
Interested parties may also file cancellation requests after trademark registration, namely:
- cancellation based on relative grounds may be filed to Court. Since 3-year limitation of action may be applied, the cancellation action should be filed within 3 years from the date of publication about registration;
- cancellation based on absolute grounds may be filed to Court. Since 3-year limitation of action may be applied, the cancellation action should be filed within 3 years from the date of publication about registration;
- cancellation based on non-use may be filed to Court. The grace period is 5 years from the date of publication about registration.
Trademark validity and renewal
A trademark is valid for 10 years from the filing date and can be further renewed every 10 years. It is possible to apply for a renewal of a trademark within 12 months before expiry of validity term. There is also a 6-month grace period which allows applying for a renewal after the deadline upon payment of a stipulated fine. Reinstatement of a lapsed trademark (after grace period expiration) is not possible.
Required documents: signed and stamped Power of Attorney.
Frequently asked questions
- Can I file a trademark application to Ukraine by myself?According to the Ukrainian legislation, only citizens of the country may file trademark applications by themselves, foreign applicants should obligatory be represented by trademark attorneys registered in Ukraine.
- What are the grounds for refusal in trademark registration in Ukraine?A trademark is usually refused in registration if it is similar with or identical to earlier filed or registered trademarks in respect of the same or similar goods/services, as well as in case of lack of distinctiveness or misleading character of a mark.
- How can I conduct a trademark search prior to filing an application?You may order a service of a professional search or use our free online trademark search tool, where you can conduct a search by entering mark name and class number. Please consider the following information when checking the mark name:
— different variants of spelling of the word should be checked (HERMES — ERMES, HERMEZ, etc);
— parts of the mark should be checked together and separately (MAXINORM — MAX, NORM);
— spelling of the word should be checked both in Latin and Cyrillic (Poker - Покер);
— meaning of the word should be checked in other languages (Dream — Мрія in Ukrainian);
— synonyms and semantically similar words should also be checked (Big father — Big dad).
- Can a multi class trademark application be filed in Ukraine?Yes, according to the legislation of Ukraine you may file trademark applications with indication of any desired number of classes of the Nice Classification. Still please note that the amount of official fees depends on the quantity of classes as well.
- What is the cost of a trademark registration?The cost of a trademark registration in Ukraine depends on several factors, such as the number of classes in which the registration is required, is it a color or a black-and-white designation. Please contact us for more detailed information.
- Can a trademark registration procedure be accelerated in Ukraine?Yes, a trademark registration procedure in Ukraine may be accelerated by ordering corresponding service on the expiry of three months after filing. Thus, the Trademark Office will examine an application and issue a decision in a short time frame, namely approximately within three months after payment of the acceleration fee. In case of positive decision, official registration and publication fees are to be paid, after which the registration certificate is issued.
- What is a non-use cancellation?According to the legislation of Ukraine, a third party may file a request for total or partial cancellation of a mark that has not been used for any period of five consecutive years after publication.
- How many times can a trademark be renewed in Ukraine?Trademarks in Ukraine may be renewed every 10 years as many times as needed upon payment of corresponding fee.
Please contact us for more information about trademark registration or quotation for filing and prosecution of a trademark application in Ukraine.