On September 18, 2024, the Rules for drafting, filing a trademark application, an application for international trademark registration and examination of the trademark application, international trademark registration with an extension to Ukraine came into force. This document was approved by the Order of the Ministry of Economy of Ukraine No. 19889 dated August 6, 2024.

 

What is a trademark? A trademark is a designation that individualizes goods and services and helps to distinguish them in the market from similar goods and services of competitors. Registration of a trademark grants exclusive property rights to it. This means that only the owner of a registered trademark can use and dispose of it.

 

It is possible to obtain legal protection of a trademark in Ukraine under the national procedure by filing an application for trademark registration within the IP office or under the international procedure in accordance with the Protocol to the Madrid Agreement. At the same time, filing an international trademark application within the Madrid system at the Ukrainian IP office helps the applicant to save money and effort in obtaining trademark legal protection in foreign countries.

 

“The adoption of the new Trademark Registration Rules is an important step towards modernizing the intellectual property legal framework in Ukraine. Updating the regulations brings us closer to European standards. This opens up new opportunities for Ukrainian producers in international markets. Especially important is the introduction of an electronic filing system that simplifies and speeds up the registration process. These changes will help Ukrainian entrepreneurs not only to consolidate their positions in the domestic market, but also to effectively enter international markets, protecting their brands on a global scale”, – said Deputy Minister of Economy of Ukraine Vitaliy Kindrativ.

 

“The process of IP bylaws harmonization with the EU legislation is ongoing. At the same time, the new rules not only contain the provisions of European acts, but also optimize the procedure for registering trademarks in Ukraine, which are among the most popular intellectual property rights. And this is crucial for business development in the context of global competition and Ukraine’s accession to the EU”, – emphasized Olena Orliuk, Director of the IP Office.

 

The Order of the Ministry of Economy regulates in detail:

 

• requirements to the application materials;

 

• application filling procedure;

 

• the procedure of the trademark application examination;

 

• grounds for refusal of trademark registration;

 

• the procedure for filing and examining an international trademark application and a request for territorial extension under the Madrid system;

 

• peculiarities of examination of the international trademark registration with extension to Ukraine and other actions provided for by the Protocol to the Madrid Agreement.

 

The Rules also cover the following issues:

 

• registration aspects of specific trademarks – sound, positional, ornamental, motion, holographic, multimedia, colour and combination of colours;

 

• filing and examination of an electronic trademark application;

 

• the procedure for verifying the fact that special economic and other restrictive measures (sanctions) have been applied to the applicant or the applicant’s state, as well as the legal consequences of the sanctions implementation;

 

• the procedure for refusing the trademark registration if the applicant is a person associated with the aggressor state.

 

Taking into account Ukraine’s international and European integration obligations

 

New rules:

 

• comply with the provisions of the Singapore Treaty and the Protocol to the Madrid Agreement;

 

• implement the EU standards envisaged by the EU-Ukraine Association Agreement;

 

• take into account certain provisions of the Acquis communautaire, which is of great importance for European integration, as trademark registration is one of the main stages of promoting the Ukrainian manufacturers’ products to European markets.

 

Read also:

 

New rules for the registration of geographical indications in Ukraine, adapted to EU regulations, came into force

 

The Rules for Drafting and Submitting Design Applications Entered into Force