Register a trademark in Ukraine

How to start a trademark registration?

The last few years, the issue of trademark registration in Ukraine arises when it is necessary to register a second-level Ukrainian domain name. Let me remind you: to register a domain name .UA, you must have a trademark that has protection in Ukraine.

Hereinafter, the terms “mark for goods and services”, “trademark” or “service mark” will be used - all of these terms are synonymous with the term “brand”.

Before you start registering a trademark, you should think about exactly what goals you are pursuing when protecting your mark. Today we are considering an example of registering a name to protect your business with the subsequent registration of a second-level domain name .UA
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Remember: a trademark protects the name of your business first! (The name also refers to the logo or other distinctive component)

What is a trademark?

A trademark is a text, picture, or combination thereof that distinguishes your products or services from those of your competitors. Trademarks also come in other forms, for example: a sound, a volumetric object, a smell, a moving image, or combinations thereof, but today we are considering traditional types of trademarks, i.e. text, image, and combinations thereof.

What criteria should the registered mark meet?

• It must be unique for a particular type of product or service.
• The mark must not contain national symbols, such as the coat of arms, flag
• The mark must be faithful.
• The designation should not be misleading.
• The mark must not violate ethical principles.

What does it mean to be “unique” for a particular type of product or service?

You register your name or image and if it looks like your competitor, then at least you will be confused, but in this case, most likely, you will not be able to register the brand and receive a refusal to register it. When I say that a sign should be unique, I often get MTS trademarks as an example - one of which we know well, and the second one we know only because it owns the domain “mts.ua”.

Yes, the sound of these trademarks are similar, but they identify different businesses, which is why they can exist simultaneously. The main principle of the simultaneous existence of two almost similar trademarks is a distinctive ability, in other words, the consumer should not confuse them.



So, the MTS trademark, which we know more, represents mobile communication services, and the MTS trademark, which owns the UA domain and which we know less, deals with materials testing (for example, metal testing for breaking or strength).

You must understand that similar and even identical trademarks may exist, but only if they identify different types of activities and do not mislead the consumer.

Proceeding from this, before registering a trademark you must think and answer yourself the question: is there a trademark similar to the one you are registering?

If you are not 100% sure that your trademark is unique - use the preliminary search service of patent attorneys. Such a search will give you the maximum guarantee that during registration there will be no surprises. The cost of a preliminary search on average is 100 USD and order it here .

What is meant by a bona fide sign?

I will give an example: if the MTS trademark were registered only in order to obtain a domain name and this can be proved in court, then such a sign can be considered unfair. Those. it can be proved that the mark was registered for the purpose of “making money” on a well-known brand.

Recently, we often hear in the news that some company has sued your domain. With regard to trademarks, the situation is similar, but recognizing a trademark as invalid is much more difficult.

There are examples: the registration of Ukrainian trade marks Yahoo, ICQ, UGMK has already been recognized as invalid. These marks belonged to individuals who registered them to register a .UA domain. Also now in the process of invalidation are several trademarks, the most famous of which is the mark by which the Google.ua domain has been registered.



Examples of unfair trademarks that I just mentioned (the signs belonged to private individuals):



But in the database of Ukrpatent there are other brands that raise doubts about their fair registration, for example:



Above, I said that the trademark "ICQ" was canceled, but as you can see, this did not prevent to get the domain icq.ua.

The designation also should not be misleading. And again, I will give an example:
By brand:



The skype.ua domain has been registered and this action is already misleading the consumer, as he believes that this domain belongs to a world-famous company, but the brand and domain are registered to a relative of the patent attorney of Ukraine ...

Another example of misrepresentation is, for example, the registration of the sign “Bobby - a plastic toy” in a class that refers to materials made of metal. Such a sign you simply will not register, it will not pass the examination in Ukrpatent and will be recognized as one that is misleading at the registration stage.

How can a sign violate ethical principles?

The sign depicts pornography, profanity is present, as well as foreign words that sound so that they can be perceived incorrectly.

For example, there was a refusal to register a PONOS mark for a foreign medicine, since it means the medical term “diarrhea”. The foreign applicant was given an explanation of why the refusal was being passed and he agreed that it was not worth registering such a sign in Ukraine. By the word PONOS, a foreign applicant meant the Greek god of hard labor “Πόνος”, and the medicine was supposed to improve a person’s well-being while performing hard physical work.

Decide which sign to register and for which goods and services.

Signs are textual, pictorial and combined. They can be recorded in color as well as color. Be sure to check the domain for the possibility of registration, including using the whois service. In case the sign is not in Latin letters, also check the transliteration on the domain administrator’s site.

The amount of state fees may also vary depending on which particular sign you register. So, for example, if your sign is recorded in color, the cost will increase by at least 500 hryvnia (about $ 60). We will consider the simplest example of registering a mark, namely: a text mark with no color limitation.

