- What is a geographical indication and how does it differ from an appellation of origin?
- What for a trademark should be registered?
- Explain please, who can benefit from the protection of industrial designs?
- What advantages are gained by an owner of a well-known trademark?
- In what way the trademark protection in the EU countries can be ensured?
- Can a Ukrainian company register its trademark in foreign states and in what way?
- Is it possible to defend really the rights in trademarks in Ukraine?
What is a geographical indication and how does it differ from an appellation of origin?
The geographical indication is a name of geographical place (country, region in country, city, community, etc.) used for designation of goods originating from this geographical place. At that certain features, characteristics or reputation of these goods are mainly caused by natural environment or human factor characteristic for this geographical place, or by both factors together. The main thing is that these goods (or their essential component) should be really manufactured there (i.e. they should originate exactly from this geographical place). At the same time all manufacturers of such goods in this geographical place have the right to use this geographical indication for designation of their goods. The only condition is that those designations, which will be used by these manufacturers, should not deceive the consumers as to a person manufacturing the goods. Such designations as Khokhloma, Gzhel, Petrykivska paintings, Vologda lace can be examples of the geographical indication.
The appellation of origin is a special type of the geographical indication. It differs from the geographical indication by the fact that the goods, for which the name of geographical place can be used, have specific features that are exclusively or mainly caused by natural environment of this geographical place or natural environment and human factor. The appellations of origin are mainly used for agricultural produce and wines. The most striking example of the appellation of origin of goods can be such designations as the names of mineral waters: Truskavetska, Myrgorodska, Borjomi. At the same time all manufacturers of such waters can use the name of this good as an element in their trademarks, if they obtain conclusion that they make water of the really established quality and appropriate characteristics.
Only trademark registered in accordance with established procedure (or international registration) gives the exclusive right to its owner to prevent other persons from using the same or similar trademark for the same or similar goods. The owner of the registered trademark has also the exclusive right to transfer the intellectual property right in the trademark or authorize (grant license to) its use. Thus, the trademark registration is the most reliable means of protection of investments in development and promotion of the goods marked with this trademark.
The fact is that the industrial design is a result of the human creative activities aimed at giving the aesthetic look, decorativeness to articles of mass production. This is a picture embodied in products that enables these products to become the most attractive in consumers’ opinion. At the same time the product should exercise its inherent function. The object of industrial design can be a shape of product, its coloration, i.e. color solution, texture of material, from which it is made, layout of elements of this product. The industrial design is an idea embodied by its creator in the original shape of an automobile and table, fork and saucepan, excavator and carpet, picture of napkin, fabric, wall-paper or toilet paper, and package of perfume, sweets, bottle for wine or milk. It should be stated that an industrial design must be novel in order to obtain protection. At that the novelty of the industrial design is considered globally. It is important that the industrial design should embody a creative design of its author and should be determined by this creative design, i.e. be original.
The legal protection allows the owner to prohibit other persons from unauthorized manufacturing the industrial design or imitating it and derive commercial benefit from industrial application of the present intellectual property object. Consequently, the legal protection of industrial designs exercises an important function of protection of one of the distinctive features, owing to which manufacturers succeed in the market. At the same time the legal protection serves as a motive for enterprises to invest money promoting improvement of appearance of the goods and encourages the fair competition in the market - thus, an ultimate consumer obtains the aesthetically attractive and varied goods.
The legislation of Ukraine does not require the compulsory registration of a well-known trademark in accordance with established procedure and at the same time it gives the very broad legal protection:Firstly, according to the Law of Ukraine "On Protection of Rights in Trademarks and Service Marks", a designation may not be registered in Ukraine, which is identical or confusingly similar to a trademark recognized as well-known in Ukraine.
Secondly, the legal protection of a well-known trademark covers also the goods and services that are not related with those, for which the trademark has been recognized as well-known in Ukraine, if use of this trademark by other person for such goods and services points at connection between them and the owner of the well-known trademark, and the owner’s interests might be damaged by such use.
By means of trademarks of the European Community (Community Marks). A trademark registration authority of the EU is the Office for Harmonization in the Internal Market located in the Spanish city Alicante. The average duration of all procedure, beginning from the date of filing and till the moment of registration, is approximately 2 years provided that objections on the part of the third persons concerned are absent. The duration of the trademark legal protection is 10 years. It can be repeatedly extended by request of the trademark owner for ten years from the date of filing of the appropriate petition to the Office. The filing of application requires certain financial expenditures for payment of the fee amounting to ˆ975 for filing of application and ˆ1100 for trademark registration. The application can be made in one of the official languages of the Office, namely in Spanish, German, English, French or Italian. The EU trademark (in other words - Community Mark) is protected from reproduction, imitation on all territory of the EU. The owner is empowered to prohibit any third persons from using identical or confusingly similar trademarks on the mentioned territory without his authorization.
Any Ukrainian company can file an application to a foreign state and obtain rights therein, using an opportunity of filing a trademark application in each state being interesting to it. At the same time it is necessary to know the trademark registration requirements established in this state. Usually all actions concerning the trademark registration in a foreign state are taken through a patent attorney. Such filing will require considerable financial expenditures, since filing of each such application requires not only translation in the respective language but also payment for services of the patent attorneys of these countries. Moreover such registration takes quite a lot of time.
It is possible to make use of other way - to file an application for international registration, using the procedure provided by the Madrid System (the Madrid Agreement on International Registration of Marks and the Protocol Concerning this Agreement). Ukraine is a member state of these international agreements. The filing of such application gives an opportunity to obtain protection in all 77 member states of this system at once or in the most interesting states. The application for international registration is filed in French (under the Protocol - in English). The duration of the registration is 20 years (or 10 years – under the procedure of the Protocol to the Madrid Agreement) extendable for the required term.
At the same time it is possible to designate the Office for Harmonization in the Internal Market of the EU and obtain a Community Mark. It is important that the USA has acceded to the Madrid System. The application for international registration is accompanied by payment of certain fees, which are transferred directly to the International Bureau of WIPO. All fees are fixed in Swiss francs (CHF). The basic fee for a black-and-white trademark amounts to CHF653, for a color trademark - CHF903, additional fee for each class of the goods and services exceeding three classes - CHF73, additional fee for each country, for which the registration is claimed - CHF73. It must be kept in mind that, except for the mentioned fees, there are individual fees established by some member states.
It is possible! The legislation of Ukraine gives a real opportunity to defend intellectual property rights in trademarks by means of administrative and legal procedures. The rules for defense of intellectual property rights are contained in the Civil, Criminal, and Customs Codes of Ukraine. There is an opportunity to prevent infringement at the customs border of Ukraine using existing mechanisms. The criminal legislation functions as well.