Aug 05, 2024 (Newsletter Issue 7/24)
Martial Law Extended
Ukraine has extended Martial Law until November 9, 2024, which means that all deadlines in IP matters have been moved to at least until February 7, 2025 (90 days following the end of Martial Law). Further extensions are certain, given the ongoing conflict.
Source: www.msa-iplaw.com
Jun 18, 2024 (Newsletter Issue 5/24)
Appeals Chamber of the National Intellectual Property Authority Resumes Work
On June 18, 2024, the personal composition of the Appeals Chamber of the IP Office was approved. The Appeals Chamber included 40 specialists in the field of intellectual property law.
After that, the organizational and legal measures necessary for the distribution of cases, the formation of the composition of the boards, and the start of consideration of the merits of the appeal cases and the cases that will be received were started.
Thanks to the resumption of the work of the Appeals Chamber, applicants and rights holders are able to resolve disputes much more quickly, without the need to go to court.
Source: www.craneip.com
May 06, 2024 (Newsletter Issue 3/24)
Number of Trademark Applications Increased by 55%
In 2023, the number of applications for trademarks under the national procedure increased by 55.4% in Ukraine.
First of all, this is due to the activity of national applicants, who applied by 31.7% more compared to the previous year. Foreign applicants submitted only by 18.2% more applications than in 2022.
Thus, the share of foreign applicants decreased to 10.9%.
The most active foreign applicants are the USA and Cyprus. A significant number of applications derive from Switzerland, Great Britain, China, and Germany.
In general, in 2023, more than 25,000 applications for new trademarks were submitted.
The total number of applications for all objects of intellectual property law reached 32,759 in 2023, which is 47.6% more than in 2022. Trademarks showed the greatest growth, while patents for inventions showed the least (growth of 5.5%).
Source: www.craneip.com
Sep 05, 2023 (Newsletter Issue 7/23)Change in Official FeesThe Cabinet of Ministers made changes to its Resolution "On approval of the Procedure for payment of fees for actions related to the protection of rights to intellectual property objects”, which enters into force on September 18, 2023.
In particular, the amount of the discount for submitting trademark applications in electronic form was increased to 25% from the current 20%. Thus, the application fee for each class (without specifying the color) is reduced to 3,000 UAH ($82) from 3,200 UAH ($88).
The fee for an appeal against a decision on a trademark application has doubled – up to 6,800 UAH ($186) instead of 3,400 UAH ($93).
In addition, new items have been added to the list of fees that should unlock the post-grant opposition mechanism for inventions, utility models, and industrial designs.
For more information click here.Source: www.craneip.com Jan 12, 2023 (Newsletter Issue 1/23)Law on GIs of Alcoholic Beverages AdoptedOn 1 December 2022, the Ukrainian Parliament adopted a special law establishing the details of preparation for registration, use and protection of geographical indications for agricultural products, food products, wines, flavored wine products, and spirits.
The adopted law transposes the provisions of Regulation (EU) 2019/787 into Ukrainian legislation. Proper convergence of national legislation in the field of geographical indications of alcoholic beverages and in the field of production of alcoholic beverages with EU standards will be ensured.
For more information, please see hereSource: www.craneip.com Nov 17, 2022 (Newsletter Issue 16/22)
Accelerated Examination of Applications Suspended
The Ukrainian IP Office (Ukrpatent) has suspended by order the possibility to file an accelerated examination of applications from 3 October 2022 until the end of the martial law regime in Ukraine.
The decision concerns the possibility for the applicant to pay an additional fee for the accelerated examination of applications for patents for inventions, utility models, industrial designs, and trademarks.
Currently, the registration procedure for trademarks takes 18-24 months.
Source: www.craneip.com
Nov 17, 2022 (Newsletter Issue 16/22)
Law on E-Residency Adopted
On 6 October 2022, the Verkhovna Rada (Ukrainian Parliament) fully adopted Law No. 5270 on electronic residence permits. The law will come into force on 1 April 2023 and will give foreigners a special status allowing them to do business as an e-resident in Ukraine.
The status can be acquired by foreigners who have reached the age of 18, except for those who have the right of permanent residence in Ukraine or are tax residents in Ukraine or stateless persons.
The Ministry of Digital Transformation will determine the list of states whose citizens or residents can acquire e-residency.
