Ukraine IP Development

The intellectual property protection system of Ukraine is multilevel and regulated by the integral system of the international and national laws. Ukraine is a member of World Intellectual Property Organization and a signatory of a number of international agreements and conventions in the sphere of intellectual property protection.
 
In 2006 and 2007 Ukraine achieved substantial success as to the improvement of the national legislation and state regulation in the sphere of IP protection in particular concerning meeting the demands for WTO entering. After amendments introducing to the optical discs licensing legislation in 2005 Ukraine continued programs against the piracy in the optical discs production and export.
 
At the current moment the main reference point for further development of IP protection system in Ukraine is the Ukraine–European Union Association Agreement Association Agreement, which entered into force since September 01, 2017. Chapter 9 of the Association Agreement contains wide range of articles related to the IP sphere and aimed to harmonisation of legislation of Ukraine with the legislation of the European Union. Though the Ukrainian state authorities are obliged to implement the provisions of the Agreement within 3 years upon its signing, according to the legislation the International agreements ratified by the Parliament of Ukraine become the part of the national legislation. Thus, the Association Agreement between Ukraine and the EU should be regarded as the part of the internal legislation of Ukraine starting from September 01, 2017.
 
Patent
 
Patent protection may be given to an invention not contradicting the public interest, the principles of humanity and morality and corresponding to patentability demands, namely novelty, inventive step and industrial appliance.
 
The subject of the invention may be products (equipment, substance, microorganism culture), processes and the usage of the earlier known product with the new purpose.
 
The right for obtaining the patent has the inventor, the employer (under condition of the employee's invention), the successor of the inventor or the employer.
 
The patent for the invention provides to the holder the exclusive right for the usage of the invention and for the prohibition to other persons to use the invention, including the right for the import/export of patented products and of products made according to the patented process.
 
The validity term of the patent is 20 years from the application date. The protection of the inventions can be extended for no more than 5 years only for patents with subject being a remedy or means for protection of animals or plants for usage of which the approval of the special state body is required.
 
The rights for the patent are valid from the date of the publication about the patent issuance.
 
The result of intellectual activity can be protected as a utility model if it is new and industrially applicable. Compared with inventions the utility model does not require inventive step as patentability demand. Utility models are protected by patents for a period of 10 years.
 
Formerly the industrial designs were registered and protected according to the national law “On the protection of rights to industrial designs”, however starting from September 01, 2017 the provisions of the Association Agreement should be applied, namely: industrial design is the outer appearance of the goods or its part. The industrial should be protected if it is new and has individual character. The general term of legal protection of the industrial design is up to 25 years (5 years is the basic term which may be prolonged for five years each time, but not more than 25 years in sum).
 
According to the Association Agreement the unregistered industrial designs are protected within 3 years from the date of disclosure thereof to the public.
 
The Ukrainian legislation provides the wide range of remedies against the infringement of patent rights: removal of the infringing goods from trading circulation, removal of the materials and tools which are mainly used for the production of infringing products, recovery of damages, etc. The protection of the rights of the patent holder is conducted within the administrative, criminal and court proceeding.
 
Trademark
The subject of the trademark protection may be the verbal, device, three dimensional marks and their combinations executed in any colour or combination of colours. No specific provision is made concerning trademarks consisting of sound and smell.
 
The protection is granted to the trademarks not contradicting the public interests, humanity, morality, requirements of the Law of Ukraine On Conviction of Communist and National-Socialist (Nazi) Totalitarian Regimes in Ukraine and Prohibition of Propaganda of Symbolics Thereof and not coming under the absolute and relative grounds for the refusal. The Letters of Consent for the registration of the trademark are not accepted by the Trademark Office of Ukraine as a basis for registration of the trademark.
 
There is no special opposition period in Ukraine.
 
The trademark can be opposed during the examination procedure however currently trademark applications are not undergoing the publication at the examination stage. The publication of the trademark is conducted after the registration of the trademark and after the publication the trademark can be opposed in the court during the whole period of trademark validity but taking into account the general legislative provisions concerning the limitation period which is 3 years. According to the current court practice the courts tend to use the limitation period in cases when the claimant was obviously aware about the infringement during three or more years before the claim was filed.
 
