Having been granted a trademark certificate of Ukraine, its holder acquires the exclusive right to disposal of the trademark at one's own discretion, whilst observing the rights and legal interests of third parties.
The following agreements are the basis for disposal of exclusive rights in a trademark:
- License agreement for using a trademark
- Agreement on the assignment of exclusive property rights in a trademark.
Agreements on assignment of exclusive property rights in trademarks are subject to obligatory state registration in Ukraine.
A license agreement for using a trademark can also be registered by the state as elected by either party to the agreement.
For state registration in Ukraine of the aforementioned agreements, we need to receive the following:
- Three copies of the signed agreement (or extracts from an agreement);
- One copy of a power of attorney for exercising agency rights related to state registration of the agreement.
Three copies of the agreement and the power of attorney are sent to the Patent Agency of Ukraine for registration.
The term of state registration of an agreement by the Patent Agency of Ukraine is two months from the date of its receipt.
During state registration of the agreement, the Patent Agency examiner will analyse the file of documents received. It must include the following documents:
- Three copies of the agreement
- A petition for agreement registration
- A power of attorney for document processing; and
- A document proving payment of a governmental fee for agreement registration.
The governmental fee for agreement registration depends on the number of trademark certificates of Ukraine indicated in the agreement.
In the event of incompliance of the received file of documents with the requirements of Ukrainian legislation, the Patent Agency examiner will send an inquiry to the holder of the certificate of Ukraine. In this case, the holder of the trademark will have two months to make corrections. The term for responding to the Patent Agency inquiry cannot be prolonged. If no response will be received, the examiner makes a decision on rejecting agreement registration and returns the received file of documents to the applicant.
When the Patent Agency receives a response to the inquiry, the examiner has two weeks at his disposal to analyse the response and agree with the arguments received or make a decision on rejecting agreement registration. If the Patent Agency examiner shall decide on state registration of the agreement, the following actions are taken:
- A decision on state registration of the agreement is drafted
- The decision is published in the Official Bulletin of Ukraine for Intellectual Property
- Two copies of the agreement are securely bound and notarised officially, and sent to the agent of the holder of a trademark certifcate of Ukraine. One copy of the agreement is retained by the Patent Agency of Ukraine, and is used in case the Parties to the agreement will lose the agreement. They can request a copy of the agreement retained by the Patent Agency for themselves, or to present it in the event of a judicial dispute;
- A copy of the decision on state registration is prepared and published in the Official Bulletin, and send to the holder's agent.
Materials on state registration of the agreement are sent to the applicant after information about the agreement has been published in the Official Bulletin.
Inventa's experts perform all actions related to processing cases in disposal of rights in a trademark of Ukraine.
In the following is a Table indicating legally relevant actions related to state registration of cases in disposal of property rights in a trademark.
|Description of legally relevant actions||Governmental fee, USD||Company services, USD|
|1. Preparing and submitting documents related to assignment of rights in a trademark certificate of Ukraine||40.00||135.00|
|2. Preparing and submitting documents related to state registration of a non-exclusive or exclusive license for a certificate of Ukraine||40.00||135.00|
|3. Preparing and submitting documents related to making amendments to the State Registry on the license granted||40.00||135.00|
|4. Filing a request for an extract on the legal status of a trademark certificate of Ukraine||40.00||135.00|
|5. Filing a request for a registered agreement on disposal of rights in a trademark certificate of Ukraine||40.00||135.00|