How to protect your brand if brand registration is not possible?

The main purpose of any “brand” (corporate identity) is to allow a potential Client to distinguish goods and services offered by one person from similar goods and services offered in the market. 

The most common way to protect your brand is to register a trademark. But in some case, such registration is impossible (for example, the State Enterprise “Ukrainian Intellectual Property Institute” (Ukrpatent) refuses the registration) or inexpedient (in particular, due to the long period of registration or high fees).

However, even in this case, you can protect potential Clients from counterfeiting and ensure the “profitability” of your brand. Below we will talk about some of such options. 

Note: If you want to register your brand, find out more information on the registration procedure here.

Option 1. Industrial design patenting 

An industrial design is an external design. It is refers to as “design” in English, which generally characterizes its purpose (meeting aesthetic and ergonomic needs). 

The law defines that an industrial design can be the form of goods or packaging, drawing, color, their combination. Moreover, the logo of the manufacturer or distributor, if it is applied, for example, on a product or its packaging, may also be protected as an industrial design. 

Please note! Unlike trademarks, only a visual solution can be the object of a patent design. 

For example, if a combination of colors and patterns is used as the corporate identity of an establishment, which is used to decorate everything from curtains, walls to coffee cups, as well as a pleasant flavor and specific music (like a recognizable Nokia startup sound), then only colors and pictures can be an industrial design in this list, while the music and flavor can be protected as a trademark. 

It’s worth remembering that the industrial design do not include the following: 

  • architectural objects (except for small architectural forms); 
  • printed products; 
  • objects with unstable form (liquids, gases, bulk materials, etc.). 

Some of the peculiarities of the industrial design patenting are listed below:

- The main criterion of the industrial design protectability is its novelty (but not uniqueness). 
- The right to own the design is certified by a patent. A design patent provides for at least the following options: 
  • protection against counterfeit products, by entering information into the customs register; 
  • possibility to appeal against infringement of such object; 
  • transfer of the object for use to other persons (including through a “franchise”). 

It’s also worth remembering that a single design patent may be granted for several variants of the same object, which differ in several elements, 

The period for processing an application for a design patent is much shorter than for registration of a trademark and usually does not exceed one year. 
- The fees paid for the actions related to obtaining a patent are also considerably lower.  
- The validity period of a design patent is 10 years with the possibility of its renewal for another 5 years. for example, the color scheme of the pattern and the presence of additional strokes in the figure. 

You may also like: Utility Model In Ukraine

Option 2. Trade name

Where an enterprise uses a specific bright name rather than its own to identify itself on the market, such name may be protected as a trade name. 

In this case, unlike a trademark, a trade name is not subject to registration, and the right to it arises from the first (as a rule, public) use, and does not have a validity period. 

Often, to confirm that a trade name belongs to a particular enterprise, information on such name is recorded in the charter, with the subsequent development of a special system of its use and management. 

But it should be taken into account that it is very difficult to defend the right to such name in case of infringement, especially if it was registered as a trademark by someone else. 

The above options are not the only ones, but some of the most common ways allowing you to protect the corporate identity, if the registration of the trademark is impossible. In this case, to ensure proper protection of its elements, it’s worth considering this issue when planning the development of brand. 

If you need assistance in obtaining a patent or protecting your trade name, don’t hesitate to call us. We can help you to settle this issue quickly and easily.

You can learn more about intellectual property rights here.

Publication date: 01/07/2020

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