Outline of Grounds for Trademark Refusal in Ukraine
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Legislation of each country establishes its own grounds for refusal of a trademark. In many countries there are similar grounds for refusal, but success registration of a sign in one country is not guarantee of trademark registration in another country. In this article we will discuss the most common grounds for trademark refusal in Ukraine. 1. Likelihood of confusion: means that it cannot be registered a sign that is similar with a sign that was earlier filed for registration. This rule applies only for related goods or services. Concerning this ground for refusal is a trademark examiner check in similarity of sound, appearance and meaning. To avoid rejection of registration we recommend conducting a preliminary search before the trademark registration. Moreover, we advise to pay attention to list of goods or services in application.
The way to overcome trademark refusal is to show that there is no conflict between the trademark's applicant and an earlier filled trademark and that conflict cannot appear in the future. Sometimes it is possible to obtain a trademark registration by reduction of the list of good or services. Undoubtedly, during the preparation of arguments for overcoming refusal it is important to analyze all aspects concerning trademarks and attitude of average consumers to them.
In some countries, for example in the Russian Federation, it is possible to overcome provisional refusal by providing Letter of Consent from the earlier applicant of a filed trademark. Unfortunately, the similar path of solutions is impossible in Ukraine. By the way, it cannot be registered as a sign that is similar with:
- Well-known trademarks. - Commercial names known in Ukraine concerning related goods or services. - Geographical indications. Actually these indications are protected by special Legislation. 2. Lack of distinctiveness: As the trademark is a sign that distinguishes goods or services of one person from another, that's why it should be distinctive. Hence, a sign that doesn't have distinctiveness cannot be registered. Examples of signs that are not distinctive:
a. Signs consist from one letter or figure. Exception — signs consist of one letter or figure executed in original manner.
b. Signs consist of simple geometric shapes.
c. Realistic images of products.
d. Well-known abbreviation.
A sign can get distinctiveness by long-term exploitation. In this case to overcome provisional refusal it is possible to show such evidences:
- References about sales of products or goods.
- Marketing and advertising expenses.
- Documents that certify consumer association of a sign with an applicant.
- Documents that certify participation in exhibitions.
- Diplomas and awards.
- Other documents.
The main goal of all these documents is to certify that an applied sign is associated only with the applicant and thereby evidence that a sign has distinctiveness.
Analyzing Ukrainian practice we must admit that in many cases in contrast to device and combines signs. The verbal signs more often may be deemed not distinctive.
3. Descriptive signs: also are not able to be registered. Descriptive signs are signs that identify type, quality, quantity, properties, composition, place or time of manufacture goods or providing services. For instance, “The Best Toy” for toys, “Very Good Taxi” for taxi services. In case a sign consists of elements that describe not directly, but in a way of some associations, it may be deemed registrable. For example, “Northern” for Nutritive Ice.
4. Misleading signs: mean signs that suggest an incorrect statement for average consumer, namely about type, place, time, quality or manufacture of goods or provider of services. These signs cannot be also registered. In some cases distributors try to register a trademark of well-known manufacturer of goods. Also these signs are not registrable.
5. Similarity of third party’s industrial designs: names of famous literary, artistic, scientifically works, quotes and characters, names, surnames, pseudonyms of famous people in Ukraine. These signs may be registered only by authorization of holder of the Copyrights or famous people.
6. Imitation of state flags, official names of states, emblems and names of International Organizations. According to Ukrainian legislation these elements may be concluded to be a sign with authorization of competent authority. In Ukraine such authorization concerning inclusion into a sign official name of Ukraine may be issued by Commission concerning adjustment questions about inclusion into a sign of the official name of Ukraine. What is more, it is required an additional fee for filling application with a sign included official name of Ukraine. But payment of additional fee is not guarantee of granting decision of registration. To obtain such authorization your sign should satisfy the requirements established by special legislation.
Remains of an open question about receiving authorization of organization in other States. In effect, main problem is that sometimes it is difficult to understand for applicant what organization is competent for giving an authorization in other countries. Also it is difficult to obtain such authorization during two or three months (depending on type of filling procedure — national or under Madrid System) provided by trademark law. This term could be extended for six months, but it is possible to obtain authorization during such terms not in all cases.
7. Contrary to public order, principles of humanity and morality. Very often applicants do not pay attention to this ground for refusal. But as for me, it is very controversial and subjective ground. A sign contradicts public order, principles of humanity and morality if it, for example, consists of symbols of church names of saint persons, images of historic and cultural monuments or offensive words. According to the Rules of Conclusion and Examination of a trademark application an examiner decides if a sign belongs to a sign of pornographic character, doesn’t consist slogans against state, symbols of extremists organization. Moreover, in 2012 many signs were rejected in registration because were concluded such elements as “2012”, “UEFA” or other signs concerning EURO 2012. According to the meaning of examiners inclusion such elements in to a sign contradicts the public order.
Speaking about grounds of a trademark’s refusal we must mention that in some cases these refusals can be overcome. Main principle of overcoming refusal is providing forceful arguments showing the opposite.
How to Register a Trademark
Granting of a Well-Known Trademark
Opposing a Trademark Application in Ukraine
Registration of Domain Names in Ukraine