Once you’ve decided to do business in Ukraine, you should secure your Intellectual Property (IP) rights for the trademark through a proper registration. With a few exceptions, Ukrainian law protects trademarks only when the owner has the proper registration certificate. Unless you want to risk cheap knockoffs of your goods or services flooding the market, you’ll want to spend a few dollars to protect your IP.

A trademark is a sign or combination of signs that distinguishes your goods and services from those of other producers and service providers. Ukrainian law secures legal protection of intellectual property rights for trademarks in accordance with its law “On Protection of Rights for Signs for Goods and Services” and other related legislative acts. Ukraine is also a party to the Paris Convention for the Protection of Industrial Property and the Madrid Agreement Concerning the International Registration of Marks.

To enjoy legal protection of your trademark rights, use it freely to mark your products and prohibit others from use of your trademark, you have to register the trademark with the State Enterprise “Ukrainian Intellectual Property Institute” (the Ukrpatent). However, business entities have intellectual property rights for their commercial names without obligatory registration.

Trademarks can be registered by both individuals and legal entities, and by both residents and nonresidents. If your trademark is unique and conforms with the below-mentioned requirements, you may apply for registration of your trademark to the Ukrpatent.

Ukrainian residents and legal entities that are registered in Ukraine may either apply for registration of a trademark on their own or hire a certified Intellectual Property Representative (patent attorney). If you apply as a foreign individual or a legal entity that is registered overseas, you have to apply for registration through a certified patent attorney (unless otherwise prescribed by an international treaty).

Key requirements & limitations of registration of a trademark

Under Ukrainian law, a trademark may consist of words, letters, numbers, flat or 3D graphic compositions and colors (as well as any combination of them). However, there are a few limitations.

You can register a trademark provided that:

• it is not identical or confusingly similar to marks that were earlier registered or submitted for registration in Ukraine by another person or entity for related goods and services;
• it is not protected without registration under the provisions of international treaties, to which Ukraine is a party (the trademark can be recognized as “well-known” in accordance with article 6 bis of the Paris Convention for the Protection of Industrial Property by the Appeal Chamber of the Ukrpatent or through court);
• it is not the name of an existing company owned by another party that provides related goods and services;
• it is not a qualified mark of origin of goods (which are protected by different legislation, the law “On Protection of Rights for Indication of Origin or Goods”); however, place of origin of goods may be a part of the trademark providing that the producer of goods is entitled to mention place of origin;
• it is not a duly registered conformity mark (certificate mark);
• it is not an image of a utility model that is registered by a third party;
• it does not contradict the public order, human and moral principles, and contains no communist or Nazi symbols;
• And it has none of the following features:
  1. consists exclusively of signs that are descriptive, for example, indicating the type, quality, quantity, or the place and time of manufacturing or sale of goods and rendering of services;
  2. has no distinguishing capacity and has not achieved it within its previous use;
  3. consists exclusively of signs that are commonly used as the signs for this type of goods and services;
  4. is deceptive or misleading;
  5. consists exclusively of commonly used symbols and terms;
  6. reflects only the form caused by the natural state of goods.

Additionally, note that the following words or symbols may not be registered as trademarks themselves. However, in certain cases, you may include them in the trademark subject to a written consent of authorized state bodies or their owners (their legal successors):

• national emblems, flags and other state symbols;
• official names of states;
• emblems or abbreviations or full names of international intergovernmental organizations;
• official control, guarantee or hallmark seals or stamps;
• honors and other awards;
• names of works of science, literature or arts known in Ukraine, or quotation or character thereof;
• names, surnames, pseudonyms, portraits and facsimiles of personalities known in Ukraine.

While applying for registration of a trademark, you will need the following documents:

1. Application for registration of a trademark
2. Image of the trademark (5 copies if trademark is registered in black and white and 10 copies for color trademarks)
3. List of goods and services under the International Classification of Goods and Services for which the trademark will be used
4. Bank receipt confirming payment of fee for application (Standard fee amounts: 1000 UAH for each class of goods or services)
5. If you are willing to enjoy priority right in accordance with provisions of the Paris Convention for the Protection of Industrial Property, you may submit:
   • A copy of a “preliminary application,” certified by authorized body of a country of application, and/or
   • The document, confirming that the exhibit was shown with a use of the trademark at the official exhibition.
6. Power of attorney for the representative (if representative under POA is acting on behalf of the applicant)
7. If elements of the trademark require consent from a state body, the consent letter has to be provided (see Requirements) .

All the necessary documents must be in Ukrainian or be accompanied by a certified Ukrainian translation. You can submit the documents either in person or through registered mail to Ukrpatent.

After all the necessary documents are submitted, they will be reviewed in three stages:

1. Fixing date of the application

Within one month upon receiving all relevant documents, the Ukrpatent will give you the registration number of your application, which can be used to check its status on the website of Ukrpatent;

2. Formal review of the application

The formal review includes an examination of an application for:

• completeness of information;
• completeness of necessary related documents;
• if goods and services were properly grouped under International Classification of Goods and Services;
• the priority of the application; and
• (if necessary) the powers of the applicant’s representative under the Power of Attorney.

3. Review of Essence

If the application passes Step 2, Ukrpatent will review the application’s essence. That is, Ukrpatent will check if the trademark may get legal protection. If the trademark contains elements that require a state body’s consent, the Ukrpatent notifies you to provide proof of consent within 2 months.

During the review, the Ukrpatent may require additional documents or explanations, which you must provide within 2 months.

After review, the Ukrpatent either registers the trademark or gives its recommendations and comments to the applicant.

If the decision is positive, you will have to pay the following state fees within 3 months:

• fee for publication of information on registration of a trademark: 150 UAH for each class of goods/services; AND
• duty for the issue of a certificate of registration of trademark. The fee depends on the applicant’s citizenship and legal status and varies from 85 UAH (for Ukrainian residents) to 200 US Dollars (for non-residents of Ukraine).

Within 3 months of receiving these fees, the Ukrpatent publishes information on registration of a trademark and registers the trademark in the State Register of Certificates for Trademarks. The certificate will be given to the applicant within one month after registration and is valid for 10 years (with possible subsequent prolongation).

If the decision is negative, don’t give up hope. You may provide additional explanation or arguments to the Ukrpatent and apply to participate in the review in person. Note that a trademark’s rejection may be disputed through court or to the Appeal Chamber of the Ukrpatent within a 2-month period from receipt of the refusal.

To distinguish your products and prevent unlawful use of your trademark in Ukraine, you should register it with Ukrpatent. Among other things, registration of a Ukraine-based domain name (“.ua”) requires prior registration of a trademark in Ukraine.

This isn’t an expensive process, but it can be time-consuming. You’ll need careful attention to detail in your application, and be prepared to make timely replies to the Ukrpatent if needed. You should expect this process to take between 1 and 1.5 years. There is one other option, however: you may apply for urgent registration of a trademark. Under this process, you’ll get a response in 2-6 months, but the cost increases to 300-500 USD.

Here are some additional resources that you might find useful :

• Business Structures in Ukraine
• Ukraine Company Registration Guide
• Corporate Tax in Ukraine

For further information, please contact us.