Ukraine News Archives
January 27, 2012
Selling Drugs Online Prohibited in Ukraine
Ukraine’s Health Ministry order regulating the manufacture, wholesale and retail sale of drugs came into force on December 29, 2011.
The order outlines new licensing conditions and prohibits the sale of drugs via the Internet, post offices and outlets other than the pharmacies and institutions indicated in the order.
According to Ukraine’s State Inspectorate for the Quality Control of Medicines, 2.5 million substandard, non-registered or counterfeit packages of medicine were sold in Ukraine in 2010; almost 50 percent of the counterfeit drugs were obtained through the Internet.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: National Radio Company of Ukraine
Ukraine to Adopt Stricter Copyright Regulations
On February 1, 2011, the Ukrainian Parliament passed the Bill amending the acts on copyright and related rights. The amendments, expected to enter into force soon, will be introduced to the Law on Copyright and Related Rights, the Administrative Offences Code of Ukraine, the Civil Code and other legislative acts of Ukraine.
In accordance with the provisions of the draft Law on Copyright and Related Rights, No. 6523, a copyright owner will have the right to file a request with an Internet service provider to stop infringement in case the Internet service provider’s client infringes copyright owner’s rights. Within two weeks of the request, the Internet service provider is to warn the infringer to stop the infringement activity, e.g. remove the infringing material. If the infringer does not comply, the Internet service provider will be obliged to cut off Internet access to the infringing material or the web hosting service within two weeks from the date of the receipt of the warning. If the requirements of the copyright owner are not met, the Internet service provider will be liable along with the infringer. There are currently no proposed sanctions in the draft law.
A representative of the State Intellectual Property Service of Ukraine noted that this draft law will implement a special scheme according to which Internet access will be restricted to a specific item, e.g. the infringing movie, not to the whole website.
For more information, please contact Dina Kryvoshei or Maya Kryvoshei at our Ukraine office.
Source: Local text of the draft law; Liga.net, Ukrainian news portal
November 29, 2011
Domain Names Containing Apostrophe Successfully Operating in Ukraine
In order to find out whether having a domain name with an apostrophe is technically possible, the Ukrainian experts created three such domain names.
The first domain name ‘.ua, which was registered but at the time of going to press did not open, was created by Dmitry Kohmanyuk, Ukraine’s .ua manager.
Two other domains - мʼясо.kh.ua and звʼязок-є.kh.ua are operating with no technical difficulties. They were created by experts working for Hostmaster, operator of the Ukrainian .ua domain, and the Eastern Ukrainian Internet Coordination Center (EUICC), which handles regional domains in eastern Ukraine.
The apostrophe is part of the Ukrainian alphabet and is frequently used to indicate that the consonant preceding a soft vowel is not palatalized.
Hostmaster is ready to cooperate with domain registrars and introduce new rules making it possible for everyone to register domain names containing an apostrophe.
A few representatives from Ukraine who are members of ICANN’s Cyrillic domain working group are trying to get ICANN’s green light for the creation of such domain names. Some members are however skeptical because of the possible technical difficulties.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Hostmaster, operator of Ukrainian .ua domain
October 28, 2011
2.5 Million Packages of Counterfeit Medicine Sold in Ukraine in 2010
According to Ukraine’s State Inspectorate for the Quality Control of Medicines, a total of 1.2 billion packages of medicine were sold in Ukraine last year. Out of this amount 2.5 million packages, worth approximately USD 2.5 million (EUR 1.8 million), were substandard, non-registered or counterfeit.
The counterfeit medicine mostly consisted of antibiotics and hormone drugs bearing the marks of well-known drug makers. Almost 50 percent of the fake drugs were obtained through the Internet.
According to the Ukrainian authorities, during the last two years more than 300 cases related to misleading consumers in terms of medicine and foods for special medical purposes have been considered.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Intelvlas, Ukrainian IP news portal
September 23, 2011
Ukrainian Customs Seize Soccer Balls with Euro 2012 Marks
The Ukrainian customs officials have recently seized 2,400 footballs bearing the trademark Euro 2012 registered by the Union of European Football Associations (UEFA) ahead of the Euro 2012, the 14th European soccer championship, which will take place in Poland and Ukraine in June and July 2012.
