EU-Ukraine Association Agreement: an update

Ukraine

On September 16 2014 Ukraine ratified the EU-Ukraine Association Agreement and, on September 17 2014, adopted a plan for its implementation.

In accordance with the plan, relevant IP laws should be drafted by the end of July 2015 and public access to filed trademark applications should be introduced by the end of December 2016.

The agreement has a significant impact on IP protection in the country. Generally, the agreement provides for the harmonisation of the Ukrainian legislation with the EU legal framework and the resolution of a number of problematic issues in the IP sector.

As the preparation of the text of the agreement and its signing by the parties has had a long history, it is yet unclear whether the latest changes in the EU legislation will be included into the draft Ukrainian laws and bylaws implementing the agreement, in particular the provisions of the Regulation 608/2013 concerning customs enforcement of IP rights and repealing Council Regulation 1383/2003, and Directive 2014/26 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market.

Protected geographical indications (GIs) at the EU level will also get protection in Ukraine. Comparable products produced in Ukraine and labelled with EU GIs after the agreement entered into force and before the transitional periods end (seven years for cheese and 10 years for alcohol) may continue to be sold in the territory of Ukraine until stocks run out.

Generic names in the Ukrainian language, such as 'Med' (diminutive of 'Medok') (honey) and 'Kawa' (coffee) cannot be protected as GIs, as provided for in the common declaration on the right to use certain names in Annex XXII-D to Chapter 9 of the agreement.

Under the agreement, any natural person or legal entity is allowed to file objections to granting EU protection to Ukrainian GIs, as well as to EU GIs in Ukraine, for the EU GIs listed in the annexes to the agreement.

In terms of supplementary protection certificates for medicinal products, the current provisions of the Ukrainian legislation say that the term of protection may be extended for the period that elapses between the filing of the patent application and the authorisation to place the product on the market, but not longer than five years. For example, if it took seven years to complete the marketing authorisation process, the extension will cover only five years. In accordance with the agreement, such period will be reduced by five years, and the end result will equal the supplementary protection term. If the process took seven years, seven is reduced by five, and there is a two-year supplementary protection term.

Finally, the Association Agreement provides for a new criterion for the protection of designs (individual character), as well as a new form of protection (unregistered designs). The term of protection increases from 15 years to 25 for registered designs. For unregistered designs, the term should amount to at least three years from the date on which the design was made available to the public in the territory of one of the parties.

Yuriy Karlash, PETOŠEVIĆ, Kiev

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