Counterfeiting remains a pervasive issue, affecting various industries and posing risks to both economies and consumers.
Ukraine is actively working on amending its national legislation to align with the standards and practices of the European Union (EU) in the sphere of customs procedures. This initiative includes significant changes related to the protection of intellectual property (IP) rights, which will not only protect IP rights but also promote economic growth and strengthen international trade relations.
According to the State Customs Service of Ukraine, measures to tackle counterfeiting are getting more effective, as the number of goods suspensions has considerably decreased as follows:
6880 times in 2019, 1907 times in 2020, 402 times in 2021, 300 times in 2022, 347 in 2023.
Most cases of counterfeit imports were recorded in relation to goods such as clothing and shoes, toys, mobile gadgets and accessories, bags.
Customs legislation in Ukraine defines counterfeit, in particular, as goods “which are the subject of IP rights violations related to a trademark in Ukraine, without permission marked with a designation, which is identical to a trademark protected in Ukraine for the same type of goods, or which is confusingly similar to such a trademark.”
Customs control in Ukraine extends to import and export movement of goods, except for the goods in transit and those purchased by individuals for personal use as well as for the parallel import of the original goods, which were produced by the actual right holder for further sale in the market of Ukraine.
Despite the present situation, the Customs Register of IP objects is effectively functioning in Ukraine, and the recordal of the registered trademarks in the Customs Register is still considered the most efficient method of preventing the cross-border movement traffic of counterfeit goods in Ukraine.
Upon suspension of customs clearance of infringing goods confirmed by the right holder, options include proceeding with a simplified procedure of the counterfeit destruction under customs control or request the destruction with a lawsuit.
We would like to share yet another case involving the destruction of counterfeit goods on behalf of reputable Italian manufacturer of luxurious clothing, shoes, and accessories.
The trademark has long been registered in the Customs Register of Intellectual Property of Ukraine.
One of the recent attempts was to import a shipment of jeans marked with the registered trademark, which turned out to be counterfeit goods.
In this case, the client opted to initiate the simple procedure of destruction of counterfeit goods, which may be applied upon receipt of the notice on the suspension of the customs clearance and with written consent to destruction from the owner of the goods.
It should be noted that for the actual destruction of goods, it is necessary to engage the licensed organization, which has industrial facilities capable of handling the destruction of a particular type of goods.
Accordingly, our Attorneys arranged for the relocation of counterfeit goods from the customs warehouse to the facilities of the said organization, where they were destroyed under the customs’ control.
IPR Attorneys are ready to assist to enter trademark record in the Customs Registers in order to enforce IP rights of brand owners and efficient stopping of counterfeit traffic.