registration of trademarks outside of Ukraine

There are several ways and procedures for registering trademarks outside of Ukraine.

International registration of trademarks under Madrid Agreement

To overcome the formalities and inconveniences in the trademark registration separately in each country, it has been developed an agreement signed 04.14.1891 in Madrid called “the Madrid Agreement Concerning the International Registration of Marks.”

Ukraine is a member country of the Madrid Agreement.

Under the terms of the Madrid Agreement the application for the international registration may be filed if the national registration (certificate for trademark) exists.

The term of validity of an international registration usually is 10 years. It can be renewed indefinitely on payment of additional fees.

In each designated country the legal protection is equal as if it had been filed directly therein.

The registration may be designated to any countries.

Benefits of International Registration of Marks:

  • filing one application, in one language;
  • paying one set of fees for the uniform application;
  • possibility to protect your mark in the territories of up to 97 members;
  • manage the marks’ portfolio through one centralized system.

The IP Offices of the designated territories will make a decision within the time limit from 12 to 18 months. WIPO will record the decisions in the International Register.

If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect the decisions of other IP Offices.

Provisional refuses in some cases may be overcome by filing a review to the Office action.

If an IP Office accepts to protect your mark, it will issue a statement of grant of protection.

Trademark registration in the European Union

The European Union comprises 27 countries: Austria, Belgium, Bulgaria, Hungary, Germany, Greece, Denmark, Ireland, Spain, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Finland, France, Croatia, Czech Republic, Sweden, Estonia.

Methods for trademark registration in the European Union countries:

  • registration of TM in one or several countries according to the national procedures;
  • registration of TM according to the Madrid Agreement and Protocol Concerning the International Registration of Marks in the countries of interest;
  • registration of the trade mark of the European Union (EUTM).

EUTM trade mark gives its holder protection in the 28 Member States in one single registration.

Filing and registration is carried out at the European Union Intellectual Property Office (EUIPO).

Benefits of registering a EUTM:

  • a single registration is valid in all EU Member States;
  • it gives its owner an exclusive right in all current and future EU Member States at a reasonable cost;
  • you can enforce your trade mark in a market of almost 500 million consumers.

However, if at least one EU country refuses to register a trade mark will not be registered in the European Union.

EUTM registering procedure:

  • filing application at EUIPO: it should contain a request for application, a correctly identified owner, a clear representation of the mark and a list of goods and services. Payment of the basic fee must also be made within 1 month of the filing date;
  • formal examination: the signature, languages, owner and/or representative data, priority and/or seniority claims are all reviewed. EUIPO checks whether there are absolute grounds for refusal (for example, if a mark is descriptive or is not distinctive). EUTM does not conduct substantive examination;
  • if search is requested by an applicant, EUIPO carries it out. The search results are sent both to the applicant and the cited marks’ owners for information purposes only. The EUIPO has no right to reject the EUTM application based on identical or similar marks revealed by the search;
  • in case of positive result of the examination, the information on the application is published in the EUTM Journal;
  • from the date of publication onwards, third parties who believe the applied EUTM should not be registered have 3 months to object;
  • if no objections are received, or if the filed objection results are positive for the applicant, the trade mark is registered. The registration is valid in all EU Member States.

EU trade mark must be put to genuine use in the European Union in the five years following its registration, otherwise it could be cancelled.

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