Oleksandra Soroka, an attorney at law at Synergy IP Law Agency, provides answers to the most common questions businesses have when seeking legal advice on registering trademarks in the Ukrainian Customs Register and ensuring further IP protection at customs.
Question:
What is required to register a trademark in the Customs Register?
Answer:
To register a trademark in the Customs Register of IP objects, the following requirements must be met:
- The trademark must be registered in Ukraine. A trademark can be added to the Customs Register only for goods in the classes of Nice Classification, for which it was registered. A document confirming trademark registration or valid IP protection in Ukraine must be submitted.
- The applicant must be the trademark owner. Importers or other entities authorized to use the trademark in Ukraine under a license agreement cannot register the trademark in their own name.
- Comprehensive information must be provided, including details about manufacturers, importers/exporters, product descriptions (including product categories, photos, and Ukrainian Classification of Goods for Foreign Economic Activity (UCG FEA), packaging details, and any previously detected counterfeit goods (if applicable).
Question:
Can official representatives of the trademark owner in Ukraine, such as distributors, official importers, or local offices, register the trademark in the Customs Register in their own name? If not, what are the alternatives?
Answer:
Only the trademark owner can register a trademark in the Customs Register. However, authorized representatives can be listed in the register as:
- Authorized persons for product identification
- Representatives assisting in IP rights protection
- Recognized importers/exporters
Question:
What should be done if there is no information about the UCG FEA codes?
Answer:
The relevant UCG FEA codes can be found using the Customs Tariff database, by consulting a customs broker, Ukrainian IP attorney, or through the foreign trade department of the company.
Question:
How long does the registration process take?
Answer:
The registration process takes up to 30 working days from the date of application submission. However, if customs authorities require additional information or clarifications, the process may take longer.
Question:
Is it possible to submit an application without providing information about importers?
Answer:
Yes, providing importer/exporter details is not mandatory. This information can be added later, even after the trademark is registered in the Customs Register.
Question:
What additional costs may arise after registering the trademark in the Customs Register?
Answer:
A trademark is added to the Customs Register for one year and must be renewed annually. Updates to the registration details may also be required (e.g., changes in UCG FEA codes, product assortment, importers, or manufacturers).
Additional expenses may include:
- Issuing letters of permission for third parties to import/export goods
- Handling customs suspension of goods, such as expert opinions, destruction procedures, or legal actions
There are no official government fees for registration, renewal, or amendments. Only legal service fees apply.
Question:
Does registering a trademark in the Customs Register allow the owner to prohibit importers not listed in the register from importing goods?
Answer:
A ban on imports is only possible if the goods are counterfeit. Customs authorities will not suspend the clearance of original (genuine) goods.
Question:
What steps should be taken if customs suspends counterfeit goods?
Answer:
Customs can suspend clearance for up to 10 working days, with a possible extension for another 10 working days if necessary. During this period, the right holder must decide on the most effective enforcement strategy and inform customs of the following steps, which may include negotiations with the importer.
Possible enforcement actions include:
- Destruction of counterfeit goods – Requires the written consent of the importer or their failure to object within 10 working days.
- Re-labeling or repackaging – Must be approved by the trademark owner.
- Administrative violation proceedings – Requires a court expert’s opinion confirming that the imported goods infringe the trademark.
- Court proceedings – A legal claim can be filed to recognize the goods as counterfeit, stop the infringement, and order their destruction.
Author: Oleksandra Soroka
Kyiv, Ukraine
