Ukraine

Massive anti-counterfeiting operation in China; Ukraine fake pharma crackdown; Coronavirus band trademark – news digest

In our latest round-up, we look at how American consumers are changing their brand preferences during covid-19, a bid for the Brooks Brothers brand, the Beijing IP Court invalidating a 3D trademark, and much more.

Massive anti-counterfeiting operation in China; Ukraine fake pharma crackdown; Coronavirus band trademark – news digest
Seven counterfeit hotspots in Ukraine that rights holders should have on their enforcement radar
3 Oct 2019

Seven counterfeit hotspots in Ukraine that rights holders should have on their enforcement radar

In the next part of our regular series on marketplaces across the world that reportedly engage in the trade of counterfeit goods, experts reveal physical and digital areas in Ukraine.

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18 Sep 2020

Ukraine amends its trademark law – key changes highlighted

Amendments to the Ukrainian trademark law entered into force on 16 August 2020, bringing about several important changes. Here is what you need to know. Read more

24 Aug 2020

Ukraine adopts by-laws implementing Customs Code amendments

In order to implement the recent amendments to the Customs Code related to customs enforcement of IP rights, the Ministry of Finance adopted two orders which entered into force on 30 June 2020. This update reviews the key points that IP rights owners should be aware of. Read more

16 Apr 2020

Cake wars: confectioner Roshen sues ice cream maker Khladoprom over ‘Kyiv cake’ trademark

In the dispute between leading confectionery manufacturer Roshen and ice cream maker Khladoprom over the use of the mark KYIVSKY TORT, the Kyiv City Commercial Court has ruled in favour of Roshen. Read more

12 Feb 2020

Ukraine increases criminal penalties for production and distribution of fake drugs

Amendments to Ukraine’s Criminal Code increasing the criminal penalties for the production and distribution of counterfeit medicines entered into force on 28 November 2019. Read more

Anti-Counterfeiting

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14 May 2019

Procedures and strategies for anti-counterfeiting: Ukraine

No laws or regulations deal specifically with counterfeiting in Ukraine. Thus, this type of infringement is dealt with under the Trademark Law. Although that statute contains no definition of ‘counterfeit goods’, the relevant civil and criminal laws contain blanket provisions referring to the Trademark Law, particularly the definition of ‘use of a trademark’. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Ukraine

No laws or regulations deal specifically with counterfeiting in Ukraine. Thus, this type of infringement is dealt with under the Trademark Law. Read more

18 May 2017

Procedures and strategies for anti-counterfeiting: Ukraine

No laws or regulations deal specifically with counterfeiting in Ukraine. Thus, this type of infringement is dealt with under the Trademark Law. Although that statute contains no definition of ‘counterfeit goods’, the relevant civil and criminal laws contain blanket provisions referring to the Trademark Law, particularly the definition of ‘use of a trademark’. Read more

23 Jul 2007

New Customs regulation released

The State Customs Service has issued a regulation which determines
the type, amount and mechanism for the provision of a deposit or equivalent
guarantee to Customs by owners of IP rights or their representatives. Such securities
or guarantees are required to reimburse the costs accrued by Customs in the
case of seizure of goods that are suspected to be counterfeit and can also be
used to cover damage that may be suffered by the owner of the seized goods.

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Brand management

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10 Sep 2018

Trademark procedures and strategies: Ukraine

The Trademark Act does not protect unregistered trademarks as such. However, in certain cases, the owner of an unregistered mark that is used in Ukraine can protect its rights on the grounds of unfair competition laws. Read more

Enforcement and Litigation

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16 Jan 2020

Changes to customs enforcement of IP rights - key points highlighted

The amendments to Ukraine’s Customs Code related to customs enforcement of IP rights entered into force on 14 November 2019. The amending law, which is modelled after Regulation 608/2013, aims to bring Ukrainian legislation into line with EU standards. Read more

17 Oct 2019

Mattel Inc overcomes obstacle to BARBIE® trademark registration in Ukraine

Mattel Inc has obtained the cancellation of the mark БАРБІ (‘BARBI’ in Cyrillic) in Classes 29, 30 and 32, thereby removing the obstacle to the registration of its BARBIE mark in Classes 8, 29, 30 and 32. Read more

11 Feb 2019

New domain name dispute resolution policy to be launched - what you need to know

In a welcome development for trademark owners, a new policy for the resolution of domain name disputes under the ‘.ua’ TLD will be launched on 19 March 2019. Read more

10 Sep 2018

Supreme Court ends long-running debate: grace period from Association Agreement directly applicable in Ukraine

Ukraine’s Supreme Court has upheld decisions of the lower courts finding that the EU-Ukraine Association Agreement - which provides for a five-year non-use grace period, as opposed to three years under the national law - applied with direct effect. Read more

Government/Policy

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24 Jan 2020

Ukraine amends GI law – what you need to know

Amendments to the Ukrainian Law on Geographical Indications, which bring the national legislation into line with Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs, entered into force on 1 January 2020. Read more

12 Jul 2019

Ukraine regulates organic food production and labelling

The law regulating organic food production and labelling will enter into force in Ukraine on 2 August 2019. Trademark owners should be cautious when using the word ‘organic’ in product names and trademarks. Read more