Goods and services are selected in accordance with the international classification of goods and services (ICTP). The qualifier can be found on the World Intellectual Property Organization website. The corresponding versions in Ukrainian and Russian can be found on the websites of Ukrpatent and Rospatent .

Remember: the more classes MKTP is indicated in the application - the higher the cost of applying for the registration of the mark. Currently, the state fee is 1000 hryvnia (about $ 125) per class.

Let's start filling out the application

To the attention of non-residents of Ukraine: applications from non-residents are accepted solely from patent attorneys, so if you are not a citizen of Ukraine, you do not need to fill in the application yourself. The patent attorney will correctly complete your application and take into account all the nuances. Certificate fees for non-residents are also different.

An application is a document in which the data of the applicant for registration of the mark, the representative of the applicant, the priority of the mark, the mark itself, the description of the mark and the classes of goods and services for which the mark will be protected are indicated. Download the application form here . The application is printed on one sheet from two sides.



Next to each field its number is indicated, and further in the text field numbers will indicate field numbers in the application. So, fields 220 (Application filing date), 210 (Application number), 511, 531 - you do not fill in, these fields are filled by an employee of the department.

In field 731, the Applicant is indicated in the Ukrainian language, as well as the address of his residence permit in accordance with the passport data. The applicant is the future owner of the trademark.

Example of filling for an individual:


It is necessary to fill in the Ukrainian language, in the same manner as indicated in the example.
The country is indicated in two Latin letters in accordance with WIPO Standard ST.3 .
If the applicant is a legal entity, the OKPO code is also filled out.

Example of filling for a legal entity:


Further, the application provides fields 310, 320, 330 and 230 which indicate the priority of the application. If you want to specify a priority, consult a patent agent. In a typical case, these fields are left blank.

The 750 field indicates the address of the correspondence with the applicant or representative. If the field is left blank, the correspondence will be conducted to the address specified in field 731 (letters will be sent directly to the applicant). Field 740 is intended to indicate a representative. In the example, the patent attorney of Ukraine number 366 is indicated as a representative.

At the bottom of the first page of the application, the image of the mark is indicated (field 540), the description of the mark, the color in which the mark is served, and the type of the mark is also marked. In our case, we mark field 541 - this means that simple text is used in the sign, in this case field 546 is not marked. On the right, as an example, we indicate the image of the ІMU trademark, and on the left side - its description (in the example, the conference “Internet Marketing Ukraine” , on which this article was presented).

In the description it is necessary to indicate as clearly as possible what word and what symbols are used in the sign, if there is an image in the sign, then the image should be described. Below, in the field 591, indicate the colors in which the image is served. Colors can be indicated in simple words or by numbers of pantones. In our case, we do not limit the sign to colors.

Example of filling fields 750, 740, 540, 541, 546, 591:



On the second page of the application, in field 511, the classes of goods and services for which the mark protection is necessary, as well as the list of goods and services are indicated.

For our example, 41 classes are suitable for which “education; provision of educational process; entertainment; organization of sports and cultural and educational activities.

It is necessary to choose and indicate which services of 41 classes we will protect in our sign.



Also, 35 class is suitable for “ІMU”, which should be indicated if advertising is also carried out. But in our example, we limit ourselves to only 41 classes.

If you do not have all the goods and services on the second page of the application, you need to issue an annex to the application, which indicates the full list of necessary goods and services.

Further we specify all applications to the application.
In our case, the fields are filled as follows:



You can pay the application directly at the Ukrpatent checkout before you register the application. If you want to pay in advance, you can find out the details for which you need to pay the application on the website of Ukrpatent. Also, you can submit an application without paying a fee and the request for payment will be sent to you by mail by Ukrpatent.

A set of photocopies - for our sign - it is 6 paper squares, measuring 8x8 centimeters, which shows our sign "ІMU". If the mark is filed in color or is combined, 10 copies of the mark are attached.

Fields that are located below (390, 554, 551, 646, 641) in a typical situation are not filled in, but if you are sure that they should be filled in, contact a patent attorney for help.

At the end of the second page, the applicant or representative must sign, indicate the name and initials of the signer, as well as the date of signature. The seal is placed in the event that an authorized employee of a legal entity is signed.

So, the application is ready

It remains to come to Ukrpatent at Kiev, st. Glazunova, 1 - not far from the Pecherskaya metro station and submit documents. Documents are accepted on the first floor of the Ukrainian Institute of Industrial Property (Ukrpatent).

If you do not want to go, documents can be sent by mail: st. Glazunov, 1, Kiev, 01601.

After receiving the documents, the trademark undergoes several procedures, as a result of which a decision is made to register the mark or to refuse to register the mark. On average, this process lasts 18 months.

The Ukrainian trademark can be obtained much faster, for example, in 3 months or in 9 months. However, the acceleration procedure includes many nuances that you cannot describe with several sentences, but I am always happy to help you.

The article was prepared by the patent attorney of Ukraine, Andrei Hvetkevich .
Official website: vlasnyk.ua