The trademark may be canceled on the basis of absolute and relative grounds in the frame of court proceedings. At the current stage the courts in Ukraine use more comprehensive approach to the consideration of the trademark invalidation cases forming the court practice of non-standard disputes. For example, within the last years the headline-making cases were considered (or are still considered at the current moment) in respect to the recognition of three-dimensional trademark (the trademark reproducing confectionery shape) as non-protectable, recognition of the trademarks being the semantic equivalent in different languages as confusingly similar, recognition of the combined trademark with descriptive dominant element as non-protectable on the basis of descriptiveness, etc.
 
The non-use period of the trademark is 5 years from the date of the registration of the trademark according to the Association Agreement. The cancellation of the trademark on the basis of non-use is conducted through court proceeding.
 
The exclusive right of the trademark owner is granted against use of identical or confusingly similar marks for the same or similar goods and services. The owner of the well-known mark can prohibit the use of the trademark also for the goods and services which are not similar and identical. Both registered and non-registered trademarks may be recognized well-known in the frame of the court proceedings or in the Appeal Board. Since 2003 when the legislative provisions in respect to the recognition of the trademarks well-known were adopted a great quantity of trademarks underwent this procedure (McDonald's, ROLEX, YOUTUBE, Google, Forbes, LEXUS, etc.).
 
The domain name in the national .ua zone may be registered only under condition of the registration of the trademark for any of the Classes of the ICGS.
 
Trademarks are protected for 10 years and can be renewed for additional 10 year periods without limitation.
 
The Ukrainian legislation provides the wide range of remedies against the infringement of trademark rights: removal of the infringing goods from trading circulation, removal of the materials and tools which are mainly used for the production of infringing products, recovery of damages, etc. The protection of the rights of the trademark holder is conducted within the administrative, criminal and court proceeding.
 
On September 29, 2017 the special intellectual property court (“High Intellectual Property Court”) was established in Ukraine in the frame of the reform of national judicial system. Currently the great expectations of the local legal community and foreign investors are connected with creation of the said High IP Court, since it will substantially increase the quality of consideration of the cases through creation of the special magistracy of IP judges surely making the whole system of IP protection more just and predictable. The structure of the High IP Court is now being formed and its launch is scheduled on the year of 2019.
 
Copyright
As the general rule subjects of copyright are protected without the registration for a period of 70 years after the author’s death, with subject matter of neighboring rights protected for 50 years.
 
There is a possibility of the registration of the copyright at the State Service of Intellectual Property of Ukraine with granting the Certificate of Registration. In the frame of registration procedures no examination concerning the object of copyright is conducted. Despite the fact that the registration does not create the copyright the Certificate of Registration is the essential and sufficient proof of copyright existence for the third parties including any court procedures concerning the copyright infringement.
 
That is to say having the Certificate of Registration the party is not required to prove its copyright by any other means.
 
Recently the liability for copyright infringement was sufficiently aggravated.
 
Nowadays according to the Law of Ukraine On Copyright and Related Rights the copyright holder can demand not only to seize the infringing goods and tools and materials which are mainly used for the production of the infringing goods and recovery of damages but also at his own discretion instead of recovery of damages may demand the compensation payment which according to limitation may amount from 1,100 EURO to 5,460,000 EURO (subject of currency fluctuation and minimum wage). For the grant of the compensation only the fact of infringement shall be proven. The amount of the compensation granted depends on the duration of infringement and other factors. The court may also impose the penalty which is collected to state budget in the amount up to 10% of the amount of judgment.
 
Domain Names
As it was mentioned above the domain name in the national .ua zone may be registered only under condition of the registration of the trademark for any of the Classes of the ICGS. But the trademark registration is not the compulsory condition for the domain names registration in other national zones like .com.ua, .net.ua, etc. During the last few years the number of domain name cases in Ukrainian courts increased significantly. Generally Ukrainian courts understand the unique character of the domain names and the importance of its protection. According to the current practice the right holder may demand the cease of the trademark usage in the domain name only in case the goods similar to those for which the trademark is registered are promoted and proposed for selling on the web-site under such domain name. In the last few years Ukrainian courts have considered headline-making cases in respect of such domain names like yahoo.com.ua, michelin.com.ua, pegintron.com.ua and google.ua.
 
IP Law Updates and IPR Application Regulations in Ukraine
1. Patent The relations as to the obtaining and execution of the rights for the invention and utility models are regulated by the provisions of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models” of December 15, 1993 No. 3687-XII (With last amendments introduced according to the following Law No. 5460-VI of October 16, 2012). Law of Ukraine “On Protection of Rights to Industrial Designs”, December 15, 1993, No. 3688-XII (with last amendments introduced according to the following Law No. 5460-VI of October 16, 2012).
 
