Useful information about the preliminary search of the identity and similarity

Useful information about trademarks

Useful information about copyrights and allied rights

Useful information about bar codes

Useful information about production pieces, useful models, and inventions

Useful information about the preliminary search of the identity and similarity

Let’s consider the notions of the “identity” and “similarity” from the legislative point of view. According to the rules of filling and submitting the application for the consideration of the possibility of issuing the certificate for the mark for goods and services, the designation is identical with the other designation if it coincides with it as to all the elements. The designation can be called similar to the degree of mixing with the other mark if it is generally associated with it despite the difference in separate elements. In the process of defining the similarity of trademarks one takes into account the sound (phonetic), graphical (visual), and notional (semantic) similarity. We will explain these features with more details. Trademarks can be determined as similar by the sound (phonetic) feature if they are pronounced and heard practically in the same way. For example “adidas” and “adidos”. At first sight these signs are not very similar. And now try to close your eyes and pronounce the words one by one: it is evident that these signs are similar. Pay attention to the fact that is not of much importance in what language they are written, by which type they are depicted, etc. Trademarks can be identified as similar by the graphical (visual) sign, if they are generally perceived practically in the same way. An important role here is played by different features of the trademarks such as the type, in which they are performed, colour palette, availability of the original graphical elements. Let’s consider an example of trademarks similarity by the notional (semantic) feature: “present” and “gift”. Thus, while performing the preliminary research, one should take into account all these three feature. That is why it is worthwhile entrusting such a task to the specialists.

According to the Paris Convention on the industrial property protection, the trademark registration in one separate country is not automatically spreaded over the other countries. For this purpose one should perform additional registrations in every country, you are interested in, directly or by means of the Madrilenian system. Thus, in the process of the trademark registration in Ukraine one should take into account only those trademarks, which are registered or submitted for the registration in Ukraine.

1. The search can be performed by oneself, having looked for the name of the trademark in famous searches in the Internet network. It is not so. Information about registered trademarks and marks, submitted for the registration is kept in the special data bases. That is why such a kind of a search should be entrusted to specialists.

2. Differences between trademarks, found by the search results, and you trademark only by one insignificant feature (for example, the difference in one letter) make them totally different. It is not so. According to article 492 of the Civil Code of Ukraine, the key purpose of the trademark is to distinguish goods/services of one producer from goods/services of another producer (and not to mislead the consumers).

3. Absence in the search results identical or similar trademarks guaranties the positive resolution in the process of the registration. It is not always so. It is not enough to get “raw” results of the search. They should be thoroughly analyzed. There is also a great deal of other possible barriers in the registration process, which can be detected by specialists of our Agency on the stage of the search conduction and recommend you the further steps, which should be take.

Useful information about trademarks

The principle of the registration and legal protection of trademarks is of the national kind, i.e. the registration of the name by the legal entity or natural person does not gives the right to him for the same name in another state. There are different rules of the national registration in different countries. There are two types (principles) of the registration: “permitting” and “notifying” (registering). Using the first type, the state usually on behalf of the specialized body – Patent authority – permits (or does not permit) by means of the expertise to grant the applicant the right to the trademark. Using the second type, any application (which satisfies some formal requirements) becomes the trademark if there are no contradictions of any interested person. There is the permitting principle of the trademark registration in Ukraine.

The given matter was earlier regulated on the legislative lave, namely by the Rules of matching matters about referring the designation, which contains the official name of the state “Ukraine” to the signs for goods and services (the given Rules were approved by the Order of the Ministry for education and science of Ukraine, dated March 4, 2004, but on October 16, 2010, the Order of the Ministry of Justice of Ukraine has cancelled the state registration of data in connection with the inconsistency of item 3.5. of the above-mentioned Rules of part two of article 19 of the Constitution of Ukraine and norms of the Law of Ukraine “On protecting rights to marks for goods and services”). Nevertheless, norms of other points will be used by the Department for intellectual property before the adoption of new rules). Thus, according to the inoperative Rules, the use of the official name of the state “Ukraine” as the part of the trademark is considered the use of: 1) official name of the state “Ukraine”, written in letters of the Ukrainian and / or any other alphabet; 2) and use of the international code of Ukraine “UA”. Main peculiarities of such trademarks registration are the following: 1) while submitting an application, one additionally pays the state charges in the amount of 600 UAH for the use of the official name of the state “Ukraine” in the trademark; 2) the applicant enters a motion about including the designation, containing the official name of the state “Ukraine” to the mark for goods and services. Thus, the procedure of the registration of trademarks, which contain the designation, containing the official name of the state “Ukraine”, has its peculiarities. In connection with that, we recommend to think thoroughly the practicality of including the official name of the state “Ukraine” to the trademark name before filling the application for such a trademark registration. We will be glad to help you in taking the right decision in the given matter.

