Tatyana Lipovaya, Ph.D., Head of Licensing Dept., Trademark Counsel for IPR GROUP
Alexander Fomenko, Trademark Counsel for IPR GROUP
Andrey Zharov, Patent Counsel for IPR GROUP
Sergey Ischuk, Trademark Counsel for IPR GROUP
It is popular knowledge that on July 11, 2017, the Council of the European Union completed the ratification process of the Association Agreement with Ukraine (hereinafter referred to as the Agreement), which was entered into force on September 1, 2017.
A considerable part of the Agreement deals with the approximation of Ukrainian legislation in the field of intellectual property to EU standards and norms, and includes a chain of provisions that differ from those previously enshrined by the national legislation of Ukraine.
Taking into account that under the law of Ukraine, international treaties prevail over national legislation, the ratification and implementation of the Association Agreement with the EU automatically introduced the norms of EU legislation incorporated in the Agreement, into action at the national level in Ukraine.
In this regard, judicial and legal practices are currently tied to the provisions of the Association Agreement with the EU, despite the fact that the norms stipulated by the Agreement have not yet been implemented in the national legislation by adopting appropriate legislative acts on the implementation of said changes.
In this article, we will like to consider some of the provisions of the Agreement concerning various aspects of intellectual property:
– Protection of industrial designs
The first dissimilarity is in relation to the conditions of patentability, which is; in the Law of Ukraine “On the Protection of Rights to Industrial Designs”, Section 2, Article 6, paragraph 1 states that “An industrial design meets the patentability conditions, if it is new.”
In accordance with Article 213 of the Agreement, Paragraph 1 “Ukraine and the EU Party shall provide for the protection of independently created designs that are new and have individual character.”
Consequently, upon the execution of the Agreement, the requirement for “individual character” is imposed on designs. A design shall be considered to have individual character if the overall impression it produces on an informed user differs from the overall impression produced on such a user by any other design, which has been made available to the public.
In other words, the “individual character” can be called a non-obvious appearance of the design. Also, in accordance with the Association Agreement, it is proposed to introduce a 3-year period for protection of unregistered designs.
The second difference is that according to the Law of Ukraine “On the Protection of Rights to Industrial Designs”, Section 2, Article 6, paragraph 3. – “The recognition of an industrial design as patentable is not affected by disclosure of information on it by the author or a person who obtained such information from the author directly or indirectly within six months before the date of filing the application with the Office or, if priority is claimed, before its priority date.”
In accordance with Article 213 of the Agreement, Paragraph 7, “Disclosure shall not be taken into consideration for the purpose of applying paragraphs 3 (interpretation of novelty) and 4 (interpretation of individual character) of this Article if a design for which protection is claimed under a registered design right has been made available to the public:
a) by the designer, his/her successor in title, or a third person as a result of information provided or action taken by the designer, or his/her successor in title; and
(b) during the twelve-month period preceding the date of filing of the application or, if priority is claimed, the date of priority.”
As we see in accordance with the Agreement, the term of grace period after the disclosure of information about a design has been doubled.
Another difference is that according to the Law of Ukraine “On Protection of Rights to Industrial Designs”, Section 2, Article 5, paragraph 5. – “The period of validity of a patent for an industrial design is of 10 years from the date of filing the application to the Office and may be extended by the Office at the request of the patent’s owner, but for not more than five years.”
In accordance with Article 214 of the Agreement, paragraph 1 – “The duration of protection available in the EU Party and Ukraine following registration shall amount to at least five years. The right holder may have the term of protection renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing.”
The agreement extends the maximum term of patents for industrial designs from 15 to 25 years.
It should be noted that the Agreement clearly defines the period of protection of patents for designs, as 5-year periods.
We will also like to draw attention to the introduction of the post-grant opposition procedure; that is, the administrative process, which allows third parties to formally challenge the validity of a patent granted for industrial designs at the Appeal Board within the whole period of protection and after its completion.
As of December 2018, Ukraine did not make any changes to the legislative framework on industrial designs, however the Draft Law № 5699 of January 23, 2017, “On introducing amendments to some legislative acts of Ukraine regarding the improvement of the legal protection of intellectual (industrial) property” was under Parliament review, but it had not passed the Parliament’s hearings.
