Trademark registration. Answers to the most common questions

We will answer the most frequently asked questions about trademark registration in the given article.
Who can be a trademark owner?
The Civil Code of Ukraine determines that natural and legal persons are subjects of intellectual property right to a trademark. Thus, one or more individuals, one or more legal entities, or even both physical and legal persons may be trademark owners. It is important to emphasis that private entrepreneurs cannot be trademark owners. If private entrepreneur  wants to have a trademark, he can apply for its registration as a natural person and use it in his business activity.
Another commonly asked question is whether it is better to register a trademark for a natural or legal person. In our opinion, the first option is more optimal as a legal entity can be reorganized in different ways unlimited number of times, And in such case trademark owner will still be the same.
However, if a natural person is a trademark owner, but the trademark is actually used by a legal entity, we recommend to conclude a license agreement between such persons. Because according to the current legislation of Ukraine if a sign is not used within five years completely or partially, any person has the right to apply to court in order to terminate the certificate.

  1. Which trademark is better to register – in color or black and white?

First of all, it should be noted that the trademark can be registered with indication of color (a colorful trademark), or without color indication (not black and white, because in this case we indicate that black and white are the colors in which the sign is used). Today if a trademark is registered without color indication, it can be used in any color.
In addition, registration of a mark without color indication gives its owner the right to prohibit the use of this mark in any color.
Moreover, in this case the fee will be somewhat lower, as it will not be necessary to pay an additional fee for registration in color.
When it is appropriate to register a trademark in color? For example, if there are similar registered trademarks and there is a need to personalize your own sign.
The ideal option is to register a trademark both with and without color indication. However, in this case it is recommended to assess the value of such object of intellectual property in order to find out whether it is worth to perform such double registration.

  1. How long does it take to register a trademark?

Trademark registration usually takes about eighteen months. However, in practice, registration becomes more time-consuming, as the number of applications increases every year.
If certificate  issuance is an urgent issue, it is possible to order Ukrpatent’s service of  accelerated registration. In this case, the term of registration takes approximately eight months. However, such service is payable and additional fee is charged.

  1. From which moment a trademark can be used?

Trademark can be used since its creation. However, a trademark is protected only after its registration. Therefore, if you use a certain mark to indicate your own goods and / or services without registration, another person can register your sign. In this case, you can only receive the status of a previous user.  That is, you can use your trademark for goods and services independently, but you will not be able to allow or prohibit such use for others. In order to avoid this situation, we recommend to file for trademark registration before market entrance. For example, from the moment you receive a document from Ukrpatent specifying the date of receipt of the application. Since then if another person submits a similar sign for  registration, you as the first one who applied will receive the certificate.
Oleksandra Petrenko
Senior associate at Attorneys at law «Bachynskyy and partners»]]>

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A new law on virtual assets: the picture is formed, but without details. On September 8, 2021, the Verkhovna Rada has finally adopted the long-awaited law "On Virtual Assets", which clarified many ambiguous points. This is especially true for the status of cryptocurrency and the rules of its circulation in the country. Let`s take a closer look at novelties. An ambiguous term Let's start with what the legislator actually means by "virtual assets". There are the following features:  they are an intangible good (cannot be represented on tangible media)  fall under the list of objects of civil rights (that is, they can be owned and be disposed of)  represent an electronic form of a set of data (essentially, they are blocks of information put in order);  the existence and circulation of assets are due to software tools (specific electronic environment). From these features we can draw the following conclusion: virtual assets are not limited to cryptocurrency. Digital currency is part of the concept, but other instruments, such as tokens, NFTs, or even in-game items, fall under the definition. Actually, the actual existence of most digital products, having a certain value, is due to the software environment (ecosystem), either it is blockchain technology, a trading platform, or an online game server. It should be noted that the attempt to define virtual assets was already made in the adopted Law of Ukraine in counteracting money laundering. In this act, they understand it as digital means of payment, which goes against the new definition. As a result, there are now two different explanations for virtual assets, which causes significant confusion not only in regulation but also in interpretation. It is definitely necessary to expect clarifications from competent state bodies. Let's return to the new law. Its application covers legal relations in which the "Ukrainian element" is present:  provider or recipient of services represented in Ukraine;  an agreement according to which the turnover of virtual assets is carried out in accordance with Ukrainian legislation;  the acquirer of assets (or both counterparties) is a resident(s) of Ukraine. The law also introduces an interesting division of all virtual assets into two groups: secured and unsecured. Here again, there is a problem of interpretation. The first category includes products exchanged for (state) currency, the second category includes instruments that can be exchanged only for other digital assets. There is an alternative opinion: that the turnover of secured assets is supported by real goods (money or other property), while unsecured ones are not supported by anything. The latter interpretation is the most credible, as the new law stipulates that virtual assets are NOT means of payment. Moreover, they cannot be exchanged for real goods, be they property, services or money. This significantly narrows the potential for the use of virtual assets not only for commercial but also for civilian purposes. About obligatory licensing The new law states that in some cases, the use of virtual assets will require licensing. The 4 types of activity are mentioned:  storage and management of virtual assets (or its` keys)  servicing of exchange operations with virtual assets (both for other analogues and for real goods);  translation of digital assets;  any intermediary services. A list is quite impressive, but there are some important exclusions:  if your service works with cryptocurrency wallet (it means users can dispose of accumulations into cryptocurrency independently);  If your service works on smart contracts or decentralized protocol, based on which internal transfers are performed. As to intermediary services, everything is more compicated. Actually, any mediation is based on the public share offering. That is why it is subject to licensing. How to get a license? A company that wishes on legal grounds to engage in virtual assets must satisfy legislative requirements. The key role is played by the minimum amount of the statutory capital, which equals 1,19 million hryvnyas (for non-residents it is 5,95 million hryvnyas) in case of storage and administration. For other types of activity (trading, translation and mediation services) the minimum size of the statutory capital amounts to 595 thousand hryvnyas (for non-residents is 2,98 million hryvnyas). The order of the registration of license:  to compose an application and prepare documents.  to pay state fee (68-136 thousand hryvnyas for residents and 340-680 thousand hryvnyas is for non-residents).  to pend review of the request (30 days).  to get a license. The duration of the license is 1 year. 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20/01/2022

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