Trademark Registration Procedure Overview in Ukraine

1. OVERVIEW OF TM REGISTRATION PROCEDURE
IN UKRAINE

2. PROCEDURE OF TM REGISTRATION IN UKRAINE
COMPRISES THE FOLLOWING STAGES
• Preliminary Search (optional, but strongly recommended).
• Filing a Trademark application.
• Formal Examination.
• Substantive Examination.
• Registration and Publication of a Trademark.
• Renewal of a Trademark.

3. 1. PRELIMINARY SEARCH
• A trademark search is the critical legal stage in the process of selecting a new mark among
candidates. The search allows trademark lawyer to conduct legal analysis and to determine
whether a mark is available e.g. registrable. Trademark search is a little investment will save
you a lot of time and money later on.
• Searching trademarks is easier said than done, however, since there is no single source that
lists every unregistered mark in current use in the Ukraine. There are many sources potentially
contains tones of critical information must to be searched, and it is not economical to try to
process them all. Thus, Bragarnyk & Partners conducts such searches using as conventional tools
(PTO sources) and its own processes value added (such as Pharmascan) allowing our clients to
see generalized landscape of the of the names and images.

4. 1. PRELIMINARY SEARCH
• A trademark search is the primary means for assessment of risks and
possibilities. A trademark lawyer uses the search as a tool to determine, with
high confidence, whether the proposed mark is likely to be confused with a
mark in of another entity already registered or used.
• In addition, a proper availability search and further analysis answering
whether proposed mark is distinctive and protectable and respectively –
registrable.

5. 2. FILING A TRADEMARK APPLICATION
• According to the Ukrainians Law filing fee depends on:
1) number of applicants (if application filed by one or several applicants);
2) number of Nice classes;
3) claiming color;
4) the selected registration procedures;
*The official fee for filing application must to be paid within 2 months¹ from the date of
filing. In case of failure to pay of this fee in above said period, application is
considered withdrawn.
1) This grace period could be extended for six months for additional fee.

6. 2. FILING A TRADEMARK APPLICATION
• There are the three TM registration procedures differentiating by time and costs:
1) Standard procedure - takes in average 14 months.
2) Accelerated procedure (after six mounts from filling date) - it takes in average 10
months.
3) Accelerated procedure (before six mounts from filling date) - it takes in average 5
months.
In order to use the accelerated procedure applicant have to file special petition to the
PTO and pay official fee.

7. 2. FILING A TRADEMARK APPLICATION
• After payment of the filing fee PTO confirms taking application into consideration,
and establish filing date of application (normally, in 2 weeks from the date of
payment fees).
• The filing date is important because it establishes priority of given application over
other applications with later filing date. So, if an application filed after given is likely
to cause confusion with yours, that application will be blocked, or, technically,
suspended, until application either registering or deemed abandoned.

8. 3. FORMAL EXAMINATION
• After the filing date established, the Formal Examination started. It is carried out to
ensure satisfaction the formal requirements set out to application for registration of a
trademark.
• Experts verified accuracy of application materials and their compliance with the Law
and checks compliance of the claimed list of goods/services to the Nice Classification.

9. 3. FORMAL EXAMINATION
• In case, if the application materials inadequacy of the requirements established by
the Law, Institution of Examination sends the official letter with invitation to make some
corrections or reformulate list of goods/services.
*Within two months¹ the applicant allowed to correct mistakes or make a clarification in
the application.
1) This grace period could be extended for six months for additional fee.

10. 4. SUBSTANTIVE EXAMINATION
• Once the examiner decides that the application complies with formal requirements, a
substantive examination will began. Substantive examination is the examination
carried out to determine whether the application meets requirement set out for
registration of a trademark.
• During the substantive examination, the claimed denotation shall be examined on the
does not falling to grounds for refusal and conformity with the requirement for
granting the legal protection defined by the Law. In this case, PTO`s database, of
registered marks and filed applications, as well as external information sources and
relevant official publications are studied.

11. 4. SUBSTANTIVE EXAMINATION
• If there are reasons to consider that the claimed sign does not meet fully or partially the
requirements for granting or it is likely to cause confusion with another mark that is already
registered, the institution of examination shall send to the applicant the motivated preliminary
refusal with the proposition to give a motivated answer to support the registration of mark.
• In order to attempt to overcome the rejection, Bragarnyk & Partners research, prepare, and
submit arguments and evidence to the PTO pointing out all of the differences between the
two marks and detailing why the trademark application should be approved.
*Response must be filed within two months¹ from notifying the motivated preliminary refusal
against a trademark application.
1) This grace period could be extended for six months for additional fee.

12. 5. REGISTRATION AND PUBLICATION OF
TRADEMARK
• After the receipt of the positive decision of the substantive examination applicant
paying the official fee TM Certificate and the publication fee, so registration appears
in PTO`s Register of registered trademark in Ukraine.
• Information about granting TM certificates are published in the official bulletin.
• Applicant have to pay the official fees mentioned above, within three months¹ from
receipt of the positive solution of the substantive examination. In case of failure of this
fee, application is considered withdrawn.
1) This grace period could be extended for six months for additional fee.

13. 6. RENEWAL OF A TRADEMARK
• The validity period of the certificate in Ukraine is 10 years from the filing date and
this term could be extended for 10 years each time in case of filing the petition for
renewal the trademark and paying official fee.
• Applicant have to payed the official fee for renewal before expiration date¹.
1) This grace period could be extended for six months for additional fee.

14. THANK YOU FOR ATTENTION