Filing an objection against a trademark application is one of the frequent requests of the clients. In this context, we are usually asked to estimate the chances of success for opposing the other party trademark application and provide the cost of the project. These questions are so reasonable because our clients understand benefits of objecting the trademark application at examination stage. Below we will explain the pros and cons of filing objection against a trademark application in Ukraine. This information may be helpful for every interested person including those who plan filing an objection as well as applicants who may potentially face an objection to the registration of their trademarks.
According to the Ukrainian legislation, any person is entitled to submit a grounded objection to the trademark application in respect to unconformity of the filed sign with the requirements of granting the legal protection. Namely, the filed sign may be descriptive, liable to mislead or similar to the earlier registered/filed trademark of the other person.
It means that if a person/company becomes aware of the filed trademark application, an objection can be filed to stop the registration process before it is completed.
Incentives of filing an objection to trademark application in Ukraine
Based on the laws of Ukraine the registered trademark can be cancelled via the court proceeding. So, why objection could have a chance to be used instead of a court cancellation action?
- Procedure of filing objection against a trademark application in Ukraine is easy as pie.
Compared to a court cancellation of the registered trademark, where dozens of formalities have to be done before submitting a lawsuit and after, for filing an objection the interested person has to prepare the grounded text of objection and pay the official fees, then wait and monitor the matter.
- Objection against a trademark application in Ukraine is cost-effective.
Averagely a court cancellation of a registered trademark costs thousands of dollars while objection against a trademark application in most cases barely would amount to a thousand.
- Procedure of objection against a trademark application is faster than a court cancellation of a registered trademark.
The court proceeding at the first instance may last from 6 to 8 months, and even a year. Moreover, in many cases, the defendant appeals a decision of the first instance court to the appellate court and then appeals to the cassation court. Thus, the court cancellation action may last for years while the objection proceeding takes no more than 5-6 months.
As we can see, an objection is cheaper, easier and faster than the court action.
At the same time, the applicant should note that although the Ukrainian trademark legislation does not establish the term or limit for filing an objection, it nevertheless prescribes that an objection can be filed not later than 5 days before the date of the UA PTO decision to grant a protection to the opposed mark. However, in practice it is difficult for an applicant to foresee when the grant of protection decision can be issued.
Here requesting advice of a trademark attorney, who can estimate the needed term, is strongly recommended.
Based on our practice, an official full availability trademark search is the tool that allows revealing a trademark application at the examination stage (before the grant of protection decision). As a rule, such a trademark search results include details of both registered trademarks and trademark applications at the stage of examination.
As an alternative to official full availability trademark search, a monitoring of the Ukrainian trademark applications for similar or identical trademarks on a monthly basis may be recommended.
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