Source: www.craneip.com
Nov 17, 2022 (Newsletter Issue 16/22)
IPO Temporarily Suspends Activities
As of 8 November 2022, the Ukrainian Intellectual Property Institute (Ukrpatent) has ceased its activities due to the ongoing institutional reform of the Ukrainian IP system and the process of transferring the IP Office functions to the Ukrainian National Office of Intellectual Property and Innovations (UKRNOIPI).
Electronic and email filings have been suspended for the time being, while paper filings are still accepted. Trademark owners need to be aware of the expected delays.
Source: www.petosevic.com
Oct 06, 2022 (Newsletter Issue 14/22)Legal Protection of Geographical IndicationsOn 6 September 2022, the Parliament of Ukraine adopted the law on the peculiarities of the legal protection of geographical indications for agricultural products and food products, the protection of rights, and the application of quality schemes, including traditional guaranteed features for agricultural products and food products.
The aim is to ensure the fulfillment of Ukraine's obligations in the field of European integration regarding the harmonization of legislation with the law of the European Union, provided for in the Association Agreement between Ukraine and the EU and Regulation (EU) 1151/2012 of the European Parliament and the Council.
For more information, please click here Source: www.craneip.com Sep 22, 2022 (Newsletter Issue 13/22)EUIPO Extends Time LimitsEUIPO informs about a new extension that has been granted for all parties in proceedings before the Office having their residence or registered office in Ukraine.
The two month extension published on 28 August 2022 extends all time limits expiring between 2 September 2022 and 1 November 2022, inclusive, until 2 November 2022.
This extension follows earlier Decisions EX-22-5, EX-22-4 and EX-22-2 of the Executive Director, which respectively extended all time limits expiring between: 2 June 2022 and 1 September 2002; 1 April 2022 and 1 June 2002; and 24 February 2022 and 31 March 2022.
For more information, please click here Source: www. euipo.europa.eu Jun 30, 2022 (Newsletter Issue 8/22)
Martial Law Extended
The Law “On Protection of Interests of Intellectual Property in Martial Law” (Law No 7228) has been extended for an additional 90 days until 23 August 2022 by the Verkhovna Rada, Ukrainian Parliament.
Under the new law, the time limits for the protection of intellectual property rights and the time limits for procedures for acquiring such rights are suspended, as we reported on 21 April 2022. The law applies to all holders of IP rights before Ukrainian IP Office (Ukrpatent), including both Ukrainian and foreign holders of IP rights.
Source: www.rada.gov.ua; www. ukrpatent.org
Apr 21, 2022 (Newsletter Issue 5/22)Operation of IP Office During State of WarLegal Basis during state of war
The Ukrainian Parliament passed the Law “On Protection of Interests of Intellectual Property in Martial Law” (Law No 7228). Under the new law, the time limits for the protection of intellectual property rights as well as the time limits for procedures for acquiring such rights are suspended.
According to the law, authorised persons may file documents within 90 days of the lifting of martial law without paying a fee for the extension or restoration of the relevant time deadlines. The law applies to all holders of IP rights before Ukrainian IP Office (Ukrpatent), including both Ukrainian and foreign holders of IP rights.
The martial law was declared in Ukraine on February 4, 2022, following the issue of Decree 64/2022, for a period of 30 days. On March 26, 2022, the Ukrainian Parliament voted to extend the martial law for a further 30 days. It is expected to be extended again before the end of April 2022.
Operation of IP Office
The Ukrainian IP Office (Ukrpatent) continues to accept new applications for trademarks, patents, and copyrights – both under national and international procedures - in electronic form only. In all procedures where paper copies are required, the IP Office accepts scan copies with the obligation of the applicant/representative to submit paper copies after the end of the state of war. The same rules apply to the registration of license and assignment agreements, filing of oppositions, etc.
The IP Office continues to conduct examination procedures and publish decisions on the registration of IP rights. For the time being, the new registration certificates are only available in electronic form. Paper copies will be printed and sent later.
The Board of Appeals of Ukrpatent has suspended operations as well as courts in regions, where active combats are, suspended all their activities.
For more information, please click here and hereSource: www. ukrpatent.org; www.inta.org; www.craneip.com Jan 27, 2022 (Newsletter Issue 1/22)Madrid E-Filing Available NowOn December 20, 2021, the Ukrainian Intellectual Property Institute (UKRPATENT) provided trademark applicants with acess to the Madrid e-filing service via its website. Trademark owners have the possibility to file international applications online.
