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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