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Trademark registration: preliminary search and preparation for registration

Trademark (mark for products and services) – is a priceless part of the company’s prestige, because it allows identifying you and your goods on the market of goods and services, and often is the most valuable intellectual capital of successful business. Therefore, trademarks of some manufacturers can be much more expensive than the entire available property complex, whereas trademark includes business reputation which is a part of the brand. Among the most expensive trademarks in the world, which occupy the highest places are the following: General Electric, the value of TM reaches up to $30 billion, Pampers (~ $ 24 billion.), Loreal (~ 24 $ billion.), Colgate (~ $ 18 billion.) Siemens (~ $ 16 billion.) and others.

Trademark registration provides opportunity to protect from unscrupulous market participants which use popularity of famous brand with a view to profit.

The following notations may be registered as a trademark:

  • Verbal – in the form of words or combination of letters;
  • Pictorial – in the form of graphic compositions;
  • Volumetric – in the form of figures or their compositions in 3D dimension;
  • Combination of abovementioned notations.
  •  Sound, optical marking or color, or combination of colors.

In practice, the most often types of registered trademarks are: verbal, pictorial and combined (verbal-figurative) notations in color gamma or in black & white format.

Stages of trademark (notation) registration:

  • preliminary search for the identical or similar marks as to the same or similar products or services (classes);
  • preparing an application for registration of mark for goods and services, that consists of:

– application for registration;

– depict of the notation;

– selection of class, which the mark is registered for, from the list of goods and services under the International Classification of Goods and Services (ICGS);

– payment of state fees related to registration;

– also can be added an application on establishment of priority if the applicant wants to use the right of priority under the Paris Convention or document, that confirms a demonstration of an object with usage of the applied trademark at the exhibition, which took place before the filing application, certified by organizer’s administration or committee;

– submit an application to state agency (Ukrainian Institute of Intellectual Property);

– examination of an application for registration whether the accompanying documents  meet the requirements of the law;

– qualifying expertise on whether such notation meets the requirements of the law and whether it does not violate the rights of other ones;

– decision on mark registration and payment for state fees for issuance of the certificate or a decision on cancelation of trademark registration;

– registration of a trademark and publication an appropriate information in the State Bulletin.

Standard trademark registration period under Ukrainian national procedure is 12 – 18 months, but there is possibility of express registration – 7-9 months or 4.5 – 5.5 months. The express procedure requires payments for additional fees in calculation for each subsequent class (type of goods or services), depending on the chosen period.

In addition to the National trademark registration procedures, a trademark may be registered under the Madrid system, in several countries at the same time. To register under this system the applicant has to complete national registration of trademark or submit an application for registration in the country of its origin.

Upon application submitting the countdown begins which means that trade mark shall be considered as directly protected by law.

Cratia provides services in organizing the process of preliminary examination and support while all period of registration of trademark until the moment of certificate receipt. We will provide consultations within the registration process, explanations and answers to the comments and remark of experts of state bodies and institutions. For this purpose we have the necessary experience and our own proven practice. Consultations are free, so please contact us by email: info@cratia.ua, please call for +38 (044) 332-42-94, 221-71-29 or come to the meeting directly to our office!