What does the registration of Trademark in Ukraine give and does it spread its action around the world?

If the registration of the name or pseudonym of the artist in the form of Trademark takes place only in Ukraine through the local patent authority (Ukrpatent), then its action will apply only to the territory of Ukraine. But after submitting an application for a sign for goods and services (“sign for goods and services” is a synonym for Trademark), you can submit documents to other patent offices using the provisions of the Madrid Protocol, the essence of which boils down to the fact that simultaneous filing with several patent offices is possible. Which, in turn, reduces the waiting time for registration in different countries and saves the applicant’s money.

The main advantages of registering signs under the Madrid Agreement and the Madrid Protocol are:

  1. The main advantage of this system is that one international application is submitted indicating the countries for which you want to have a registered sign;
  2. The advantage is also that the management of the sign, i.e. the introduction of changes, assignment, license agreements, is also carried out by submitting one WIPO document (World Intellectual Property Organization);
  3. In addition, the sign is valid from the moment of registration, the examination in each country must pass within 12 months (much less time than in Ukraine (about 18-23 months). If you do not receive a preliminary refusal, the mark is considered to have passed the examination and continues to operate in the country;
  4. Another significant advantage must be taken into account: the possibility of multiple expansion to other countries.

There is a drawback in this system. For 5 years, international registration remains dependent on basic registration, i.e., when the basic registration is canceled, according to national offices in WIPO, international registration ceases to operate.

With the introduction of the Protocol, the number of countries increased significantly, in particular, such significant countries as the United States and Japan entered. What new opportunities have the applicants had with the introduction of the Protocol:

  • the ability to apply to the national office in English;
  • the ability to carry out international registration on the basis of a basic application, i.e. there is no need to wait for national registration;
  • possibility of converting international registration into national registration while maintaining priority when revoking basic registration.
  • moreover, when submitting applications after the introduction of the Protocol, there are three forms for filling out when submitting an application: one for the countries that signed the Agreements, the second for the countries that signed the Protocol and the third for the countries that signed the agreement and protocol.

As for trademark registration in the United States, the following can be said. When registering a trademark, you can use various procedures – national registration and registration through the Madrid Protocol.

One of the main features that distinguish the registration of US trademarks from other national laws is the application of the principle of “superiority in use.” According to him, the advantage is given to the owner of the trademark who first began use, and not the first who registered it.

Also under U.S. law, if you don’t want to lose ownership of your trademark, you should use your mark. Ownership is not limited to registration, but depends on the actual use of Trademark.

You can register a trademark in the United States in several ways:

  1. Through the American Patent Office – USPTO (United States Patent and Trademark Office), in accordance with US national law, accompanied by a patent attorney, according to the innovation from August 03, 2019. In this case, the trademark will be protected only in the United States.
  2. Through the Ukrainian Patent Office in accordance with the provisions of the Madrid Agreement.

The minimum cost of official fees is $225. The price of filing documents in paper form is $600. For each additional class, you will need to pay another $225. The U.S. National Procedure trademark registration period is 9 − 12 months and the validity period is 10 years from the date of application.

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