According to article 500 of the Civil Code of Ukraine, any person, who has dully used the trademark in Ukraine in the interest of his activity or has performed the substantial and serious preparation for such a use before the date of submitting the application to the trademark registration, or if the priority has been claimed before the priority date of the application, has the right for the free-of-charge same continuous use or use, provided by the given preparation (the right of the primary user). The given right can be transferred or pass to another person only with the enterprise or business practice or with that part of the enterprise or business practice, in which the trademark has been used or if the substantial and serious preparation for such a use has been performed.

The recipe for the successful “activity” of the trademark, bringing the commercial success to its holder, is predetermined by at least three factors:

1. It should be easy to remember and bring good associations with the product, which it marks and rendered service (that is the task of the trademark designer).

2. The trademark holder should be able to use it skillfully in the marketing activity, particularly during the advertizing campaign.

3. And one more important factor is the following: the trademark should be dully protected (i.e. registered). Unfortunately, producers of goods and services not always apply for assistance to the professional patent consultants, when they design the trademark. More over, having designed it, the producers start using it before filling an application for the trademark registration. And that is not always reasonable. Specialists of our Agency will consider the sketch (logo) of your trademark before its use and assess its ability to perform the advertising function. We also can give you all necessary recommendations as to the practicality of registering the trademark on the basis of the preliminary performed search.

The questions, which are asked very often is “what does the sign ® mean?”, “what is its difference from the sign ™?”, “when it can be placed near our own designation?” . All these signs are so-called protection signs (or the warning marking). But there is a difference between them. It is notable that the Ukrainian legislation does not give clear definitions of such protection signs. It also does not disclose terms of their usage and possible variants of using them near the item of the intellectual property.

The Law of Ukraine “On protecting rights to marks for goods and services” (part 10 of article 16) says the following, “The certificate holder has the right to place near the mark the warning marking, which indicates that the given mark is registered in Ukraine”. It is interesting to note that unlike the above-mentioned Law of Ukraine about marks, Law of Ukraine “On the copyright and allied rights” gives the comprehensive information about the well-known marking ©. On the practice one has accustomed to think that the sign ® is the warning marking for the already registered trademark, and ™ is used for such a one, which is in the process of the registration. And what does the Russian law-maker think about that? So, in accordance with the Civil Code of the Russian Federation (CC RF), there are only three protecting signs: © - sign of the copyright protection (article 1271 of CC RF);® - sign of the trademark protection (article 1485 of CC RF) and registered appellation of origin – sign of protecting the place of the product origin (article 1529 of CC RF). CC RF specifies terms, under which one can use the given signs. Thus, sign © can be used only by the holders of exclusive rights to the product (including computer software program or data base). Near the sign © one should place the name or title of the right holder, and the year of the first publishing of the work. The sign ® can be placed on the product (its packing) near the trademark only in that case, when the trademark is already registered, i.e. it is not allowed to use it till the moment of the trademark registration, for example when the application for the trademark has been already submitted, but the sign is not registered yet. There is the same situation with the registered appellation of origin. One can place it only starting with the moment of the state registration.

1. The simpler is the depiction of the trademark, submitted for the registration, the better.

It is not always so. On one hand, the verbal black-and-white trademark, performed in the standard type, is more universal in relation to other trademarks. But with the view of the tendency to the constant increase of the applications, submitted to Ukrpatent, there are often preliminary denials of the registration because of the slight difference between trademarks. That is why even simple verbal trademarks should be depicted by any original type. We have a nice collection of types. We will surely help you to choose such a one, which you like most of all!