In addition, trademark owners can list goods and services and check the acceptability of terms across 40 contracting parties of the Madrid Protocol via the Madrid Goods & Services Manager.
For more information on how to use the e-filing service, please click hereSource: www.ukrpatent.org Jan 14, 2021 (Newsletter Issue 1/21)New IPO Offices EstablishedOn October 14, 2020, the Law No. 703-IX on the Creation of The National Intellectual Property Authority entered into force in Ukraine. The Law establishes the National Intellectual Property Authority (NIPA). It was expected that the NIPA would be a new state organization, absorbing the function of the State Enterprise Ukrainian Intellectual Property Institute (Ukrpatent) along with several functions of the Ministry for Development of Economy, Trade and Agriculture (MDETA). However, the new status of the Ukrpatent and its newly assigned functions are not explicitly outlined.
The NIPA will be responsible for the following:
- examination of applications for IP registration;
- registration of IP and issuance of patents and certificates;
- invalidation of certain types of IP registrations (post-grant oppositions procedure);
- publication of official information, maintenance of IP rights registries, provision of excerpts and extracts, etc.
More information can be seen here and hereSource: www.ukrpatent.org; www.petosevic.com; www.bakerxchange.com Aug 06, 2020 (Newsletter Issue 13/20)IP Legislation Amended / New Official Opposition ProcedureOn July 21, 2020, the Ukrainian parliament adopted several bills, e.g. Bill No. 2258, concerning the protection of intellectual property rights. The amendments are intended to bring Ukrainian legislation on intellectual property in line with the norms established in the European Union. It is expected that the changes will enter into force before September 1, 2020, once the laws are signed by the President of Ukraine and officially published.
The amendments introduce a new official opposition procedure for trademarks, where opposition can be filed within 3 months from the publication date of the trademark application. Under the old system, the opposition had to be filed at least 5 days before the decision on the application was taken.
Further changes are the following:
- Applications for trademark registration can now be submitted electronically.
- The grounds for refusing to register new trademarks and invalidating existing trademarks have been modified.
- Registration of collective trademarks has been introduced.
- The procedure for granting legal protection to international trademark registrations (under the Madrid system) has been amended.
- The sanctions for infringing on trademark rights are now stronger.
For further information, please click here and here
Source: www.iportal.rada.gov.ua; www.sojuzpatent.com Jul 09, 2020 (Newsletter Issue 11/20)Declarations on Hague Agreement of Industrial Designs on Protection TermOn May 30, 2020, WIPO received from the Ministry for Development of Economy, Trade and Agriculture of Ukraine, the declarations as required under Article 17(3)(c) of the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, and Rule 36(2) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, specifying that the maximum duration of protection provided for by the legislation of Ukraine in respect of industrial designs is 25 years.
More information can be seen hereSource: www.wipo.int Feb 06, 2020 (Newsletter Issue 1/20)Law on Geographical Indications AmendedUkraine adopted amendments to the Law on Geographical Indications on September 20, 2019. The Amendments entered into force on January 1, 2020. The changes bring the Ukrainian legislation in line with EU Regulation No. 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs.
The main changes concern the redefinition of key definitions such as "geographical indication" and "designation of origin", the clarification of the eligibility criteria for applying for GI registration and the amendment of the opposition procedure and the rules for cancellation of registered GIs.
For more information, please click hereSource: www.petosevic.com Sep 19, 2019 (Newsletter Issue 13/19)Ukrainian Official Language for Product Labeling / Advertising RequiredThe new Ukrainian language law requires the use of the Ukrainian language in product labeling and advertising as of July 16, 2019, when the law entered into force. Foreign language is in certain cases allowed but the scope of information provided in the foreign language cannot exceed the scope of information provided in the Ukrainian language.
The Ukrainian language must be printed on the product packaging. In case the packaging contains information in another language, a sticker with the information in the Ukrainian language must be placed on it.
For more information, please click hereSource: www.petosevic.com Sep 05, 2019 (Newsletter Issue 12/19)New Food Labeling Law in ForceThe Ukrainian law on the provision of food information to consumers, adopted by the Ukrainian Parliament on December 6, 2018, entered into force on August 6, 2019. The requirements related to food information and labeling were previously regulated by the law on consumer rights protection.
