Orest Hlado

Trademarks · Lviv

Protecting a trademark from copies and refusals

A coffee shop with your name has opened nearby. Someone has filed for a similar mark. The examiners have sent a refusal. Each of these situations has its own tool, and most often it never gets to court.

TRADEMARK PROTECTION
from €150
  • Analysis of the situation and your rights
  • Demand letter to the infringer
  • Opposition or reply to the examiners
  • A plan if the demand letter doesn't work

The price depends on the situation. I'll name it once I've seen the documents.

TIMELINE
From 2 days for a demand letter
FROM YOU
Certificate and evidence
FORMAT
Remotely
CONSULTATION
from UAH 2,000

A registered mark works when it's defended

A certificate gives you the right to stop others from using your name or a similar one. But nobody will come and defend it for you. A copy has to be spotted, documented and told to stop.

If there's no mark yet, it's a different situation. Then you have to act through other tools: unfair competition, earlier use of the name, opposition to someone else's application. The chances are lower, so it's better not to let it come to that.

What I work on

  • Demand letters to those using your mark or a similar one.
  • Oppositions against other people's applications that resemble your mark.
  • Replies to provisional refusals and examination refusals.
  • Appeals against decisions on your application.
  • Complaints to marketplaces and social networks where copies are sold.
  • Monitoring new applications that resemble your mark.

What to do if someone is using your name

SituationTool
Someone opened a business with your nameDemand letter, then court
Someone filed for a similar markOpposition to the application
The examiners refused youReply to the decision, appeal
Copies on a marketplaceComplaint to the platform citing the certificate
The mark was registered before yoursAnalysis of earlier use and non-use

A demand letter often settles it. The infringer sees the certificate, realises they'd lose in court and changes the name. That's what happened with the coffee shop in the case below.

Brands that lost their own name

Aspirin, thermos, escalator and cellophane were once registered trademarks. They became generic words because their owners didn't fight back in time when everyone started using the name for any similar product. Google was once worried about this too, and held its ground.

For your mark the lesson is simple: if everyone starts using the name, react straight away. Over time, silence works against the owner.

Non-use of a mark

If a mark isn't used for three consecutive years, anyone can ask a court to terminate it. Sometimes that's your chance to take back a name someone registered and left on the shelf. I check situations like this as part of the name check.

How it works

i
Documents
Certificate, screenshots, evidence of use.
ii
Analysis
Your rights and chances, in plain words.
iii
Action
Demand letter, opposition or reply.
your signature here
iv
Result
If that doesn't help, a plan for the next step.

Your part: screenshots and the dates you noticed the copy. The rest of the arrows are mine.

LEGAL BASIS

Law of Ukraine “On the Protection of Rights to Marks for Goods and Services” (rights of the certificate owner, opposition to an application, termination of a certificate for non-use); Law of Ukraine “On Protection Against Unfair Competition”.

Frequently asked questions about trademark protection

How much does trademark protection cost?

From €150. A demand letter costs less, a complex appeal more.

What if there's no registered mark and the name was stolen?

There are chances, but smaller ones. We look at who started using the name first and whether someone else's application can be opposed.

Can a mark still in registration be protected?

Rights arise on registration, but priority counts from the filing date. Some steps can be taken already.

Do I have to go to court?

No. Most situations are resolved with a demand letter or a complaint to the platform. It goes to court if the infringer doesn't respond. I'm a lawyer but not a licensed advocate, so I prepare the claim, and an advocate represents you in court.

DONE
CASE No. 058
The coffee shop that registered its name in time

A small coffee shop, one location. The owner secured the name straight away, though he could have said “later”. A few years on, a copycat with the same name opened nearby. One demand letter, and the copy dropped the name without going to court.

How one timely application protected a coffee shop →

Haven't registered the mark yet? Start with registration in Ukraine. Want to let partners use your mark? See trademark licensing and assignment.

Describe what happened with your name