– Protection of inventions
According to the current legislation, namely, the Law of Ukraine “On Protection of Rights to Inventions and Utility Models” Section 2, Article 6, paragraph 4 “Term of validity of a patent for an invention, the object of which is a medicinal, animal protection product, plant protection product etc., and which requires the authorisation of the relevant competent authority, may be extended at the request of the holder of the patent for a period equal to the period between the filing date and the date of obtaining such an authorisation, but not more than for 5 years.”
The Article 220 of the Agreement provides the following:
1. The Parties recognise that medicinal and plant protection products protected by a patent in their respective territory may be subject to an administrative authorisation procedure before being put on their market. They recognise that the period that elapses between the filing of the application for a patent and the first authorisation to place the product on their respective market, as defined for that purpose by the relevant legislation, may shorten the period of effective protection under the patent.
2. The Parties shall provide for a further period of protection for a medicinal or plant protection product which is protected by a patent and which has been subject to an administrative authorisation procedure, that period being equal to the period referred to in paragraph 1, reduced by a period of five years.
3. In the case of medicinal products for which pediatric studies have been carried out, and the results of those studies are reflected in the product information, the Parties shall provide for a further six-month extension of the period of protection referred to in paragraph 2 of this Article.
Thus, the period of protection for a medicinal or plant protection product shall be extended for a period equal to the period between the filing date and the date of receipt of authorisation by the competent authority for use, reduced by five years.
It should be noted that the Draft Law No 7538 of February 01, 2018 “On Amendments to Certain Legislative Acts of Ukraine on Improving the Legal Protection of Inventions and Utility Models”, was brought in Ukraine, which provided the introduction of amendments to a number of legislative acts in the field of intellectual property. However, the Parliament of Ukraine did not adopt the law during the voting on 04.09.2018.
– Protection of copyright and related rights
With regards to the requirements of the Association Agreement of Ukraine and the EU in the field of legal protection of copyright and related rights, it is necessary to make changes to the national legislation in relation to:
• the legal regime of computer programs created by employees;
• the possibility of the detention of goods at customs, which violates the copyright;
• prohibition of unlawful deletion (change) of electronic information on rights management and distribution of copyright and related rights.
As at today in Ukraine, the following legal acts regulated issues in the field of copyright protection have been adopted:
• Law of Ukraine №7466 “On the effective management of property rights of copyright holders in the field of copyright and (or) related rights” adopted in May, 2018.
This Law regulates the mechanisms of collective management of rights, which is one of the key problems in the field of IP in Ukraine. The document – at least partially – solves the problem of collective management of copyright, including the issue of payment of remuneration.
• Law of Ukraine No. 4571 “On Amendments to Article 5 of the Law of Ukraine “On Distribution of Copies of Audio-visual Works, Phonograms, Videograms, Computer Programs, Databases”. Adopted in the 1st reading of March, 2018.
It should be noted that, in accordance with the provisions of the Association Agreement, it is determined that if a program is created by an employee, all exclusive property rights to the program belong to the employer (unless otherwise provided by the contract).
• Also last year, amendments were partially made to the copyright law on state support for cinematographic activities in Ukraine (on regulating the activities of providers) and the Law of Ukraine “State Support of Cinematography in Ukraine” in terms of countering piracy on the Internet was adopted.
We should note that a number of provisions of legislation in the field of related rights comply with the norms established by the EU acts. Thus, the period of protection of the rights of producers of phonograms and videograms is 50 years from the date of the first publication of the phonogram (videogram) or their first sound recording (videotape). Broadcasting organizations enjoy the rights granted for 50 years from the date of the first transmission of a broadcast (with a minimum period of 20 years established by the TRIPS Agreement).
The Agreement also determines the duration of a copyright for critical and scientific publications (not more than 30 years from the date of first publication) and original photographs (during the life of the author and 70 years after his death).
The Agreement prohibits the unlawful deletion or modification of electronic rights-management information, as well as the distribution of intellectual property works, from which electronic rights-management information has been removed or altered without authority. “Rights-management information” means any information provided by right holders, which identifies the work of the copyright, its author, or the use of the work.