The balls were seized on two separate occasions. The first shipment of 1,400 balls arrived from Germany and the second shipment of 1,000 balls from Pakistan. The balls were intended for the Ukrainian market.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Intelvlas, Ukrainian IP news portal
August 30, 2011
Google Finally Asserts Right to Google.ua
In October last year the Higher Commercial Court of Ukraine prevented a fictional Ukrainian company called Go Ogle from using Google’s commercial name in its domain name.
However, the same court decided to send back for a new trial the issue of the delegation of the disputed domain name by the .ua domain name registrar Hostmaster. The specific issue argued was whether the act of registration of the domain name itself infringed Google’s rights.
Considering the worldwide fame of the search engine and its trademark, obtained long before Go Ogle, the Kiev Commercial Court of Appeals ruled that the act of registration of the domain name itself infringed Google’s rights. According to the court’s decision, the domain name is to be delegated to the multinational corporation.
Experts believe that this decision shows that the Ukrainian judicial system is capable of working with delicate domain name issues. It is likely that the Ukrainian courts will have many similar cases in the future, considering that the cyber squatters registered other popular trademarked names such as interfax.ua, fortune.ua, naftogaz.ua, etc.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Hostmaster, .ua domain name registrar
Change in Individual Fees Under Madrid Protocol for Ukraine, Uzbekistan, Turkmenistan
The new individual fees under the Madrid Protocol for international applications designating Ukraine, Uzbekistan and Turkmenistan will enter into force on September 18, 2011.
Ukraine
For an application or subsequent designation, CHF 429 (EUR 374; USD 539) will be charged for three classes of goods or services and CHF 86 (EUR 75; USD 108) for each additional class. For renewals, CHF 429 (EUR 374; USD 539) will be charged regardless of the number of classes.
Uzbekistan
For an application or subsequent designation, CHF 1,028 (EUR 897; USD 1,293) will be charged for one class of goods or services and CHF 103 (EUR 90; USD 130) for each additional class. For a collective mark, CHF 1,543 (EUR 1,346; USD 1,940) will be charged for one class and CHF 154 (EUR 134; USD 193) for each additional class. For renewals, CHF 514 (EUR 449; USD 647) will be charged for one class of goods or services and CHF 51 (EUR 45; USD 65) for each additional class. For collective mark renewals, CHF 1,028 (EUR 897; USD 1,293) will be charged for one class of goods or services and CHF 103 (EUR 90; USD 130) for each additional class.
Turkmenistan
For an application or subsequent designation, CHF 171 (EUR 149; USD 215) will be charged for one class of goods or services and CHF 86 (EUR 75; USD 108) for each additional class. The same amounts will be charged for renewals.
For more information, please contact Jelena Jankovic at our Balkan Regional Office.
Source: WIPO
July 25, 2011
Ukraine Customs Security for Processing Counterfeit Goods Reduced
The amendments to the 2007 decree addressing the expenses and reimbursement of expenses related to the activities of the Ukrainian customs that contribute to the protection of intellectual property rights, issued by the State Customs Service of Ukraine, entered into force on July 21, 2011.
According to the new provisions, the security deposited by the right holders to cover all customs services needed to process allegedly counterfeit goods, including the storage fees, has been reduced from EUR 5000 (USD 7100) to EUR 1000 (USD 1400).
The security may be deposited in Ukrainian or foreign currency and is to be returned to the right holder in the currency in which it was deposited.
For more information, please contact Yuriy Karlash at our Ukraine office.
Source: Ukrainian parliament website
Ukrainian Seller of Adidas and Nike Counterfeits Sentenced to Three Years in Prison
In May 2011, a first instance court, the Ovidiopolskiy District Court, Odessa region, Ukraine, sentenced a Ukrainian seller of counterfeit apparel bearing Adidas and Nike marks to three years in prison. The Odessa Court of Appeals upheld the decision.