The new law was adopted to fulfill Ukraine’s obligations under the EU-Ukraine Association Agreement. According to the law, each food product intended for the end consumer must contain accurate and easily comprehensible information which must not mislead the consumers regarding the product’s characteristics, properties and composition. This requirement applies both to the advertising of food products and to the manner they are presented for sale, including their form, appearance, and packaging.
The State Service for Food Safety and Consumer Protection is responsible for ensuring compliance with the requirements. In case of a breach, the law prescribes fines of up to EUR 4,400.
The law provides for a transition period of three years and does not require immediate relabeling of all food products.
For more information, please click hereSource: www.petosevic.com Jun 20, 2019 (Newsletter Issue 8/19)Official Fees IncreasedOn June 12, 2019, the Cabinet of Ministers signed and published Resolution No. 496, according to which the fees will be increased in 30 days as follows:
For trademark registration - four times;
For utility model registration - three times;
For registration of invention - two times.
Further, the Resolution provides a 20% discount on official fees for electronic filing of applications for registrations.
After July 12, 2019, the new official application fee is UAH 4,000 for each class. For colour trademarks there is an extra fee of UAH 1,000. Official fee for filing application in the names of several applicants is paid at the rate 130%.
The official fee for publication for each class is UAH 600. Additional fee for colour trademark publication is UAH 200.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationUkraine has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Nov 15, 2018 (Newsletter Issue 19/18)
Pending Trademark Applications Published More Swiftly
On August 1, 2018, the Ukrainian IPO started publishing information on pending trademark applications in its online database immediately after sending a confirmation of the trademark application filing date to the applicant.
The information on pending applications will now be published online within two months of the filing date of the trade mark application. Until recently, the IPO did not publish the information until at least six months after filing.
Trademark owners are now able to monitor new applications shortly after filing to ensure timely enforcement of their earlier rights.
Source: www.petosevic.com
Nov 15, 2018 (Newsletter Issue 19/18)Drafts Amendments to IP LegislationIn September 2018 the Ukrainian Ministry of Economic Development and Trade released a new draft law for public review as the previous draft law did not get support in the Ukrainian Parliament.
The draft law amends certain legislative acts aiming to improve the protection and enforcement of rights relating to patents, utility models, designs and trademarks.
Some of the amendments will include:
- Introduction of an electronic filing system for patents, utility models, trademarks and designs
- Alignment of the grounds for refusal of trademarks
- Specification of rules for national examination and protection of international registration under the Madrid System
- Limitation of protection of utility models to devices and apparatus only
- Introduction of ‘individual character’ as an additional eligibility criterion regarding designs
For further information, please check the article of the law firm PETOŠEVIĆ Ukraine hereSource: www.petosevic.com Sep 20, 2018 (Newsletter Issue 16/18)Ruling on Non-Use Grace PeriodAs reported earlier, the Ukrainian courts face a dilemma in non-use cancellation actions as to what the applicable grace periods really is. The existing Ukrainian Trademark Law provides for a 3-year non-use grace period, while Article 198 of the IP-related provisions of the EU-Ukraine Association Agreement sets forth the 5-year non-use grace period. Ukraine has not adopted any laws that would implement provisions of the EU-Ukraine Association Agreement in the national legislation yet. Only a draft law has been submitted to the Parliament implementing the provisions of Art. 198 on January 23, 2017.
In a court ruling dated February 12, 2018, by the Commercial Court of Kyiv in the case no. 910/14972/17, the judge applied a five-year non-use grace period, as provided for under the Association Agreement (Art. 198), and rejected the non-use cancellation action, which was based on the three-year grace period, as per Ukrainian Trademark Law.
The case went to the Kyiv City Commercial Court of Appeal and ended up reaching the Ukrainian Supreme Court, which upheld the decision of the lower courts on July 17, 2018. The Supreme Court ruled on the direct applicability of the EU-Ukraine Association Agreement applying a five-year non-use grace period.
For further information, please check the article of the law firm PETOŠEVIĆ Ukraine hereSource: www.petosevic.com Sep 19, 2018 (Newsletter Issue 16/18)
Increase in Number of Judges in IP Court
The Ukrainian Supreme Council of Justice has recently approved an increase in the number of judges in the Intellectual Property (IP) Court from 21 to 30.
The IP Court, the establishment of which was announced as part of the Ukrainian 2016 judicial reform and became imminent in late 2017, was meant to comprise 21 judges.
