IN in connection with the full-scale invasion, many, unfortunately, transfer their production and business abroad. In this connection, questions arise: having a trademark in Ukraine, is the business protected in other countries?
And someone, on the contrary, in spite of everything opens new businesses in Ukraine, but even for them the question of other countries remains open: to whom to register? how to protect Are trademarks registered at all at this time?
The following is an article on how to protect yourself in the countries you need.
Territorial restrictions
A trademark is protected only in the territory where it is registered. Therefore, for protection, it is necessary to choose the countries of interest. At the same time, you can go in different ways. Depending on the selected countries, there are several options:
📌 TM registration in each selected country separately;
📌 registration of a single EU trademark;
📌 international registration according to the Madrid Agreement and the Protocol.
In addition to the territory, the scope of legal protection of a trademark is limited to the image that is claimed and the goods or services for which it is registered.
Regarding the image
It is possible to register word marks, including proper names, letters, numbers, pictorial marks, combined (word + image), as well as non-standard TMs: volume, color as such as TM, sound TMs. I will say right away that not all countries can register any of the TMs listed above. It is necessary to look at the legislation of the chosen country.
Regarding classes
The international classification of goods and services includes 45 classes: 34 classes of goods and 11 classes of services. Before registration, you should consider not only what products/services are provided now, but also think about the future: what will happen in 3-5 years. Because nothing can be added to the submitted application. New goods or services are a new TM registration.
Color. If it is of fundamental importance to you, the trademark is registered in the colors of your choice. If this is not a fundamental issue, I advise you to register the TM without declaring the color (i.e. black and white version). Such registration will extend to use in all colors. of martial law, the deadline for submitting a notice of CIC will be 54 days.
1. Registration in Ukraine.
If a trademark is registered according to the usual procedure, the term of registration is 1.5-2 years. There is an acceleration procedure and in this case TM is usually registered for 7-9 months. But now, in connection with the entry into force of Law No. 2174-IX "On the Protection of the Interests of Individuals in the Field of Intellectual Property During the Martial Law Introduced in Connection with the Armed Aggression of the Russian Federation Against Ukraine," there may be delays in the accelerated procedure .
The application can be submitted both on paper and electronically. When submitting electronically, a discount is given on the fee when submitting an application in 20% (the full fee starts from UAH 4,000, when submitting an electronic application - from UAH 3,200).
2. Registration in Europe
There are three ways of registration, you can choose one of them:
1. Registration separately in one of the countries according to the national procedure. This procedure is suitable if only one country is of interest. If there are two or more, I advise you to use the International registration, which will be discussed below. It will be more economical.
3. Registration of a single EU trademark, which is immediately distributed to all 27 countries (at the same time, we do not forget that Britain is no longer a member of the EU and this registration does not apply to it).
The advantages of such registration are:
📌 submission of one application in one language (expenses for translators are waived);
📌 relatively inexpensive, compared to other procedures, fees: 850 euros in one class + 50 euros for the second class, 150 euros for the third.
Cons:
📌 if there is a refusal to register in at least one of the countries, there is an automatic refusal in the entire territory of the EU;
Registration period is 5-7 months.
4. International registration according to the Madrid Agreement and Protocol.
If you do not need all EU countries, or vice versa, you need some other countries besides the EU, it is more profitable to use this procedure.
Benefits:
📌 A single application in a "single window" in one language;
📌 Financial benefit compared to registration in each individual country.
Fees start at 753 Swiss francs + 100 Swiss francs. francs per country, if there are no individual fees and duties.
Cons:
📌 For filing, a mandatory filed trademark in Ukraine, as in the country of origin, or an already received certificate is required;
📌 There is a 5-year dependency on the national (Ukrainian) application. If something happens to it during this period (registration is refused, the certificate is canceled or suspended, etc.), it will lead to the automatic loss of International registration.
3. Registration in the USA
It is possible to submit both directly to the US Office, if only this country is of interest, and according to the Madrid Agreement, including this country in the list of countries that must have protection.
Features:
In order to file a trademark in the US, you must have grounds for filing an application for registration, what does this mean?
📌 Either there is already use of such a TM on the territory of the USA or the applicant has such an intention (the intention is not just in words, you sign a document in which it is declared);
📌 Have a trademark in another country;
In addition, the application must contain clearly identified goods and/or services that are planned for use or already in use. Unlike Ukraine, for example, you cannot apply for registration of goods of an entire class with the thought: maybe they will agree? It is necessary to clearly work out this issue, because after 5 years after filing, it will be necessary to document such use. And then - after 10 years, and then - every 10 years with extended certificates.
The term of registration is from 8 months, the cost of fees is from USD 225. But add here the services of an attorney, because from 2019, non-residents can apply for trademark registration only through attorneys.
4. Registration in the world
Very often, entrepreneurs and business owners have a desire to get a trademark all over the world. This is theoretically possible, but not quite expedient. First, it will be quite an expensive pleasure.
Secondly, if the TM is not used within 5 years (usually), then a third party can legally terminate the validity of such registration due to non-use.
Therefore, if you want to register a TM in many countries, the International Registration under the Madrid Agreement and Protocol, which currently covers 128 countries, will help. In countries where this agreement does not apply, registration is possible only according to the national procedure.
When registering a trademark, choose the path that best suits you.
Alina Seroshtan-Tatarinova, pattentive lawyer, lawyer, advisor of Bargen Law Firm, CEO of patent and legal studio "Black&White"
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