The infringer, identified as Rudnyk V.I, was found guilty of selling the counterfeits at the well-known wholesale market called Promrynok 7 kilometr in Odessa, southern Ukraine. The court ordered the seizure and destruction of goods and ordered the infringer to pay approximately EUR 4,400 (USD 6,200) in damages to the right holders.
The infringer was sentenced in accordance with the Criminal Code of Ukraine.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Intelvlas, Ukrainian IP news portal
June 21, 2011
Ukraine: Software Piracy Level Decreases in Computer Shops, Increases in Service Centers
According to the results of a recent market research program called Mystery Shopper, regularly performed by Microsoft Ukraine to uncover the outlets offering unlicensed software or personal computers with pre-installed unlicensed software, the percentage of illegal software in computer shops in Ukraine has sharply decreased, from 33 percent in October 2010 to 19 percent in March 2011.
However, the level of pirated software offered by centers providing software installation services has increased from 37 percent in October 2010 to 40 percent in March 2011. According to Yuriy Omelchenko, the head of the department for intellectual property protection at Microsoft Ukraine, software installation service centers have become a well-organized criminal business, making approximately USD 11 million (EUR 7.8 million) per year. Omelchenko warned that the situation has become very serious and that Microsoft Ukraine plans to take stricter measures against the service centers spreading pirated software.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Microsoft Ukraine website
May 26, 2011
Ukrainian Catering Establishments to Get Permission to Broadcast Euro 2012 Football Matches
To improve the level of protection of the Union of European Football Association’s (UEFA) intellectual property rights, public catering establishments in Ukraine, such as bars and restaurants, will have to obtain permission from the National Television Company of Ukraine in order to broadcast the 2012 UEFA European Football Championship matches.
The UEFA signed an exclusive agreement with the national television broadcaster permitting it to transmit the Euro 2012 matches in Ukraine. However, broadcasting football matches is not profitable only for TV channels but also for catering establishments that broadcast them.
In accordance with the Ukrainian law covering the organization and hosting of the Euro 2012 finals, broadcasting without permission will be treated as illegal marketing. All infringers will be punished in accordance with Ukraine’s Civil Code, Criminal Code and the Code of Administrative Offences. The sanctions will depend on the extent of damage, in this case damage meaning rights holder’s expected profit losses.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Intelvlas, Ukrainian online IP news portal
April 27, 2011
Ukraine to Stop Labeling Sparkling Wines as Champagne
The EU and Ukraine will sign a free trade agreement this year according to which Ukrainian wine producers will have to stop denominating sparkling white wines as “champagne”. The agreement is expected to come into force in 2013.
Since the Soviet times, the sparkling white wines have been produced in Ukraine under the name “shampanskoye” (champagne) in the vineyards in the southern Crimea region of the country. The Ukrainian winemakers will soon have to choose another name for their white sparkling wine.
Apart from “shampanskoye”, brandies labeled as “konyak” and red wines labeled as “madeira” are also in conflict with the EU regulations.
The free trade agreement between Ukraine and the EU is supposed to break trade barriers and bring Ukraine closer to the EU membership. The agreement is also part of EU’s strategy to export its Geographical Indications (GI) system via agreements with non-EU countries.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: The Independent, UK newspaper and online news portal
March 25, 2011
Ukraine to Adopt Amendments to Copyright Law
On February 1, 2011, the Ukrainian Parliament passed the Bill amending acts on copyright and related rights. The amended acts will be introduced to the Law on Copyright and Related Rights, the Administrative Offences Code of Ukraine, the Civil Code and other legislative acts of Ukraine. The amendments are expected to enter into force by the end of 2011.
The Bill aims to bring the provisions of Ukraine’s Civil Code and the Law on Copyright and Related Rights in line with relevant EU legislation.
