Table of Contents
Written by : Giuseppina Muhn |
Current |
Write a comment |
Write a comment
i work for the eu ipo which is the eu agency responsible for the eutm the trademark valid throughout the european union a trademark could very well become your company's most valuable asset so it is important to get everything right from the beginning once you applied for or registered an eu trademark you cannot change it anymore that's why we've been looking into the most common mistake people make when they apply for new tm the most common mistake of all is when people apply and pay the 850 euro fee for a mark that cannot be an eu trademark don't throw away your money on a month that cannot ever be accepted instead do a bit of homework to minimize the risk start with reading the information on the euipo website to see what can and what cannot be registered as a new trademark an eatm should be distinctive and for instance a mark is not distinctive when it describes what you sell so first check on our website if your map meets the criteria also your new mark must be different from those already registered to check if they are marked identical or similar to yours go to tmview and do a pre-screening search the second most common mistake is when people mess up the list and goods and services they choose for the eutm to cover they should be just right not too few not too many not too long when you apply for a new tm the basic application fee covers one class so what you need to is be realistic and think you cannot add goods or services after the application or registration so think about what you're going to sell now and within a foreseeable future but if you have a very long list or you put down too many classes then you may put your trademark at risk remember that an eotm cannot describe what you're going to sell well the eu ipo examines the trademark in all of the eu official languages so the longer your list is the bigger the risk is that your mark will be descriptive in one of those languages and that the mod cannot be registered also with a very large scope the risk that other companies with similar trademark will oppose your mark is bigger and if you don't use the utm for the goods and services that you have registered for in the first five years you risk losing some of those or even the trademark itself so a good tip is to use our database to select your goods and services to avoid errors in the registration process this tool is available for you automatically when you use our simplified fast track trademark application from the website if you do that you can also use the online chat to solve any doubts on this box you
Thanks for your comment Ardell Osmun, have a nice day.
- Giuseppina Muhn, Staff Member
uh so hello everyone i think we can start um i will also be glad um to everyone else who will enjoy um us later so um good afternoon uh and welcome everyone today at our webinar uh which views uh the name uh trademarky pillars in russia ukraine kazakhstan and belarus uh my name is eugenia corollova and i'm a senior ip advisor here in ipod style on ip matters in russia ukraine kazakhstan and belarus as well almost for the past 10 years i have been advising on on registration protection enforcement um of intellectual property uh matters uh for our uh foreign clients from all over the world and in these four countries and over the past years we have accumulated on a significant experience uh in particular on issues of trademarks and have uh practical advice uh which i have to share with you today um sorry to mention it in our announcement um we believe uh that there are three are key pillars regardless of jurisdiction on which the trademarks are held so there are filing examination and opposition uh from my practice um i know and made sure that our clients are interested on precisely these basic questions however which are the most important for the successful registrations of trademarks so today i will talk briefly about some filing chips or how to file correctly uh languages uh multiple multiply uh application system uh preliminary searches and other basic to no issues uh then we will talk about examination and the possibility of accelerated accelerated procedure um provisional refusals um possibility of disclaimer and letters of consent and then um we will talk about the opposition is it provided or not so um also after the webinar uh my colleagues will send you a presentation so let's get started um we will start um with the filing uh since we all perfectly understand uh that uh the correct and uh component filing of an application uh regardless of jurisdiction it's already fifty percent of the success of your trademark registration and um we will start um with the object of registration in ukraine um russia belarus and kazakhstan um what can be registered as a trademark in all four jurisdictions um as you perfectly understand each jurisdiction has its own rules and uh different approaches uh to what can be registered as a trademark and what features a mark should have i think that talking about uh substitutes of registration of each a separate country is a whole topic for a sega a separate webinar so uh here um i have collected um for you common issues uh that you can use uh when intending to apply for the trademark registration in all four countries so there are basically two common features of a registry trademark first of all and no doubt uh the trademark it must be distinctive and the second but no less important feature and the sign must not mislead consumers about uh the manufacturer or uh the place of its production uh and the types of trademarks are as follows where about trademarks um slogans uh words letters numbers name and surname and in the case of using the name or su name as a trademark or its separate element the applicant will need to provide a permission or to use the latter then there are pictorial trademarks but at the same time if the protection of such is trademark is claimed for goods then such an image must be made in graphic or art style and cannot be a naturalistic or schematic image of the claimed goods and then three dimensional trademarks including the shape of the good or its packaging combine trademarks and other designations as well as their combinations um when we talk about other designations uh they could uh include for example sound uh color or color combinations uh holographic or old factory and uh since uh these other designations are not widely filed for registration and in the registers of these um countries you can only find a few examples of each of them each jurisdiction had its law um its own local legislative acts providing for the specifics of registration uh sound color holographic or olfactory trademarks um and as you know uh any of the above list trademarks can be registered in any color or any color or combination but what is remarkable uh for example in ukraine a separate fee uh is charged for the application uh in color and um for publication um of the trademark uh therefore uh please attend with your calculations uh when you return to file in caller in this country um so further um very briefly uh let's go over such issues as our languages searches and classes in our countries languages in our countries except for ukraine uh the local uh or russian language is used and applied for filing applications or for the workflow in ukraine uh it is only ukrainian as for the classes for goods and services a news classification is adapted or for all jurisdictions however i drove your attention that it's necessary to strictly follow um to the latest editions and clear lists of goods and services since us each of this jurisdiction has its own clear wording which must be followed when filing an application and um it is advisable not to go beyond it because very often the experts are inclined uh to issue requests for so-called uh formal examination uh to clarify or limit the list of goods and services and moreover if particular goods or service goes beyond the class the applicant will be asked to pay a fee and remove or even transfer the dispute is a disputed good um or service uh to another class uh therefore when filing an application it is always necessary to clearly agree on the list so that in the future uh this um does not lead to undesirable additional costs for the clients uh also a common feature for ukraine uh russia battles in kazakhstan is the multi-class application system um thus you can file a single application and request protection at once in the required number of classes having paid the prescribed fee um and there is no need to file a separate trademark application for each requested class at the same time in russia a single fee is paid when filing for up to five classes and in kazakhstan is up to three classes so i think this will significantly help you to save your budget um as to the searches preliminary searches for the similarity or identity of trademarks are optional before filing an application each of the office provides uh the opportunity to conduct such research on a paid basis uh if necessary um therefore if you want to be aware of a prior registered trademark uh similar or identical in order to be able amending um the list of goods and services or the trademark itself before filing an application it showed a search should be carried out um in order to minimize um the risk of receiving a provisional refusal on relative grounds or opposition from the third patches but i will talk about this um in more detail um later in our webinar um in our new world it's natural but most of the offices have long cursed and switched to electronic workflow and our jurisdictions so are no exception so in russia ukraine and kazakhstan it is has long been possible to fly applications electronically and as a result um further conduct the entire workflow uh in electronic form which i t
Thanks Normand your participation is very much appreciated
- Giuseppina Muhn
About the author
I've studied computational biology (bioinformatics) at Berkeley College in New York City and I am an expert in human evolution. I usually feel loved. My previous job was logging tractor operator I held this position for 12 years, I love talking about book discussion clubs and sketching. Huge fan of Gordon B. Hinckley I practice snow skiing and collect vintage guitars.
Try Not to laugh !
Joke resides here...