Appealing a Trademark Registration Refusal in Ukraine
With the huge amount of work that has to be done when drafting a trademark and subsequent attempts to register it, it is extremely unpleasant to get a registration refusal from the Ukrpatent. This entails a lot of different troubles. They include:
Inability to sell products under an existing logo;
The need to change product labeling when establishing a sales system;
The need to change the company’s existing website.
All of this is not only time-consuming, but also costly. Apart from this, you may have to start again the entire procedure for developing and registering the trademark.
But do not despair, because the Ukrpatent’s refusal is not a verdict. You can try to appeal the decision, and we know exactly how to do it.
You may also like: How To Transfer The Right To Use A Trademark?
How to appeal a trademark registration refusal?
According to the laws of Ukraine, to appeal a trademark registration refusal from the Ukrpatent, you need to file a motivation letter, which shall specify additional arguments in favor of the fact that it is still worth registering a trademark for goods and services. This letter is filed to the authority, and the applicant receives a positive or negative answer within 1 month.
The bottleneck of this procedure is that the authority rarely issues a positive decision after receiving the motivation letter.You may also like: Primary User Right To TM: What To Do If The Trademark Is Registered By Another Person?
Why does this happen?
The thing is that the Ukrpatent, before refusing an applicant to register a trademark, conducts a thorough check and examination of the situation. Unfortunately, this check is often subjective. This means that if your letter does not specify weighty arguments based on the practice of appeal, the representative of the authority will not consider them as arguments and you will get a negative decision.
Our Successful Experience in Appealing a Trademark Registration Refusal
Two years ago our team of specialists began the process of registering 3 trademarks for completely different areas of activity. The registration process went well, but beforehand we warned the Client that one of the trademarks could be rejected, which could then be appealed.
The Client agreed and meanwhile he was selling his product under the trademarks that were under registration, of course, having received protection of his logo in the above mentioned Ukrpatent thanks to our lawyers.
Later we got a letter from the Ukrpatent for one of the defined trademarks. It said that the applicant was provisionally rejected registration because of the similarity of the name of at least two existing companies (in Ukraine and the CIS). It was a logo trademark for the goods and services of the Client’s winery. Consequently, we started working on drafting an appeal in such a way as to get a positive decision from the Ukrpatent.
Our legal assistance in appealing a trademark registration refusal
To begin with, we checked all the information which the Ukrpatent referred to. For this purpose, we used all open sources, namely:
The Unified State Register of Legal Entities, Individual Entrepreneurs and Public Organizations of Ukraine;
The Unified State Register of Legal Entities of the Russian Federation;
The website of the company with a similar name, which was referred to by the Ukrpatent;
The website of the applicant’s company.
Having studied the information in the open access, we carried out the analysis and got the following result:
We found out that wines produced by a company with a similar name are made under a completely different name. That is, the Russian company does not use a similar name for its products;
We found out that the labeling of the wines of the Russian company has a name, one word of which is completely different. We studied the inscription on the bottle and found no identical name to our Client’s trademark;
We checked the register of legal entities of Ukraine and found that a company with a similar name registered in Crimea is bankrupt;
We pointed out that the name of the Client’s website fully coincides with the unique domain name of the website.
Having all the above information, we wrote an appeal stating all the arguments in such a way that the Ukrpatent could not ignore them.
After checking all the reasons for refusal, namely - analysis of the names of companies, which the Ukrpatent referred to, we received a positive decision from the agency already in a week and a half. After that we completed the process of registration of the trademark for goods and services.
Our team of lawyers will help you to get a positive decision on trademark registration on the first try after refusal.
If you want a lawyer to review your situation in detail and advise you on the right strategy, please sign up for a consultation!
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