The Bill more clearly defines work for hire. Under current regulations, the proprietary rights belong to the employer only; under the new regulations, the rights will belong to both the employee and the employer. The proprietary rights for computer programs and databases will belong to the employer unless otherwise defined in the agreement.
The Bill also includes a list of requirements related to copyright collectives, including the provision according to which copyright and/or related rights will no longer be managed by the state. Individuals or legal entities can now establish collective management organizations.
The other changes include:
Defining terms (“videogram”, “recreation”, “collective management organization”, “distribution”) and introducing a new term “cable retransmission”;
Adding the right to permit or prohibit a cable retransmission to the list of exclusive rights;
Prohibiting camcording;
Requiring TV and radio organizations to provide copies of agreements concluded with the authorized collective management organizations when filing a license grant request;
Increased civil, administrative and criminal responsibility for violators of copyright and/or related rights.
For more information, please contact Tatiana Panchenko at our Ukraine office.
Source: Ukrainian parliament website
March 24, 2011
ICANN Approves Ukrainian Cyrillic .укр Domain
The Internet Corporation for Assigned Names and Numbers (ICANN) has approved Ukraine’s Cyrillic country code top-level domain (ccTLD) name extension .укр (ukr). Ukraine has therefore successfully passed the second stage in the process of obtaining a non-Latin domain and is now awaiting the final step in the process – the domain delegation.
During the first stage, Ukraine prepared all the necessary documents, determined the domain operator and submitted the request to ICANN on November 16, 2009.
During the second stage, the applicant has to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.
Approximately 800,000 domain names have already been registered in the Russian .рф domain zone, which was the first Cyrillic ccTLD that ICANN delegated, on May 13, 2010.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Hostmaster, operator of Ukrainian .ua domain
US Places Bulgaria, Russia, Ukraine Markets on Top Pirates List
On February 28, 2011, the United States government released a list of marketplaces, both physical and online, well known for offering counterfeit and pirated goods. Ukrainian, Russian and Bulgarian markets and websites are included on this list.
The review of “notorious markets” will from now on be published separately. It used to be part of the Office of the United States Trade Representative (USTR) annual Special 301 report, due to be released next month.
“The United States urges the responsible authorities to intensify efforts to combat piracy and counterfeiting in these and similar markets, and to use the information contained in the Notorious Market List to pursue legal action where appropriate”, it is stated in the report.
Among physical marketplaces offering fake goods, the report includes the Petrivka Market in Kiev, Ukraine and the Savelovskiy Market in Moscow, Russia. According to the report, the Petrivka Market is an open-air market with approximately 300 stands selling pirated music, films, games and software, while the shopping center Savelovskiy Market is reportedly filled with counterfeit electronic goods.
Among the online sources of fake goods, the report lists Russian-based BitTorrent tracker Rutracker, which is among Russia’s 15 most visited websites and among the 300 most visited websites globally. Also included on the list is the Ukraine-hosted BitTorrent tracker Demonoid and Bulgarian-based BitTorrent tracker zamunda.
Russian social network vKontakte, which is among the five most visited websites in Russia and among the 40 most visited websites in the world, is also cited in the report for providing access to unauthorized audio and audiovisual material.
The full report can be downloaded by clicking here.
For more information, please contact Jelena Jankovic at our Balkan Regional Office.
Source: Office of the USTR’s Review of Notorious Markets
February 23, 2011
Ferrero Loses Raffaello Trademark Protection in Ukraine
Italian chocolate maker Ferrero has recently lost a lengthy infringement battle in Ukraine over its well-known Raffaello® trademark.
On January 19, 2011, the Higher Commercial Court of Ukraine ruled in favor of the Russian confectionary maker Landrin, selling chocolates similar to Ferrero’s in Ukraine, under the brand Landrin Waferatto Classic, in the dispute with the Belgian company Soremartec, member of the Ferrero Group.
The Ukrainian court canceled the validity of Soremartec’s international trademark registered by the Ukraine PTO under No. 798984, protecting the appearance of Ferrero’s well-known coconut round sweets Raffaello.