On July 23, 2018, the Supreme Council of Justice received a request from the head of the State Judicial Administration of Ukraine to increase the number of judges to 30, nine of whom would work in the appellate division of the court. The Supreme Council of Justice approved the request on July 31, 2018.
The increase in the number of judges is likely to improve the quality and efficiency of IP dispute consideration once the IP Court starts operating, which is expected to happen once all the judges are recruited.
Source: www.petosevic.com
Apr 11, 2018 (Newsletter Issue 7/18)Dilemma over Non-Use Grace Periods The IP-related provisions of the EU-Ukraine Association Agreement, signed and ratified by Ukraine in 2014, came into force on September 1, 2017. New rules regulating the non-use grace period for trademarks were thereby introduced. Where the existing trademark law provides for a 3-year non-use grace period, Article 198 of the Agreement sets forth the 5-year non-use grace period.
However, Ukraine has not adopted any laws that would implement such provisions in the national legislation yet.
Consequently, Ukrainian courts are facing a dilemma in non-use cancellation actions as to what the applicable grace period really is. This raises the question of direct applicability of the EU-Ukraine Association Agreement provisions.
Recently, in a court ruling by the Commercial Court of Kyiv the judge effectively applied a 5-year non-use grace period, as provided for under the Association Agreement (Art. 198), and rejected the non-use cancellation action, which was based on the 3-year grace period, as per Ukrainian Trademark Law. The court held that the EU-Ukraine Association Agreement is a binding international agreement, thus its provisions should prevail if they differ from the rules provided by the Ukrainian law. The judge argued that, since Art. 198 provides for a different grace period, the Agreement’s provisions may be directly applicable. The ruling also emphasizes that the Association Agreement does not foresee any particular means of implementation of these provisions in the Ukrainian national law.
For more information, please see hereSource: www.petosevic.com Mar 29, 2018 (Newsletter Issue 6/18)
Civil, Commercial and Administrative Procedure Codes Amended
Significant amendments to three Ukrainian codes governing judicial dispute resolution process — the Civil, the Commercial, and the Administrative Procedure Code, entered into force on December 15, 2017, the same day the reorganized Supreme Court started operating. In general, the amendments aim to modernise the Ukrainian judicial system and increase its efficiency. The amendments also introduce electronic submission of evidence and encourage electronic communication between the parties and courts. Some of the most important changes are described below.
Simplified proceedings
Minor disputes, such as those in which the value of the dispute does not exceed EUR 5,310 (USD 6,525), can now be resolved in simplified proceedings, previously available for a limited number of very specific situations.
Right of audience
Both individuals and legal entities were previously able to appoint anyone as a representative before the court, as long as the representative had a proper authorization. Even a law degree was not required to represent in court. Now, individuals may either appear before a court themselves or be represented by an attorney at law.
Filing of proof
All available proof on which an action or a defensive plea is based should now be submitted together with the corresponding action or defensive plea. Before the changes took effect, parties were able to file proof subsequently, which is no longer the case.
Judge-facilitated dispute settlement
In an attempt to settle disputes amicably and avoid trials, a judge-facilitated settlement is now possible, with a judge and parties meeting either together or with a judge meeting each party separately. The information disclosed during the meetings will be confidential.
Independent experts
A court can now appoint an independent expert to assist the court in interpreting legal provisions if the law does not directly address the issue at hand and the court has to apply statutory or legal analogy. Independent experts can also help with interpreting foreign law, but the court can decide whether to accept the interpretation.
Injunctive relief and international arbitration
State courts are now able to grant an injunction in cases considered by an international arbitral tribunal.
Cassation appeals
The number of cases in which an appeal before the Ukrainian Supreme Court can be filed is now reduced. As a general rule, appeals will not be accepted by the Supreme Court in petty dispute proceedings unless, for example, the court of first instance erred in qualifying the dispute as petty or when the case is of fundamental importance for the establishment of uniform judicial practice.
Abuse of procedural rights
All three amended codes now specify which activities will be regarded as abuse of procedural rights. These activities include filing an obviously groundless action, filing several actions against the same defendant on the same grounds and with the same claims, and appealing judicial decisions that are not eligible for an appeal, to name only a few.