• The Draft Law No. 7539 “On Amendments to Certain Legislative Acts of Ukraine on Resolving the Issues of Copyright and Related Rights” with incorporation of provisions of the Agreement was submitted to the Parliament on February 01, 2018 and currently is under review.
– Trademark protection
In accordance with the Article 195, point (b) “Rights conferred by a trade-mark” of the Agreement provides that “the proprietor shall be entitled to prevent all third parties not having his/her consent from using in the course of trade:…
(b) any sign where, because of its identity to, or similarity to, the trade-mark and the identity or similarity of the goods or services covered by the trade-mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade-mark”.
At present the Agreement provides a broader understanding of the “misuse” of trademark rights due to the phrase, “likelihood of association between the sign and the trade-mark”, which still had no legal exercise in national trademark practice.
By the Article 196 “Exceptions to the rights conferred by a trade-mark” some new provisions with exceptions in trademark use are provided, such as:
“1. The Parties shall provide for the fair use of descriptive terms, including geographical indications, as a limited exception to the rights conferred by a trade-mark, provided that such limited exceptions take account of the legitimate interests of the owner of the trade-mark and of third parties. Under the same conditions, the Parties may provide for other limited exceptions.
2. A trade-mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
(a) his/her own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of a service, or other characteristics of goods or services;
(c) the trade-mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he/she uses it in accordance with honest practices in industrial or commercial matters.
3. A trade-mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognised by the laws of the Parties in question and within the limits of the territory in which it is recognised.”
The Article 197 of the Agreement “Use of trade-marks” declares the new grace period for trademark non-use in Ukraine, which was earlier provided for 3 years, according to the national legislation. At present, it should be calculated on the basis of 5 years.
Therefore, on the basis of Article 197 of the Agreement, the Article 198 “Grounds for revocation” fixes a possibility on the revocation (cancellation) of a registered mark in Ukraine after a 5-year grace period for non-use.
– Protection of geographical indications
In Ukrainian legislation, there are several legal documents related to protection of Geographical indications:
• Law of Ukraine on the Protection of Rights to Indications of Origin of Goods of 16 June 1999 and its implementing rules.
• Law of Ukraine on Grapes and Grape Wine of 5 February 2006 and its implementing rules.
According to national law, the term “Indications of Origin of Goods” is used to name the geographical indications, which obtained protection in Ukraine. However, according to EU legislation and the Association agreement, the term “Geographical indications” should be introduced officially and be used further.
By Article 201, the Parties of the Agreement recognize and protect geographical indications originating in the territories of the Parties.
In accordance with Article 202 “Established geographical indications”, having examined Ukrainian legislation, the EU Party concludes that these laws meet the elements laid down in Annex XXII-A Part B to the Agreement. At the same time, having examined the EU Party’s legislation in this sphere, Ukraine concludes that these laws meet the elements laid down in Annex XXII-A Part B to this Agreement.
The Parties in Annex XXII to Chapter 9 the Agreement recognize geographical indications of agricultural products and foodstuffs other than wines, spirits and aromatized wines of the European Union to be protected in Ukraine and geographical indications for wines of Ukraine to be protected in the European Union
At the same time, the Parties recognized geographical indications for wines and aromatised wines, as well as for spirit drinks of the European Union to be protected in Ukraine.
The Parties also concluded the common declaration on the right to use certain names. Ukraine reserves the right to use, in the course of trade, certain names, which are either names of geographical areas in its territory or common names in the Ukrainian language, such as “Med” (eng. “honey”, diminutive: “Medok”); “Kawa” (eng. “coffee”), etc.
Ukraine also reserves the right to continue to use the name “Кагор” (eng ”Cagor”) in its own territory for a Ukrainian fortified wine, produced according to the agreed specifications.
By Article 207 “Enforcement of protection” indicated that the Parties shall enforce the protection provided for in Articles 204 to 206 of this Agreement by appropriate action of their authorities including at the customs border.