The dispute between Landrin and Soremartec began in April 2008, when Soremartec filed a claim against Landrin with the Kiev Commercial Court requesting that Landrin stop using the IR No. 798984 with regard to confectionary goods a and to prohibit the further use of IR No. 798984. The claim was grounded on the arguments that Landrin was producing wafer candies with coconut filling and almond nut, the external appearance and image of which reflect the IR No. 798984. Therefore, Soremartec claimed the production of wafer candies constituted use of IR No. 798984 without the authorization of the owner.
Two months later the Kiev Commercial Court received a counterclaim from Landrin requesting that IR No. 798984 be invalidated as from the filing date and that the corresponding notification be sent to WIPO. The counterclaim was grounded on the arguments that the registration lacks distinctiveness.
Both parties, Soremartec and Landrin, filed replies to their respective claims. In July 2008, Landrin replied to the claim initially lodged by Soremartec, claiming it was not using the trademark in Ukraine. In August 2008, Soremartec also lodged a reply to the counterclaim filed by Landrin, stating that the trademark under IR No. 798984 was distinctive and that the counterclaim was therefore groundless.
The court ruled that in order to make the decision, expert knowledge is required. Therefore a trademark expert was appointed. The expert concluded that that the consumers can recognize the trademark and that by the time of filing the application the trademark had enough distinctiveness and that it acquired even more distinctiveness through its use. Soremartec representatives submitted the evidence of the use of the trademark.
In addition, the expert established that the external appearance of confectionaries produced by Landrin (wafer candies with coconut filling and almond nut) is confusingly similar with IR No. 798984. It was established that Landrin’s confectionaries have the same appearance, when considering the combination of various similar features such as colors, shapes, contours and the general look of the product.
Taking into account the expert’s conclusions and the evidence submitted, the court issued a decision to sustain the claim of Soremartec in full scope and to reject Landrin’s counterclaim as well as the reply filed by the latter.
In early 2009, Landrin filed an appeal against the decision of the Commercial Court of Kiev (first instance), claiming that the court of first instance ruled in this matter in breach of procedural and substantive rules. Namely, Landrin stated that the court of first instance did not take into account the provisions of the Law stating that a trademark serves to mark or identify already produced goods (for instance confectionaries) and that such a mark should be affixed on the packaging or wrapping, and argued that the production of the goods, even if their external appearance resembles a prior trademark, does not infringe the trademark itself. In addition, Landrin requested that a second expert be appointed.
Soremartec, as well as the Ukrainian State Department of Intellectual Property, which was a third party in the proceedings, filed counter-arguments supporting that the decision of the court of first instance was grounded and correct. The court dismissed the replies and appointed a second expert as requested by Landrin.
The second expert established, inter alia, that:
- The trademark lacked distinctiveness at the moment of its creation and had not acquired distinctiveness in relation to the goods of the Soremartec on the date the IR was filed in Ukraine (February 2003);
- Similar confectionaries to the ones produced by Soremartec were present on the Ukrainian (and post USSR) market at least a few decades before the application for IR 798984 was filed. Various receipts confirming the sale of confectionaries, images of products and notifications from producers confirmed such information.
Based on the second expert’s conclusions, the Appeal Court established that the first expert’s results were incomplete. It was established that the shape of the confectionaries produced by Soremartec was not original at the time of fling of IR 798984. In addition, the Appeal Court stated that Soremartec had failed to submit any evidence proving that IR 798984 had acquired distinctiveness, neither by the date of creation nor by the registration date. The evidence provided only showed acquired distinctiveness after 2003; the evidence could just prove that, by the filing date of IR 798984, Soremartec was only advertising and selling confectionaries Raffaello.
The Appeal Court decided that the court of the first instance wrongly took into account the continuous use of IR 798984, since the evidence presented showed the use of the product as marketed, and not the actual object (alone) as it appears on the trademark representation (unwrapped praline). The court stated that the marketed product and the image of IR 798984 had different individual features.