Source: www.petosevic.com
Oct 24, 2017 (Newsletter Issue 18/17)Establishment of IP High Court On September 29, 2017, the President of Ukraine signed Decree No. 299/2017 establishing the High Court on Intellectual Property with location in Kyiv.
According to the State Judicial Administration, the court will have 21 judges who will deal with the disputes about copyright, trademarks, inventions, patents, author's rights and administration of titles to intellectual property.
The Decree came into force on September 29, 2017.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Oct 23, 2017 (Newsletter Issue 18/17)Official Fees for Accelerated Trademark Registration ChangedDecree No. 197 of September 28, 2017, has been issued by the Ukrainian Intellectual Property Institute (UKRPATENT), which provides that a fee may be paid for the acceleration of examination of a trademark application after 3 months from the filing date of the application. If this fee is paid, the examination itself will take place within 3 months of payment of the fee, and accelerated registration of the trademark should then take around 6 to 7 months under normal circumstances.
The revised official fees for this procedure are valid from October 1, 2017. The following fees will apply:
for word/figurative trademarks:
- UAH 5,220 for one class (previously UAH 4,828.5)
- UAH 612 per class in excess of one (previously UAH 566.1)
for combined trademarks:
- UAH 9,396 for one class (previously UAH 8,691.3)
- UAH 960 per class in excess of one (previously UAH 888)
Source: Mikhailyuk, Sorokolat and Partners, Ukraine
Sep 28, 2016 (Newsletter Issue 17/16)State Intellectual Property Service No Longer Needed The resolution "On optimization of central executive bodies of the state system for the legal protection of intellectual property" was adopted by the Cabinet of Ministers of Ukraine on August 23, 2016. It stipulates in particular the liquidation of the State Intellectual Property Service.
The State Intellectual Property Service had been responsible for the following functions: examination of applications for intellectual property rights; the issuance of the relevant patents and certificates; the registration of intellectual property objects; assignment agreements; license agreements and maintenance of the registers.
In future these functions will be delegated to the Ministry of Economic Development and Trade after the adoption of the relevant act by the Government.
The decision was taken in order to facilitate the streamlining of the state management in the intellectual property sphere, and to implement an effective management on behalf of the public enterprises and organizations in the intellectual property field.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Sep 28, 2016 (Newsletter Issue 17/16)Reformation of Judicial System LaunchedOn June 2016, the Ukraine launched the reformation of the Ukrainian judicial system. Three laws have already been adopted. They aim to correct deficiencies of the former judicial system, enhance the effectiveness thereof and thus raise its standards.
The new law on the judicial system introduces the Highest Court of Intellectual Property as a court of first instance. Intellectual property disputes can be reviewed further by the Supreme Court. The new procedure will facilitate the more expeditious processing of claims and reduce the backlog of cases. According to the new law, only lawyers, who are accredited with the bar are allowed to represent their clients before the Highest Court of Intellectual Property, while the earlier practice enabled all patent attorneys and legal counsels to represent their clients in intellectual property matters before the court. This amendment will come into force on January 1, 2019.
The reform will also affect the enforcement procedure: private enforcement officials are expected to be introduced. The new body will execute court decisions and will give right holders the opportunity to control the execution of the enforcement actions.
The above-mentioned changes are intended to facilitate the implementation of full-scale judicial reform in Ukraine in accordance with public expectations and in line with European standards.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Jun 28, 2016 (Newsletter Issue 12/16)
New IP Court to Be Established Soon
On June 03, 2016, the Parliament of Ukraine adopted a law on reforming the judicial system of Ukraine. Currently, the law is awaiting the President’s signature. The reform provides for establishing the High Court on Intellectual Property Issues by autumn 2017 as a court of the first instance for copyright, trademark and patent disputes. Judicial decisions will be reviewed in the court of appeal within the chamber of the Supreme Court of Ukraine.
As from 2017 only attorneys-at-law (barristers) will be authorized to represent parties in intellectual property court. Prior to adopting the new law, patent attorneys, company directors and legal advisors were also allowed to represent their clients in court.
Further, the judicial reform has also affected the reform of judgment enforcement authorities. The new institution of private judicial executors appeared. For right holders, it is a chance to procure judgment execution after winning a case in a more effective manner. Meanwhile, it is unclear how to execute a judgment of a specialized IP court in foreign countries, which have already signed international treaties on the enforcement of judgments in civil, criminal and commercial cases.