2. If there is a willingness to register the trademark, for example in three languages, it is better to do that by means of filling one application (for example name it as “apple ÿáëîêî ÿáëóêî” ). It is correctly. According to item 4 of article 5 of the Law of Ukraine “On protecting rights to marks for goods and services”, “Volume of the legal protection, granted to the mark for goods and services, is determined by the depiction of the sign and list of goods and services…”. In accordance with the same law, the trademark should be used in the form of the registered sign and in the form, which differs from the registered sign only with separate elements. Thus, there can be separate problems, connected with the use of your trademark, i.e. “apple”, “ÿáëîêî” and “ÿáëóêî”, because formally you should use it in such a form, in which it is registered, i.e. as “apple ÿáëîêî ÿáëóêî”. For this reason there can be also some complications, connected with the legal protection of your trademark. Thus, it is more worthwhile to submit several separate applications for the registration.

3. In the process of the trademark registration procedure one can complement his application with classes, widen the list of named goods and services or change / substitute it. It is not so. According to the Ukrainian legislation, bringing alterations to the application, which concern the widening or changing the named list of goods and services is not allowed. That is why it is important to think over thoroughly the list of named classes before filling the application. We will be glad to help you with the given matter.

4. If the name of the trademark coincides with the name of the commercial (firm) name, than it is not obligatory to register this name as the trademark. It is not so. Now, there is the legal conflict between the use of one and the same name as the trademark and commercial (corporate) name by different persons. There is still no the legal mechanism to solve such disputes. That is why we recommend you to register commercial (corporate) name also as the trademark.

5. Having received the preliminary refuse to the registration, it is enough to call an expert and try to persuade him change the taken decision. It is not so. The Ukrainian legislation provides the only method, by means of which the applicant can show his absolute or partial disagreement with the expert’s opinion, outlined in the preliminary refusal. That is making up and submitting to Ukrpatent the written motivated answer with arguments in favour of the trademark registration. Surely, such an important process should be entrusted to the specialists. We will be glad to help you with this matter.

Useful information about copyrights and allied rights

That is the sign of the copyright protection. It can be used by persons, who have copyrights (author of holders of the property rights to the product). This protection sign is put on the original and on every copy of the product. Near this sign one should place the name of the person, holding the copyrights and a year of the first project publication.

- the right for the recognition of the natural person the author of the product;
- right to prevent any infringement on the product, which can cause harm to the credit and reputation of the author;
- claim to indicate his name in connection with the work use if it is practically possible;
- prohibit to indicate his name in connection with the work use;
- choose the pseudonym, indicate and claim to indicate the pseudonym instead of the real name of the author on the work and its copies and during its any public use;
- right to the work sanctity.

- right to use the work;
- exclusive right to permit to use the work;
- right to prevent illegal use of the work, including the prohibition of such a use.

The duration of property copyrights to the product expires in 70 years, which one starts counting from the 1st January of the year, following the year of the author’s death or the last of his co-authors, who has outlived other co-authors, except the cases, provided by the law. .

According to the Berne Convention for the Protection of Literary and Artistic Works (Bern, September 9, 1886), works are protected in all countries, which have jointed it. For November 20, 2007, 163 countries have jointed the Berne Convention! Ukraine jointed the Berne Convention on October 25, 1995.

The author can be only a NATURAL PERSON, who has generated the product by his creative work. If several natural persons participated in the project creation, that means that is has been generated on the coauthorship terms.

The holders of the property copyrights can be the author, author’s antecessors (who inherit the property rights of the project author); natural persons, who have received the property rights by the contract or law; legal entities, which have obtained the property rights by the contract or law.

We recommend you to register pen-names, names of musical bands and projects, stage names, etc. as trademarks. That will prevent many possible problems. The most popular disputes in this sphere are wars for the stage name between performers and their producers. By the way, the group, known earlier under the name of Prime-Minister now has to sing under the name of PM. None will deny the fact that performers of this band has not started to sing less professionally, but you should agree that PM and Prime-Minister are two absolutely different things.

The given matter is regulated first of all by article 444 of the Civil Code of Ukraine, which says the following. The product can be freely used by any person on free-of-charge terms without the consent of the author or holder of the property copyrights:

1. As the quotation from the legally published work or as the picture in issues, radio- and TV-programs, phonograms and video grams, meant for education. An important precondition involves the following points: keeping to the traditions, specifying the source of borrowing and author’s name, if it is indicated in such a source. Such a work should be used in the volume, which corresponds the determined objective.

2. For the reflection in the court proceedings and administrative procedure in the volume which corresponds the target goal.

3. In other cases, provided by articles 21-25 of the Law of Ukraine “On protecting rights to marks for goods and services”.

