The trademark practice takes a great part in our firm’s everyday activity. Just to note, Grischenko & Partners (at that time – Grischenko, Paliashvili & Partners) was the first law firm from Ukraine after dissolution of the ex-USSR to attend the INTA Annual Meeting, which was held in Seattle (WA), USA in 1994. Our late partner Maya Lgova represented the firm at that time.
We accompany the full course of registration process from searching and filing to obtaining a registration certificate, including responding to formal and substantive Office Actions and provisional refusals or oppositions. Our services also include recording all types of changes and assignments for pending applications and registered trademarks.
In our care there are portfolios of numerous national and foreign clients, which we handle with utmost care. We are always keen to establish mutually favorable cooperation.
We have been included within the Top 10 Trademark firms in Ukraine in The Trademark Lawyer Magazine Law Firm Rankings 2021/22 for “Most Well-Respected Law Firm 2021”.
Trademark registration can be obtained both via national and international routes (Madrid Agreement and Protocol). European route is not available yet, as Ukraine is not an EU member.
The registration process in Ukraine involves formal examination of a mark, as well as qualification examination for absolute and relative grounds for refusal, including based on opposition. A newly filed trademark application is published on the official website of the Patent Office of Ukraine (Ukrpatent) once the official filing receipt issues and can be objected by any person within 3 months. The Registration Certificate issues for a term of 10 years as of the filing date and is renewable every 10 years. Claiming convention priority is possible within 6 months pursuant to the Paris Convention. The registration process currently takes about 20 months and can be accelerated by about 8 months.
Before applying to register a trademark in Ukraine, it is always advisable to conduct a prior availability and registrability search in the national and international registers. We advise our clients on availability and registrability of proposed trademarks, suggest the best way of protecting a mark in Ukraine and avoiding any conflict with prior rights on the Ukrainian market.
Once a trademark is registered, we assist in recording licenses (this is a voluntary option) and assignments, as well as handle renewals and recordal of changes in the Trademark Register. We also represent clients before the Customs authorities of Ukraine by applying for recordal of their trademarks at the Customs Register and taking all subsequent actions to prevent counterfeits from crossing the Ukrainian border.
As a member to the Madrid Agreement and Protocol, Ukraine is a popular designation for international registrations. Once notified by WIPO, our Patent Office examines international trademarks for compliance with the local Trademark Law and often issues provisional refusals, mostly based on citation of prior rights existing in Ukraine.
We have already assisted many of our clients in overcoming refusals, this practice is very extensive in our firm.
You can always consult with us in order to estimate your chances in overcoming a refusal and determine the best strategy to achieve grant. In some cases, written arguments will be sufficient, in others you will need to negotiate with the counterpart or take some other steps. We can accompany the whole or part of the process and will make every effort to have the trademark protected in Ukraine.