Source: Synergy IP Law Agency, Ukraine
Jun 14, 2016 (Newsletter Issue 11/16)
Law on Medicinal Products Expected to be Simplified
On May 31, 2016, draft law No. 4484 simplifying the procedure for registration of medicines in Ukraine (the “Law”) was adopted by the Ukrainian Parliament.
The Law may be important for owners of pharmaceutical trademarks because it is expected to provide simpler access for foreign medicines into Ukraine. This may increase competition in the Ukrainian pharmaceutical market and bring down the prices of medicine.
The Law is now awaiting the President’s signature and will become effective on the day after its official publication.
If signed by the President, the Law will:
- Reduce the term for the state registration of medicines in Ukraine from one month to ten days; and
- Introduce the simplified procedure of the state registration of medicinal products already registered by the competent authorities in the Unites States of America, Switzerland, Japan, Australia, Canada or registered under the centralised procedure by the competent authority of the European Union. Currently, the simplified procedure applies only to the registration of certain foreign medicines (such as medicines for the treatment of oncological diseases, HIV/AIDS, viral hepatitis and tuberculosis).
Source: CMS Cameron McKenna LLC, Ukraine
Sep 02, 2015 (Newsletter Issue 13/15)
Free Access to Trademark Applications Database
The Ukrainian Institute of Intellectual Property granted free access to its online database of trademark applications on August 21, 2015.
Even though the database only contains applications that passed the formal examination since August 20, 2015, trademark owners will be able to monitor new applications and daily updates, ensuring timely enforcement of their prior rights.
Source: www.petosevic.com
Jul 28, 2015 (Newsletter Issue 12/15)
Communist and Nazi Symbols Banned
A new law condemning the Communist and Nazi regimes and prohibiting all related symbols and propaganda entered into force in Ukraine on May 21, 2015. Several articles of the Ukrainian Law on Protection of Rights to Marks for Goods and Services have been amended in accordance with the new law.
Points 1 and 2 of Article 5 (Conditions for Granting Legal Protection) were amended:
1. Legal protection shall be granted to a mark that does not contradict the public order, principles of humanity and morality, the Ukrainian Law “On condemning the Communist and National Socialist (Nazi) totalitarian regimes in Ukraine and prohibiting the propaganda of their symbols”, and is not subject to the grounds for the refusal of legal protection as established by the present law.
2. Trademark may consist of any sign or any combination of signs, such as words, including personal names, letters, numerals, pictorial elements, colors and combinations of colors, as well as any combination of such signs. Trademark cannot contain the following: any name or pseudonym of a person holding senior position within the Communist Party, starting from the secretary position of a district committee and higher; the Union of Soviet Socialist Republics (USSR) and the Ukrainian Soviet Socialist Republic highest bodies of power and administration; other Soviet Union republics and autonomous Soviet republics (except in cases related to the development of the Ukrainian science and culture), who used to work for the Soviet state security bodies; the names of the USSR, the Ukrainian SSR, other Soviet republics and their derivatives; denominations associated with the Communist Party activities and its establishment on the territory of Ukraine, other administrative units of the Soviet system, as well as denominations associated with the fight against the participants in the struggle for independence of Ukraine in the twentieth century.
The amendments also include a new Point 5 in Article 6 (Grounds for Refusal of the Legal Protection), which reads:
Legal protection shall not be granted to a mark that contradicts p. 2 of Article 5 of the given Law, and the Ukrainian Law “On condemning the Communist and National Socialist (Nazi) totalitarian regimes in Ukraine and prohibiting the propaganda of their symbols”.
Under the transitional provisions of the new law, the rights holders whose trademarks contain communist and/or Nazi symbols are obligated to bring such trademarks in line with the legislation. However, it is not specified how this will work in practice.
There are some registered trademarks in Ukraine whose legitimate use can be put into question.
Source: www.petosevic.com
Jun 16, 2015 (Newsletter Issue 9/15)
Administrative Appeal against Industrial Designs/Utility Models Considered
During a recent roundtable organized by the Ukrainian IPO in Kiev, Ukraine, the majority of the attendees, mostly IP practitioners, supported the idea of legislation changes that would introduce an administrative appeal against the registered industrial designs and utility models.
In Ukraine, there is no substantive examination of industrial design and utility model applications. This fact encourages copying and registration of identical or similar designs and utility models, mostly as an act of bad faith. Moreover, such registered industrial designs and utility models become recorded in the customs register of IP rights, thus hampering the movement of goods across the border.
