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Registration is a pre-requisite to the effective enforcement of a trademark. Anyone failing – whether intentionally or not – to register his marks would be exposed to potential losses and the inability to make any claims against acts of infringement or unfair competition. Trademark registration is not as simple as it may seem – a growing attention to this subject matter is demonstrated by administrative and court decisions.Cases that may look fairly straightforward may turn out to be complex and affecting the interest of third parties which require participation of specialists from various fields.

Only a trademark attorney with the relevant knowledge, education and experience will be able to provide support necessary to prosecute a trademark application successfully and look after a portfolio of registered marks – for example, by renewing registrations, enforcing trademarks or filing invalidation actions against similar registrations. A trademark attorney must be educated in both law and a technical or linguistic subject (in order to understand the linguistic peculiarities of a trademark, as well as the nature of the goods and services covered by the trademark). This allows us to efficiently solve a multitude of issues arising in the process of obtaining and enforcement of rights for trademarks including similarity of goods and services, correct classification of goods and services. This makes it possible to identify the scope of protection of trademarks at the stage of preparation of applications as well as during subsequent enforcement of rights for the trademark. Hence, advice of a patent attorney is focused on the field of activity of the client. Depending on the nature of business of the client, our law firm may assign a trademark attorney who has specialized education and work practice specifically in the field of business of the client.

A separate niche for trademark attorney requiring competent skills is overriding provisional refusals of the Ukrainian patent office in case of extension of a trademark according to the Madrid agreement / protocol.

Assessment of protectability of a trademark Trademark search