Therefore, the Appeal Court considered the results of the first expert as incomplete and contradictory. In making its decision, the Appeal Court relied on the results of the second expert only. In addition, the Appeal Court ruled that the initial claim was filed before the wrong court and that the proceedings of the initial claim should be stopped, while the counterclaim filed by Landrin was filed in compliance with all jurisdictional requirements.
Finally, the Appeal Court issued a decision sustaining the appeal filed by Landrin, that is, to cancel the validity of IR 798984 in Ukraine and to stop proceedings relating to the infringement claim filed by Soremartec.
By the end of 2009, both Landrin and Soremartec filed cassation claims before the High Commercial Court. Landrin requested that proceedings are not stopped in the course of the infringement claim filed by Soremartec, but to issue a new decision with full dismissal of all claims made by Soremartec. This step was made in order to prevent further efforts Soremartec could try to undertake in order to hinder Landrin’s manufacturing and sales of the confectionaries in question.
Soremartec requested that the High Commercial Court cancel the decision of the Appeal Court since it applied wrong procedural rules. The Ukraine State Department of Intellectual Property also filed a claim with the High Commercial Court supporting Soremartec’s position.
In its cassation claim, Soremartec also stated that stopping the proceedings in the infringement action was groundless and that the statute of limitations for cancelling the trademark, which is 3 years in Ukraine, had expired.
The High Commercial Court ruled that the decision of the Appeal Court should be upheld. Therefore, the cassation claims of all the parties were dismissed.
Soremartec filed the claim with the Supreme Court of Ukraine. In early 2010, the Supreme Court of Ukraine decided to cancel all previous decisions on the matter. Thus, the case was sent back to the court of first instance for re-consideration.
Soremartec, as a plaintiff, added new parties – Baklazhan and M 15 as co-defendants. It is our understanding that these companies are the distributors of Landrin. The Commercial Court ruled in favor of Soremartec.
Landrin has filed an appeal with the Appeal Commercial Court of Kiev asking the Court to reverse the decision of the Commercial Court. On November 1, 2010 the Appeal Court ruled in favor of Landrin. According to Ferrero’s representatives in Ukraine, the hearing took place with blatant violation of basic procedural rules and was held by judges who are not specialized in intellectual property.
Consequently, Soremartec filed the cassation claim with the Higher Commercial Court of Ukraine. The decision of the Higher Commercial Court issued on January 19, 2011 finally cancelled the validity of IR 798984.
For more information, please contact Elena Zubenko at our Ukraine office.
Source: PETOŠEVIĆ
Ukrainian Customs Seize Two Million Counterfeit Marlboro Cigarette Packets
On January 20, 2011, the customs officials at a border crossing in the south of Ukraine seized a large shipment of empty cigarette packets and cartons marked with the trademark Marlboro and initiated a criminal investigation into the case.
The shipment of approximately 1.7 million cigarette packets and 200,000 cigarette cartons, valued at approximately EUR 292,082 (USD 394,487), arrived back in April 2010 at the seaport Illichivsk, southern Ukraine. According to the shipping forms and documents, a company from the city of Dnepropetrovsk, southeastern Ukraine, ordered the packets and cartons, which were manufactured in China. The owners of the company have, however, denied any connection with the fake goods and involvement in the case.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Ukrainian Customs
January 20, 2011
Ukraine Steps up UEFA Protection Ahead of Euro 2012 Soccer Championship
The State Department of Intellectual Property of Ukraine, in association with the Union of European Football Associations (UEFA), is drafting amendments to the Law on Organization and Implementation of the Final Part of the European Football Championship of 2012, adopted in 2007, in order to completely respond to UEFA’s requirements.
UEFA has already registered more than 100 trademarks in Ukraine relating to Euro 2012, taking place in Ukraine and Poland in June and July of 2012. The official tournament logo and the slogan “Creating History Together” in Ukrainian and English have been registered, as well as device trademarks such as EURO 2012 and POLAND UKRAINE 2012.