To incorporate the provisions related to geographical indications of the Agreement into the national legislation, a particular Draft Law No 6023 of 03.02.2017 “On Amending Certain Legislative Acts of Ukraine on Improvement legal protection of geographical indications” was submitted to the Ukrainian Parliament and had passed the first hearing on 13.03.2018. The Draft Law was adopted in general with the amendments. At present, the Draft Law is under revision of Parliament Committees for incorporation of the amendments.
Some changes related to the improvements of protection against the infringements of the intellectual rights in the domain names provided by Article 247 of the Agreement “Liability of intermediary service providers “Hosting”:
Where an information society service is provided that consists of the storage of information provided by a recipient of the service, the Parties shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:
• the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or
• the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.
This Article provides an improvement in comparison to the current national legislation. Previously, providers, even obtaining knowledge or awareness of infringements by receiving the C&D letter, might not react to it and act only after receiving a special court prescription. However, exercise of this regulation also has no clear definition on what is proper notification for infringement and requires further clarification by the Supreme Court of Ukraine.
– Customs regulation
According to the Customs Code of Ukraine, the term “counterfeit goods” means the goods that constitute intellectual property items, whose import into or export from the customs territory of Ukraine violates the intellectual property rights laid down by the law.
According to Article 250 “Border measures” of the Agreement, the term “goods infringing an intellectual property right” was clearly formulated, which means:
(a) “counterfeit goods”, namely:
(i) goods, including packaging, bearing without authorisation a trade-mark which is identical to a trade-mark duly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such a trade-mark, and which thereby infringes the trade-mark holder’s rights;
(ii) any trade-mark symbol (logo, label, sticker, brochure, instructions for use or guarantee document), even if presented sepa`rately, on the same conditions as apply to the goods referred to in subparagraph (i);
(iii) packaging materials bearing the trade-marks of counterfeit goods, presented separately, on the same conditions as apply to the goods referred to in subparagraph (i);
(b) “pirated goods”, namely goods which are or contain copies made without the consent of the holder, or of a person duly authorised by the holder in the country of production, of a copyright or related right or design right, regardless of whether it is registered in domestic law;
(c) goods which, according to the law of the Party in which the application for customs action is made, infringe:
(i) a patent;
(ii) a supplementary protection certificate
(iii) a plant variety right;
(iv) a design;
(v) a geographical indication.
According to Paragraph 2, Article 250, The Parties shall, unless otherwise provided for in this Sub-section, adopt procedures to enable a right holder who has valid grounds for suspecting that the importation, exportation, re-exportation, entry into or exit from the customs territory, placement under a suspensive procedure or placement in a free zone or a free warehouse of goods infringing an intellectual property right may take place, to lodge an application in writing with the competent authorities, administrative or judicial, for suspension by the customs authorities of the release into free circulation or the detention of such goods.
Presently, such a procedure is foreseen by Article 398 of the Customs Code of Ukraine, which reads as follows:
The right holder having grounds to believe that while goods are moved across the customs border of Ukraine his intellectual property rights are or might be infringed shall have the right to apply to the central executive authority responsible for formulating and implementing the state tax and customs policy for facilitation of protection of his intellectual property rights by entering the relevant information to the customs register of intellectual property items protected by the law.
Moreover, Paragraph 3, Article 250 of the Association Agreement prescribes that the customs authorities may suspend the release of goods or detain them in order to enable the right holder submit an application for action in accordance with the previous paragraph, i.e. before an application has been lodged by the right holder.
To improve customs regulation and protection according to the Agreement’s provisions, the Draft Law Of Ukraine No 7473 of December 29, 2017 «On Amendments to the Customs Code of Ukraine (regarding certain issues of implementation of the Chapter 5 of Section IV of the Association Agreement between Ukraine, on the one hand, and the European Union, the European Atomic Energy Community and their Member States, on the other hand», was submitted to the Parliament and is under review by the Parliament Committees of Ukraine.
Thus, we can conclude that in Ukraine, the requirements and provisions of the Association Agreement with the EU is already in force and special amendments to the national law in the form of draft laws have been prepared to approximate the national legislation to the requirements of the EU.
These modifications, which will be implemented in the national legislation in the framework of the Association Agreement with the EU in the near future, already have an impact on legal proceedings and legal practices in Ukraine in the field of intellectual property rights protection.
