How to overcome the Provisional Refusal in trademark registration in Ukraine

  • 02.11.2016

According to Ukrainian trademark registration procedure, the Patent Office of Ukraine (hereinafter – the “POU”) shall examine if the trademark, presented in the application, meets the requirements to legal protection set forth by the laws of Ukraine.

If the POU considers that the sign does not conform to the requirements of granting legal protection established by the Ukrainian law, the POU shall issue the Provisional Refusal of Trademark Registration and shall send it to the applicant with the indication of the grounds objection in trademark registration.

According to Ukrainian rules, the applicant has a right to file a motivated Response to a Provisional Refusal. In such Response an applicant shall make compelling arguments in favour of trademark registration, which may be taken into consideration by the POU before the issuing of a final decision on the application.

In respect of Ukrainian national application the Response, as mentioned above, shall be filed to the POU within the period of 2 months from the date of receiving a Provisional Refusal. When it comes to International registration under Madrid system, the period for responding to the Provisional Refusal is 3 months from the date of the notification of provisional refusal.

It should be noted that the said term may be extended for up to six months subject to prior submission of the petition on term prolongation. In case of missing the above-mentioned term due to sufficient reasons, the term may be renewed if the applicant files a request for such renewal within the period of six months after its expiration.

In case the trademark registration was finally refused by the POU, the Refusal Decision may be subject to appeal to the Board of Appeals of the POU within the period of two months from the date of receiving the Refusal Decision. The decision of the Board of Appeals can be challenged in the Court of Ukraine. Moreover, an applicant has a right to appeal against the final Refusal Decision of the POU directly to the Ukrainian court without appellation to the Board of Appeals of the POU.

Read also