A trademark is not just a set of symbols or words; it is the heart and soul of any business. It reflects the company’s identity, indicates its values, the quality of its products or services, and influences consumer perception. A trademark also serves as a protection against competition. Registering a trademark gives you legal protection against other companies using your brand or similar names. This helps to avoid plagiarism and preserve the uniqueness of your brand.
So, to reflect identity, a team of lawyers on behalf of the State Border Guard Service of Ukraine has been persuading the EU Intellectual Property Office (EUIPO) to register the message of a Ukrainian border guard to a Russian ship as a trademark, but so far without success.
Through lawyers in Brussels, an application for registration of the message from the Ukrainian border guard as a trademark was filed in March 2022. This was done with the consent of the family. “We believe that the authorship of such a trademark should belong to the state of Ukraine… as a confirmation of the determination and invincibility of Ukrainian border guards… We must pay tribute to the defender, who, with this act, a decisive demonstration of steadfastness, inspired Ukrainians and the world community,” said SBGS spokesman Andriy Demchenko.
The lawyers involved in the case note that this is a welcome step to avoid attempts to appropriate the legendary phrase and make money on it.
As you know, various goods with a message for the Russian ship are widely sold around the world by various manufacturers. However, officials of the European agency believe that the phrase does not meet the necessary criteria to become a trademark.
Back in 2022, the EUIPO responded that the slogan “contradicts established moral principles,” in particular because it refers to the intention to make financial profit from what is a tragic event,” i.e., the events of Russia’s full-scale war against Ukraine.
The lawyers categorically disagreed with the reasoning for the refusal and considered it even offensive because of the opinion that the border guard would “profit from the war,” although this was a phrase he said under a direct threat to his life, and its author was in captivity at the time.
In order to circumvent the agency’s “profit from war” argument and to keep the border guard’s name confidential, the request was resubmitted on behalf of the State Border Guard Service of Ukraine. In December 2022, it was also rejected, with the motivation that it was obscene language, and that although in the context of the events the phrase had become a symbol of the Ukrainian resistance, registering it as a trademark was a trivialization of the events of the war. Ukrainian lawyers have filed a second appeal against the refusal.
Eleanor Rosati, a professor of intellectual property law at Stockholm University, says that such cases rarely end happily. “I don’t believe this application will ever be successful. It is a lost cause from the very beginning,” Rosati said. She added that there have been many examples of failed trademark applications – from “Je suis Charlie” to “Black Lives Matter” – that have faced similar obstacles.
“Such phrases that express political opinion are likely to be rejected because the office believes that there is a problem of distinctiveness, which are key requirements for trademark protection,” Rosati emphasized.
Although the lawyers were frustrated by the constant rejections, they said they did not intend to give up on the case and filed another appeal in February.
“When we filed the application…we said that even though we suspected that the office might raise some objections to the application, we would continue to fight for it as long as we could,” said lawyer Kulbaba.
The dispute requires objective legal and political analysis to ensure a balanced and fair decision that takes into account the interests of all parties.
How to choose a trademark?
The choice of a trademark must be approached very carefully. On the one hand, it should be short, concise and easy to remember, and on the other hand, there are a number of restrictions.
For example, commonly used concepts and symbols or definitions of certain goods and services cannot be trademarked. That is, if you produce mineral water, you cannot choose the words “water” or “mineral water”.
Also, the design of the TM cannot include state symbols or similar symbols, names or designations of state bodies of Ukraine and other countries without the consent of the relevant authority, official control, warranty and assay stamps, seals. Designations that are similar to marks registered or applied for registration in Ukraine earlier in the name of another person for a similar type of goods and services cannot be registered.
In addition, a trademark may not include the names or pseudonyms of persons who held senior positions in the Communist Party, the highest authorities and governments of the USSR, the Ukrainian SSR, other Soviet Union or autonomous Soviet republics, who were responsible for the persecution of participants in the struggle for Ukrainian independence in the twentieth century, etc.
In general, detailed requirements and restrictions are set out in the Law of Ukraine “On the Protection of Rights to Trademarks and Service Marks”. We recommend that you carefully study this law before registering.
Why do you need a trademark?
In general, there are three main reasons:
- To protect goods or services produced in Ukraine under your trademark from competitors.
- If you plan to work in the international market, you should first register your trademark in Ukraine, and then you can start registering an international trademark within the Madrid system.
- Only if you have a registered TM, you will be entitled to a second-level domain name.
Regarding the last point, there are important features to consider. The fact is that there are 45 classes in the International Classification of Goods and Services, in each of which you can register a related trademark.
The story of the Azovstal metallurgical plant reminds us of the importance of registering trademarks on time. After May 2022, Azovstal became the most famous Ukrainian brand, although the production itself no longer exists.
Nevertheless, a private American brewery has started brewing and bottling beer under the Azovstal label. Liberia, a country in West Africa, printed postage stamps dedicated to the defense of Azovstal. And Niue, a tiny island nation in Oceania, has issued souvenir coins also dedicated to Azovstal’s defenders. All of the above cases most likely do not have the appropriate legal authorization.
However, in the summer of 2022, a Ukrainian company called Bershad Lux filed an application for registration of the Azovstal trademark. The company wants to legally produce alcoholic beverages under this name.
It was only in early fall 2022 that Metinvest, the holding company that actually owns the legendary steel mill, filed an application for registration of the Azovstal and Azovstal brands. It turned out that the holding was in no hurry to register the Azovstal trademark, as it relied on the law that protects a trademark if its spelling exactly matches the name of the legal entity. However, this slowness led to the fact that the azovstal.ua domain name was taken many years ago by one of the Ukrainian cybersquatters who registered a similar TM in the class of telecommunication services.
Although the development and registration of a trademark is a rather lengthy and complicated process, all efforts will pay off when your business becomes successful. After all, a trademark is not only brand recognition, a kind of “quality mark” for a product or service, but also capitalization. Therefore, trademark registration is definitely an important step that should not be postponed or abandoned altogether.
Our law firm has extensive experience in this area, and we are ready to provide you with professional assistance in all aspects of this process. Contact us today to ensure that your business and its image are protected in the future.
copyright / intellectual property / registration / trademark