21 Jun 2019

New Ukrainian language law: Ukrainian official language for product labelling and advertising

The new Ukrainian language law, which enters into force on 16 July 2019, will require the use of the Ukrainian language for product labelling and advertising, with the exception of trademarks. Read more

7 Nov 2018

New drafts amendments to patent, utility model, design and trademark legislation – what you need to know

The Ukrainian Ministry of Economic Development and Trade has released new draft amendments to the patent, utility model, design and trademark legislation for public review. Read more

IP Offices

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20 Oct 2016

Reform of IP governance in Ukraine

The Cabinet of Ministers of Ukraine has approved Decree 585 that will launch the reform of state governance in the IP sphere. It is believed that the reform will ultimately result in the creation of a single national patent office instead of the existing two-tier model and will increase transparency and efficiency of governance in the IP sphere.

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Online

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27 Sep 2019

WIPO Arbitration and Mediation Centre issues first decision under UA-DRP

Following the entry into force of the ‘.ua’ Domain Name Dispute Resolution Policy in March 2019, the WIPO Arbitration and Mediation Centre has issued its first administrative panel decision in proceedings involving a ‘.ua’ domain name. Read more

20 Jul 2017

Ukraine facilitates IP protection on the Internet

The Law of Ukraine on State Support of Cinematography has come into force, including amendments to the Law of Ukraine on Copyrights and Related Rights. Although the amendments are designed to address protection of copyright on the Internet, some provisions may be helpful in dealing with other IP matters.

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20 Feb 2015

Finding of trademark infringement results in transfer of domain names to mark owner

The Kiev Commercial Court has held that use of the domain names 'vilpe.com.ua' and 'vilpe.net.ua' by a Ukrainian company infringed the trademark rights of Finnish company SK Tuote OY. The court ordered that the local domain name registrar - a co-defendant in the matter - re-delegate the aforesaid domain names to the trademark owner.

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11 Feb 2013

eBay obtains cancellation of EBAY mark for telecommunication services

The Solomensky District Court of Kiev has ruled in favour of eBay in its action against Ukrainian resident Stasyuk Andriy, the Ukrainian Patent and Trademark Office and the domain name registrar NIC.ua. The court invalidated Andriy’s trademark registration for the mark EBAY and ordered that Andriy’s domain names 'ebay.com.ua' and 'ebay.co.ua' be transferred to eBay.

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Portfolio Management

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10 Apr 2018

New grace period for non-use? Court finds that Association Agreement should have direct effect

The Kiev Commercial Court has held that the Association Agreement between the European Union and Ukraine, which provides for a five-year grace period for non-use, shall apply with direct effect.

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7 Mar 2018

Higher IP Court to start operations this year; efficiency expected to improve

The new Higher Court on Intellectual Property Matters, whose jurisdiction covers of wide range of IP and unfair competition disputes, is expected to start operating this year.

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5 Apr 2017

Higher Economic Court addresses trademark issues in review letter

The Higher Economic Court has issued Review Letter No 01-06/521, which concerns the application of the law by the economic courts within the context of IP disputes. Although review letters do not have the weight of law, they are usually taken into account by the lower courts. The review letter considers the relative grounds for refusal of a trademark, as well as the concept of 'exhaustion of rights'.

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29 Mar 2017

Trademark procedures and strategies: Ukraine

National trademark laws include: the Civil Code of Ukraine (435-IV/2003); the Law on Protection of Rights to Marks for Goods and Services (3689-XII/1993) (the ‘Trademark Act’) and; the Rules for Drafting, Filing and Consideration of Trademark Applications, approved by the State Department for Intellectual Property (116/1995).

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Trademark law

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6 Dec 2017

Ukraine establishes IP court

The process of establishing a new court in the Ukrainian judicial system, the High Intellectual Property Court, was recently launched by Decree 299/2017. The court will have jurisdiction over IP-related disputes and will act as a court of first instance and a court of appeal. The establishment of a specialised IP court is one of the most important changes brought about by the judicial reform and is expected to make the Ukrainian IP system more efficient and IP-related litigation more consistent.

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12 Jul 2016

Ukraine adopts new laws on judicial reform

The Ukrainian Parliament has adopted three laws that seek to transform the outdated judicial system, ensure efficiency and transparency and improve professional and ethical standards for judges.

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25 Sep 2015

Publicly accessible database of pending national applications is launched

The Ukrainian Intellectual Property Institute has launched a publicly accessible database providing the details of pending national trademark applications. Although the trademark law provided that anyone had a right to review the contents of an application, previously the only option was to ask the institute to perform such a search as a paid service. The database is expected to facilitate the filing of oppositions against national trademark applications.

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4 Jun 2015

Introduction of administrative appeal against industrial designs and utility models considered

During a recent roundtable organised by the Intellectual Property Office, the majority of attendees supported the idea of introducing an administrative appeal procedure against registered industrial designs and utility models. There is currently no substantive examination for industrial design and utility model applications, which encourages copying.

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Eugenio J Torres-Oyola
Managing Partner
Hato Rey, Puerto Rico
Ferraiuoli LLC