Refusal to register an international trademark in Ukraine

Preliminary Refusal of International Trademark Registration in Ukraine

International trademarks are examined by the Patent Office of Ukraine according to national legislation.

A refusal to register a trademark in Ukraine can be issued based on various grounds, including:

• The trademark contains state symbols or awards;
• The mark lacks distinctiveness, is generic, descriptive, misleading to consumers, represents only the shape of the product, unregistrable plant varieties, or geographical names;
• The mark is identical or similar to earlier trademarks, trade names, certification marks, or if the application was submitted by a «trademark agent» of the owner in another country;
• The trademark depicts patented industrial designs, names, quotes, fragments, or characters from famous works of science, literature, or art without the consent of the authors (copyright holders); surnames, first names, pseudonyms, and derivatives, portraits, or facsimiles of famous people in Ukraine without their consent;
• The mark contains communist, Nazi, totalitarian, or Russian symbols.

Appeal: Objection to Trademark Registration Refusal in Ukraine

The first refusal is considered preliminary. An appeal against the first refusal can be submitted to the Patent Office of Ukraine, along with substantiated arguments and evidence, within 2 months. This period can be extended by 6 months for an additional fee.

An appeal should include arguments and evidence that can convince the Patent Office to grant the trademark registration.

The appeal may include:

• Exclusion of certain goods or services that are in dispute;
• Comparative analysis of the sound, visual, and conceptual characteristics of the opposed trademarks and the applied mark;
• Proof of good-faith use of the brand in Ukraine;
• Evidence of the distinctive features of the trademark;
• Other relevant information.

If the appeal is not submitted on time or does not satisfy the state examination, the Patent Office issues a second final refusal to register the trademark. The second final refusal can be contested in the Appeals Board of the Patent Office of Ukraine or in court.

Non-residents of Ukraine must submit appeals to the Patent Office through a Ukrainian patent attorney.

Cost of Patent Attorney Services for Trademark Refusal Appeal in Ukraine

• 600 USD – Minimum fee for representation, preparation, and submission of the appeal (2 working days), for example, when opposed by one trademark;
• 300 USD – Fee for each additional working day of the patent attorney, for example, for document search and preparation, or when opposed by two or more trademarks, and other similar cases;
• 8 USD per 100 words for translation of documents from or into English.

There are no state fees for submitting the first appeal.

To extend the response period to the preliminary refusal by 6 months or to restore the deadline for submitting the appeal within 6 months, the fee is 150 USD.

Registration of a trademark in Ukraine. A non-resident of Ukraine

Contact

Mr. Stanislav Sukharev, Patent Attorney of Ukraine No. 427
Email: patent@unite.ua
Email: patent@unite.com.ua