IP protection in Ukraine and Russia in light of Crimean conflict

On July 22 2014 the Ukrainian Patent and Trademark Office held a roundtable on issues related to IP protection in Crimea, a former Ukrainian region that Russia annexed on March 21. The discussion centred on the legal status of IP rights owners (ie, Crimean IP rights owners and their IP rights on the territory of Ukraine), as well as the protection of IP rights in Crimea.

On the same date (July 22), Russia’s president Vladimir Putin signed a law regulating IP protection on the territory of the Crimean peninsula (the federal law on additional amendments to the federal law on the introduction into effect of Part IV of the Civil Code of the Russian Federation). The law is available in Russian on the official legislation website. It entered into force on July 22.

According to the law, Russia recognises the exclusive rights in inventions, utility models, industrial designs, trademarks, service marks and appellations of origin that were originally registered in Ukraine and owned by parties permanently residing or located in Crimea, provided that the rights are re-registered on the basis of applications submitted to the Russian Patent and Trademark Office (Rospatent) by IP rights owners who have become citizens of the Russian Federation or by former Ukrainian legal entities that have been re-registered as legal entities in the Russian company register. If they have pending Ukrainian applications, the above-mentioned parties can re-file the applications in Russia in order to maintain their prior rights from Ukrainian applications.

The deadline for revalidating IP rights (whether by re-registering or re-filing), as well as for resolving other IP-related issues, is January 1 2015. Rospatent has already started the process of accepting revalidation applications. The relevant information on how to file such applications is available in Russian here. No English translation is available.

There have been no official letters or explanation from the Ukrainian authorities regarding the IP protection issues that have arisen as a result of the Crimean crisis.

On May 9 the Ukrainian Law on Ensuring Protection of the Rights and Freedoms of Citizens and Legal Regime on the Temporarily Occupied Territory of Ukraine entered into force. According to this law, the Crimean peninsula is still regarded as part of Ukraine, with a special legal status as an occupied territory. Ukraine guarantees protection of property in the Autonomous Republic of Crimea and the city of Sevastopol in accordance with Ukrainian laws. However, the law states that the responsibility for violation of protected rights and freedoms is placed on the Russian Federation, as the invader.

An analysis of the situation shows that neither the Ukrainian nor the Russian legislation solves the problem of the existence of rights (ie, establishing the rights holder) in Ukraine and Russia in case of identical or similar IP rights, when such rights belong to different rights holders and are being executed in Crimea. It is obvious that Ukraine will recognise the IP rights that originated on the basis of the Ukrainian legislation, and Russia will recognise the rights that originated on the basis of the Russian legislation. It is expected that Russia will not enforce Ukrainian court rulings in favour of a rights holder which enforced its rights under Ukrainian laws derogating from the Russian laws (and vice versa in Ukraine).

Taking the whole situation into account, it is recommended that rights holders check their IP portfolios in Russia and Ukraine. If their rights are protected in only one of the two countries, they should apply for protection of the same IP rights in the other country and, in the future, file national applications for IP protection simultaneously in Russia and Ukraine.

Yuriy Karlash, PETOŠEVIC, Kiev