- performances;
- phonograms;
- video grams;
- programs of broadcasting organizations.

Objects of allied rights are subject to the legal protection without the execution of any formalities, relative to them and irrespective of their purpose, content, value, etc, and method or form of their expression.

The duration of property rights to the performance expires in 50 years, which are counted from the 1st January of the year, following the year of the first recording of the performance, and in case of the absence of such a record – from the 1st January of the year, following the year of the performance presentation.
The duration of property rights to the phonogram, video gram expires in 50 years, which are counted from the 1st January of the year, following the year of its publishing, and in case of the absence of such a publication during 50 years from the date of its creation – from the 1st January of the year, following the year of the phonogram, video gram creation.
The duration of property rights to the program of the broadcasting company expires in 50 years, which are counted from the 1st January of the year, following the year of its first presentation.

Useful information about bar codes

A number of normative documents of Ukraine provide the obligatory marking of goods with bar codes. The list of such goods is performed in “Provisions about bar coding of products” of the Ministry for economy and matters of the European integration of Ukraine under Nu. 255, dated August 20, 2002. The obligatory marking with GS1 bar codes should be put on alcoholic beverages and tobacco products, copies of audio and visual products and phonograms, medicines and other products, marking of which with bar codes is provided by the legislative acts of Ukraine. Despite the fact, that the requirements of normative documents don’t cover all goods, the obligatory availability of the bar code on the product is predetermined by the requirements of modern enterprises of the whole sale and retail trade. The bar code is first of all the instrument, thanks to which one performs accounting operations in the process of products delivery and selling. Trading enterprises will not have a possibility to perform accounting operations without the bar code.

Let’s consider the given question by example of the most popular bar code EAN-13. It is mistakable to think that having decoded the information of the bar code EAN-13, you can know many useful information. In fact, the number of the product of EAN-13 bar code is only the key to the information, which is kept in the informational data bases. One can say only about the number structure, where first 3 figures is the Prefix of the national Member organization GS1 (for Ukraine - 482); other figures together with the Prefix of the national organization form the identification number – Prefix GS1 of the enterprise. In most cases Prefix GS1 of the Enterprise consists of six, seven, eight or nine figures, depending on the requirements of the enterprise in GS1 numbers. The next group of figures is the product number (it is not connected with any features or consumer properties of the product); the next 13th figure is the controlling one. It is calculated by the previous twelve figures by means of the special algorithm.

There is a common mistake to think that the first 3 figures of GS1 number, performed in the bar code (Prefix of the national Organization GS1), determine the country of the goods producer. It is not so. The prefix can indicate only the national organization, where the enterprise is registered. Business entities, registered in GS1 Ukraine, get numbers, which start with figures “248”.

New GS1 number is assigned to the product every time, when the distinctive feature of the product is evident and essential for every participant of the product supply chain, especially for the ultimate consumer or retailer. That is first of all connected with the systems of the automatic calculation and control in the process of delivery, storing and sale of goods. One should realize that the criteria of the obviousness and materiality of different product positions in different spheres can be absolutely different. The general rule is that the substantial modification of one of key parameters, which characterize the product position, requires new GS1 number assignment.

Key characteristics of the product position are the following:

- type and kind of the products,

- trademark, packing and its type,

- quantity of products in the pack,

- mass, dimensions, and other product parameters.

And this list is not the limiting one.

For example mineral water, equal by the name and characteristics, but which has the difference in volume, should have different numbers in the bar code:

mineral water “Gornyi istochnik” in the PET bottle with the volume of 0.5 l - 482 002422 448 2;

mineral water “Gornyi istochnik” in the PET bottle with the volume of 1.5 l - 482 002422 447 5.

Useful information about industrial designs, utility models, and inventions

According to article 470 of the Civil Code of Ukraine any person, who has dully used the inventions, utility model, industrial design in Ukraine in the interest of his activity or has performed the substantial and serious preparation for such a use before the date of submitting the application to the invention, useful model, production piece registration, or if the priority has been claimed before the priority date of the application, has the right for the free-of-charge same continuous use or use, provided by the given preparation (the right of the primary user). The given right can be transferred or pass to another person only with the enterprise or business practice or with that part of the enterprise or business practice, in which the invention, useful model, production piece has been used or if the substantial and serious preparation for such a use has been performed.