International  trademark registration

Legal protection of a trademark is local in nature, i.e., it is valid only in the territory of registration. Thus, the rights granted by the Certificate of Ukraine for a trademark (in particular, the right of exclusive use and the right to prohibit unauthorized use by third parties) are limited to the territory of Ukraine. If your commercial interests go beyond the national borders of Ukraine, you need to secure legal protection from the country of export of goods/services.

One of the leading areas of our practice is international protection, including support of trademark registration procedures in all countries of the world separately, as well as under international procedures that allow obtaining registration covering several countries simultaneously.

Choosing a registration procedure is a necessary component of a comprehensive strategy for promoting and protecting a trademark on the national and international markets.

Our recommendations, based on many years of experience, membership in professional associations and a deep understanding of the workings of international intellectual property markets, will allow you to implement an effective protection program in the countries of your commercial interest.

Options for trademark registration on international markets​

  • National registrations in the USA,  European countries, China, Moldova, Kazakhstan, other CIS countries, Australia.
  • International registration under Madrid Agreement and/or the Protocol to the Madrid Agreement Concerning the International Registration of Trademarks.
  • Registration of a single TM of the European Union. 

Established in 1891, the Madrid System for the International Registration of Trademarks (Madrid System) operates under the Madrid Agreement (1891) and the Madrid Protocol (1989), administered by the International Bureau of the World Intellectual Property Organization, located in Geneva, Switzerland.

Through the use of an international procedural mechanism, the Madrid system provides the owner with the opportunity to obtain protection for its mark in 98 countries (members of the Madrid Union) by simply filing a single application first with its national Office.

 

The legal protection of a TM registered under the international procedure is equivalent to registration made directly in each of the countries specified by the applicant. If the Office of the specified country does not refuse to grant protection within the specified period (from 12 to 18 months), the TM is granted the same protection as if it had been registered by that Office under the national procedure.

The Madrid system also greatly simplifies the subsequent management of the registration, as it is possible to make subsequent changes (name of the owner, address) or renew the registration through one simple procedure. Further, it is possible to add additional countries (extend the registration) as commercial interests expand.

  • Registration under the Madrid Protocol is possible for trademarks that are at the stage of application for registration or have already been registered in Ukraine (an application for a Certificate has been filed).
  • ​The examination period is limited to 12 (agreement) or 18 (protocol) months, during which the applicant receives confirmation of the extension of legal protection to the territory of the specified countries or a preliminary refusal to grant such extension.
  • The company owning the applied-for TM must be a resident of Ukraine
  • An international registration may be terminated early, as the validity of the registration may be challenged by any person on the same grounds as a national registration (in the patent office, the Board of Appeals or the court, respectively).
  • For five years, counting from the date of international registration, the status of the international registration depends on its status in the national office. After this period, the international registration becomes independent of the national registration.

Each country in the world has its own trademark registration procedure, which provides legal protection to the owner of the Certificate, including the right of exclusive use in the country, which creates a competitive advantage in the relevant market, and can also serve as a tool for optimizing taxation and repatriation of profits.

​In many countries, we are able to handle the filing and processing of applications directly, which significantly reduces the cost of registration for our clients. In the USA, we represent clients directly with the United States Patent and Trademark Office as Diana Portna is also a admitted to practice law in US.

In addition, we work directly with the International Bureau of the World Intellectual Property Organization and the European Community Trademark Office. However, as a rule, national registration procedures provide for mandatory local representation.

 

Over the years of practice, we have developed a network of reliable foreign partners who represent our clients in the respective countries of the world.

​International Patent and Law Firm "DiL-Consult" is an active member of the International Trademark Association, and, accordingly, our clients have the opportunity to take advantage of our connections - patent attorneys of other countries, including promptly obtaining preliminary consultations from our colleagues, optimizing registration costs due to the fact that our cooperation provides for preferential terms of interaction.

Another international procedure allows you to obtain trademark rights in all 25 member states of the European Community by filing a single application with the European Office for Harmonization of the Internal Market (Alicante, Spain). As a result of the proceedings, if the office makes a positive decision, a Certificate is issued, which is valid in all EU countries.

European Registration can be obtained by any person, natural or legal, who has a permanent place of residence, a place of business in one of the EU countries, a permanent commercial establishment or is a resident of a country party to the Paris Convention (Ukraine is a party to the Paris Convention).

The official fee for filing an Application for registration of a European Community trademark is 850 Euros (equivalent in UAH).​

The cost of conducting a preliminary search for trademarks registered in the EU is 150 Euros (equivalent in UAH). The search can be performed within 1 day. The search is not a mandatory procedure, but we recommend that it be performed to minimize the risk of refusal of registration based on existing identical registrations obtained earlier.

The cost of our services for preparing and filing an application for trademark registration in the EU countries is UAH 10,000.

Cost of international registration

Official fees for filing an international application:

 

The main fee:

TM in black and white – 653 Swiss francs

TM in color version – 903 Swiss francs

Additional payment for each class of goods and services over three classes – 73 Swiss francs

The additional fee for indicating each country is – 73 Swiss francs. 

 

The cost of our services for preparing and filing an application for registration is UAH 10,000.

SOME COUNTRIES HAVE INDIVIDUAL DUTIES PER COUNTRY SPECIFICATION.
PLEASE CONSULT US WITH THE SPECIFIC COUNTRY OF YOUR INTEREST FOR THE EXACT AMOUNT OF THE INTERNATIONAL FILING FEE.