At the moment, the Ukrainian PTO only has a brief outline of the future system, but the main idea is to place the Board within the PTO in charge of considering such appeals, organizing substantive examinations and making decisions on invalidation of IP rights.
The interested parties will be able to appeal the Board’s decisions in court, but the PTO is aiming to make the procedure faster and less time and money consuming compared to the judicial procedure of invalidation currently available.
It is expected that the draft laws containing these amendments will be completed and published in July-August 2015.
Source: www.petosevic.com
Sep 16, 2014 (Newsletter Issue 14/14)Re-Validation of IP Rights in CrimeaOn 22 July 2014, the Russian Law regulating IP protection on the territory of the Crimean Peninsula entered into force.
According to the Ukrainian Law on Ensuring Protection of the Rights and Freedoms of Citizens and Legal Regime on the Temporarily Occupied Territory, which entered into force on 9 May 2014, the Crimean peninsula is still regarded as part of Ukraine, with a special legal status as an occupied territory.
Due to this conflict, it is recommended that owners of IP rights that are being executed in Crimea should apply for protection of their IP rights in both countries, Russia and Ukraine.
The deadline for revalidating Ukrainian IP rights (whether re-registering or re-filing) in Russia as well as resolving other IP-related issues is set for 1 January 2015.
For detailed information, please see the article on 'IP Protection in Ukraine and Russia in Light of Crimea Conflict' from our contributor PETOSEVIC here.
Source: www.petosevic.com Apr 01, 2010 (Newsletter Issue 9/10)Accession to the Singapore TreatyUkraine has recently ratified the Singapore Treaty on the Law of Trademarks.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to Ukraine, on May 24, 2010.
Source: www.wipo.int Trademark Law Legal basis is the Law on Protection of Rights to Trademarks and Service marks of December 23, 1993, in force since July 1, 1994, last amended December 01, 2022.
Ukraine is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration.
Trademarks that were protected in the former Soviet Union are protected in Ukraine only if they were transcribed within the period stipulated.
The trademark can be any sign or any combination of signs. Such signs may be in particular words, including own names, letters, figures, figurative elements, colours, a form of the goods or their package, sounds, if such signs are suitable for distinguishing the goods and services of one entity from the goods and services of another entity, and they are suitable for their indication in the Register so that to provide the possibility to determine the clear and precise volume of the provided legal protection.
Trademarks are registrable for goods and/or services.
The application is filed with the Ukrainian National Office for Intellectual Property and Innovations (UKRNOIPI).
Multiple-class applications are possible.
Foreign applicants need a local agent.
An original power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
Letters of Consent from the holders of the prior marks are acceptable on condition that there does not exist a possibility of misleading the consumers.
The processing time from first filing to registration is approx. 1.5-2 years. Accelerated examination is not available.
The trademark is published in the Official Gazette within 5 days after sending notification of the filing date establishment to an applicant.
The international trademark registration is published in the Official Gazette after receipt of the notification about the international trademark registration or subsequent designation of the international registration by UKRNOIPI from the International Bureau of WIPO.
Important: any procedures with trademarks originating from Russian Federation, Belorus and Iran are suspended due to the Russian military aggression and sanctions connected therewith, applications originating from these countries are being refused.
National:Trademark applications accepted for examination after August 16, 2020, are published in the Official Bulletin. Applications accepted for examination are also published online.
Any person can file a grounded opposition against a trademark application/international registration/subsequent designation within three months from the publication date of the trademark application/international registration/subsequent designation in the Official Gazette.
The applicant can file a response to the opposition. Both opposition and response are considered in the frame of substantive examination of the trademark. The opponent is notified about the decision of the Office and can file an appeal against this decision to the Appeal Board within 2 months of receipt of its copy. Applicant and opponent may participate in consideration of the appeal by the Board. The decision of the Appeal Board can be appealed to the court within 2 months of its receipt.
In respect of trademark applications accepted for examination before August 16, 2020 and not published in the Official Bulletin any person can file grounded opposition to the Office within the whole period of the application examination but not later than 5 days before issuing of the final decision.
Cancellation of registered trademarks (certificates) is possible only by the court.
Important: during the officially declared marital law all terms and deadlines are automatically extended up to the end of the same plus 60 days.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.