Ukrainian businesses planning to enter the promising EU market with their goods and services should take care in advance to register their trademark in the new jurisdiction. Why is this necessary?
Such registration:
— provides legal protection of proprietary rights against unfair competition;
— confirms exclusive intellectual property rights (the owner obtains a lawful monopoly right to use the trademark and may transfer the rights to the registered mark to third parties for a fee).
WHO CAN APPLY FOR TRADEMARK REGISTRATION IN THE EU?
Any legal entity or individual may register a trademark in the European Union. However, while residents of the European Economic Area (EEA) may do so independently, residents of other countries, including Ukraine, must use the services of a representative based in the EU, such as a specialized patent and legal firm.
Before initiating the registration procedure, which takes at least four months, it is advisable to consult a qualified lawyer. In Ukraine, matters related to intellectual property may be addressed to attorney Anton Shukhnin, who has extensive experience in this field.
WHICH TRADEMARKS CAN BE REGISTERED IN THE EU?
Trademark requirements in the EU are standardized. Registration is available for various combinations of letters, numbers, and words, as well as graphic signs, patterns, colors, shapes of goods, and packaging.
The key requirements are distinctiveness and recognizability of the sign. Therefore, if a trademark consists solely of generic terms (such as price or place of origin) or words describing general characteristics of goods (for example, “electric,” “natural,” etc.), registration will not be possible. The full set of trademark requirements is defined by Regulation (EU) 2017/1001 of the European Parliament and of the Council.
REGISTRATION PROCEDURE
Applicants should note that in the EU it is possible to obtain either a unitary registration valid throughout the entire Union or a national registration in one or several specific countries. In the latter case, the requirements of the selected country must be considered, as certain local specifics may apply, although the overall registration algorithm is generally identical.
Before filing an application, the trademark owner must conduct analytical preparatory work (either independently or by engaging a specialized legal firm).
STEP ONE
The applicant selects the goods and services for which the trademark will be registered. For all selected items, the relevant classes are determined using the EUIPO TMclass online classification tool. It is important to remember that once the application has been filed, the list of goods, services, and classes cannot be changed.
STEP TWO
The owner must conduct a thorough clearance search to eliminate any similarity between the intended trademark and already registered trademarks. Specialized patent and trademark firms use multiple databases and can provide an in-depth analysis. Why is this important?
After publication of the application, a three-month opposition period begins, during which interested parties may file objections on the grounds that the new trademark is similar to their existing mark. Each opposition requires significant time and additional legal costs. If potential risks—such as identical or confusingly similar signs—are identified at the clearance stage, it becomes possible to negotiate with potential opponents, amend the trademark, or challenge the registration of another mark if legal grounds exist.
Once all issues related to the trademark’s distinctiveness have been resolved, the application may be filed. The most convenient way to submit it is via the EUIPO website. For applicants from non-EEA countries, a standard application form must be submitted by an appointed representative acting on behalf of the trademark owner. At this stage, the applicant must pay the official fee (from EUR 850). Fees for patent and legal services are paid separately.
The European Union Intellectual Property Office (EUIPO) conducts an examination based on a number of criteria, including a formal examination to determine whether there are any absolute grounds for refusal of registration. If the examination result is positive, the application proceeds to the next stage—publication in the official EU Trade Marks Bulletin. If deficiencies are identified, the applicant is granted two months to remedy them.
Within three months following publication, interested parties from any EU Member State may file an opposition against the registration of the new trademark if it infringes their rights (in particular, if it is identical or confusingly similar to a previously registered mark). Please note that once an opposition is filed, the opponent has two months to substantiate its claims, while the applicant is also granted two months to defend the right to registration. As a result, the process may be significantly prolonged, especially if there are multiple opponents. Therefore, applicants are strongly advised to secure the support of a qualified lawyer specializing in corporate and intellectual property law in advance.
If no oppositions are filed within three months, or if all objections are successfully resolved, the trademark is registered. The registration is valid for ten years and may be renewed an unlimited number of times. However, there is an important caveat: if the trademark is not used for five consecutive years, it may be revoked.
CONCLUSIONS
Trademark registration in the EU provides its owner with reliable legal protection of intellectual property rights. To file an application in the European Union, Ukrainian businesses must engage a professional representative registered in the EU. The registration procedure includes a preparatory stage, application filing, examination, publication, and an opposition period.
To minimize the risk of refusal and reduce registration timeframes—which, without proper preparation, may extend for many months—it is advisable to consult an experienced lawyer. In Ukraine, services related to trademark registration in the European Union are provided by attorney Anton Shukhnin.