Main Laws, Regulations and Interpretations: Law of Ukraine “On Protection of Rights to Inventions and Utility Models”; Law of Ukraine “On Protection of Rights to Industrial Designs”; The Rules of Composing and Filing of the Application for the Invention or Utility Model; The Rules of Consideration of the Application for the Invention or Utility Model; The Rules of Composing and Filing of the Application for the Industrial Design; The Rules of Consideration of the Application for the Industrial Design; The Regulation of the State Register of Ukraine of patents on Inventions; The Regulation of the State Register of Ukraine of patents on Utility Models; The Regulation of the State Register of Ukraine of patents on Designs; The Instructions of the Validity Term Extension of the Patent the Object of which is the Substance the usage of which needs the Authorization of the Specialized Body; Instruction for the Issuance of the Patents of Ukraine for the Inventions protected in accordance with the Author Certificate of USSR.
 
Main International Treaties: Paris Convention for the Protection of Industrial Property of March 20, 1883; Patent Cooperation Treaty of June 19, 1970; Patent Law Treaty of June 1, 2000; Budapest Treaty on the International Recognition of the deposit of Microorganisms for the Purposes of Patent Procedure of April 28, 1977; Hague Agreement concerning the International Registration of Industrial designs (the Hague Act of 1960 and Geneva Act adopted on July 2, 1999). Association Agreement between the European Union and the European Atomic Energy Community and their member states, of the one part, and Ukraine, of the other part (Chapter 9, “Intellectual Property”).
 
2. Trademarks The relations as to the obtaining and execution of the rights for the trademark are regulated by the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services” of December 15, 1993 No. 3689-XII (With last amendments introduced according to the following Law No. 317-VIII of April 09, 2015).
 
Main Laws, Regulations and Interpretations: Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”; The Rules of Composing, Filing and Consideration of the Application for the Issuance of the Certificate for the Mark for Goods and Service; The Regulation of the State Register of Ukraine of Certificates on Marks for Goods and Services; The Rules for the Consideration of the Issues about the Entering of the designation “Ukraine” to the Marks for Goods and Services.
 
Main International Treaties: Paris Convention for the Protection of Industrial Property of March 20, 1883; Madrid Agreement concerning the International Registration of Marks of April 14, 1891; Protocol relating to the Madrid Agreement concerning the International Registration of Marks of June 27, 1989; Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks adopted on June 15, 1957; Trademark Law Treaty of October 27, 1994; Singapore Treaty on the Law of Trademarks of March 27, 2006; Nairoby Treaty on the Protection of the Olympic Symbol of September 26, 1981. Association Agreement between the European Union and the European Atomic Energy Community and their member states, of the one part, and Ukraine, of the other part (Chapter 9, “Intellectual Property”).
 
3. Copyright The legal basis of the regulation of the appropriate relations in the system of the national legislation forms the Law of Ukraine “On Copyright and Related Rights” first adopted on December 23, 1993 and substantially amended under necessity of correlation of the Ukrainian legislation to the international standards on July 11, 2001 and amendments introduced in 2003, 2004.
 
Main Laws, Regulations and Interpretations: The Law of Ukraine“On Copyright and Related Rights”; The Law of Ukraine“On Distribution of Copies of Audiovisual Works, Phonograms, Videograms, Computer Programs, Data Bases”; The Law of Ukraine“On the Specifics of State Regulation of the Activities of Economic Subjects related to the Production, Export and Import of Discs for Laser- Readable Systems”; The Law of Ukraine “On the Protection against Unfair Competition”.
 
Main International Treaties: Berne Convention for the Protection of Literary and Artistic Works (Paris Act of July 24, 1971, amended of September 28, 1979); Rome Convention for the Protection of the Performers, Producers of Phonograms and Broadcasting Organization of October 26, 1961; WIPO Copyright Treaty of December 20, 1996; WIPO Performances and Phonograms Treaty of December 20, 1996.
 
Association Agreement between the European Union and the European Atomic Energy Community and their member states, of the one part, and Ukraine, of the other part (Chapter 9, “Intellectual Property”).
 
Provided by Mikhailyuk, Sorokolat and Partners.




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