A question that comes up constantly from clients entering the Ukrainian market: the packaging is distinctive and so is the name — is that a trademark matter or a design matter? They are different instruments answering different questions, and the gap between them is where copying happens.

The short answer

A trademark answers the question whose product is this. It protects the sign by which the consumer identifies the producer: the name, the logo, the combination of both.

An industrial design answers the question what does this product look like. It protects the appearance of the product or part of it — shape, lines, contours, colour, texture, ornamentation.

Both can coexist on the same bottle: the name and the label artwork as a trademark, the shape of the bottle itself as a design.

The differences that matter in Ukraine

• Requirement: distinctive character for a trademark; novelty and individual character for a design;
• Term: ten years renewable indefinitely for a trademark; five years renewable in five-year periods up to a maximum of 25 years for a design;
• Maintenance: a fee once every ten years for a trademark; an annual fee plus renewal every five years for a design;
• Unregistered protection: effectively none for trademarks; three years for designs, but only against copying;
• Classification: Nice for trademarks, Locarno for designs.

The annual maintenance fee for designs is the point most often missed by foreign holders managing Ukrainian portfolios alongside EU ones.

When the trademark is the right instrument

Where the value sits in the name — the customer returns because they remember what you are called. Retail, services, and any producer whose brand appears on the label.

Without a registration it is also difficult to act against a competitor adopting a similar name. Oppositions and enforcement both start from a registered right.

When the design is the right instrument

Where the value sits in the appearance — where a competitor can copy the form even under a different name. Furniture, lighting, tableware, bottles and flacons, footwear details, jewellery, device housings, and label artwork as a composition.

A trademark does not help here: it protects the sign, not the shape of the article.

When both are needed

Often the strongest combination. Take a producer of craft syrup with a distinctive name, a recognisable label and an unusual bottle:

• the trademark on the name and on the composite sign stops a competitor selling the same product under a similar name;
• the design on the bottle shape and the label artwork stops a competitor copying the appearance under a different name.

Without the second, the gap is obvious: a competitor copies the bottle exactly, puts its own name on it, and there is formally nothing to complain about on trademark grounds.

Unregistered design protection is not a substitute

Ukrainian law gives three years of protection from the date a design is made available to the public in Ukraine — published, exhibited, used in trade.

The limitation is significant: that protection allows the holder to prohibit copying only. If the competitor shows it arrived at a similar design independently, there is no infringement. Both the date of disclosure and the fact of copying must also be proved, which is harder than it sounds.

Unregistered protection is therefore a bridge while the application is prepared, not a strategy.

Common mistakes

«We registered the trademark, so the design is protected.» It is not. A trademark does not prevent copying of the shape of the article.

«The design will protect the idea.» It will not. It protects appearance only. A technical solution requires a patent for an invention or a utility model.

Showing the product before filing. Novelty matters for designs, so a public launch before filing complicates matters. File first, exhibit second.

Forgetting the annual fees. Unlike a trademark, a Ukrainian design must be maintained annually or the registration lapses.

How to decide

A simple question: if a competitor copies this, what will they copy first? The name and signage — file the trademark. The shape and look — file the design. Both — price both.

Working with us

We file and prosecute both trademarks and industrial designs in Ukraine for foreign applicants, and advise on which instrument fits the product. More on how we work with IP firms.