A public database with UEFA’s intellectual property in Ukraine has been placed on the Ukrainian PTO’s website in order to raise awareness of IP rights belonging to UEFA and its commercial partners.
The State Department of Intellectual Property of Ukraine is obliged to register UEFA’s IP rights within the six-month period, whereas the process of trademark registration usually lasts around one year. An expert group has been created in order to accelerate the procedure further and reduce the time to four months.
To improve the level of protection of the UEFA’s IP rights, the State Department of Intellectual Property has been organizing conferences and seminars and releasing informative materials.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Ukraine government news portal related to Euro 2012
December 21, 2010
Go Ogle Banned from Using Google.ua
On October 5, 2010, the Higher Commercial Court of Ukraine prevented a fictional Ukrainian company called Go Ogle from using the domain name Google.ua.
In 2007 several young Ukrainians established a company Go Ogle in Kiev and succeeded in obtaining trademark registrations for Go Ogle (No. 60594) and Google (No. 78119), and the domain name google.ua. The google.ua page was used for redirecting users to the Ukrainian dating website Kokhaimosja.
The initial consideration of the dispute between Google, an American multinational corporation invested in Internet search, cloud computing, and advertising technologies, and Go Ogle in Ukraine started in 2008 when Google filed a claim with the Kiev Commercial Court to prevent Go Ogle from using the commercial name Google in its domain name. Google also requested that the court prevent the .ua domain name registrar, Hostmaster, from delegating the domain name.
On February 3, 2009, the Kiev Commercial Court ruled in favor of Google. On June 16, 2010, the Kiev Commercial Court of Appeals upheld the decision of the Kiev Commercial Court. The Courts’ decisions were based on the argument that the domain name could lead users to believe that it belongs to the well-known search engine.
In October 2010, Go Ogle filed a cassation appeal with the Higher Commercial Court of Ukraine requesting to reverse the decision of the Kiev Commercial Court of Appeals and the Kiev Commercial Court. Hostmaster also filed a cassation appeal with the same court requesting to reverse the part of the decision related to the delegation of the domain name google.ua to Go Ogle.
On October 5, 2010, the Higher Commercial Court of Ukraine decided to deny Go Ogle’s use of Google’s commercial name in its domain name. However, the same court decided to send back for a new trial the issue of Hostmaster’s delegation of the disputed domain name. The specific issue to be argued is whether the registration of the domain name itself infringed Google’s rights.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Ukrainian news portal Biz.liga.net
October 20, 2010
Priority Registration of Cyrillic IDNs with .com.ua and .kiev.ua as of October 19
On October 19, 2010, the priority registration of Cyrillic Internationalized Domain Names (IDN) in Ukraine became available in .com.ua and .kiev.ua zones.
According to the website of Hostmaster, which administers the .ua domain, the Cyrillic IDNs registration will be held in three stages.
During the first stage, taking place from October 19 – November 17, the owners of word marks and well-known trademarks will be allowed to register domain names.
During the second stage, which will last from November 19 – December 19, domain names will be delegated to registrants who would like to register them for a period of 10 years.
Registration will then become available to everyone on December 21.
During all three stages, the requested domain names will go through a verification process to see if they comply with the registration requirements developed according to the international standards and designed to prevent cybersquatting and phishing.
For the official list of registrars, please go here.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Hostmaster, operator of Ukrainian .ua domain
Russian Chocolate Maker Banned from Selling Raffaello Look-Alikes in Ukraine
On September 17, 2010, the Kiev Commercial Court ruled against the Russian confectionary maker Landrin ending a long dispute between this company and its Belgian counterpart Soremartec, member of the Ferrero Group. The court banned Landrin from selling chocolates similar to Ferrero’s in Ukraine.
In 2007 Landrin began manufacturing sweets under the brand Landrin Waferatto Classic (right), similar in appearance to Italian confectionary maker Ferrero’s well-known coconut rounds Raffaello (left). Last month, the Kiev Commercial Court decided that Landrin Waferatto Classic could not be sold in Ukraine, as this violates the rights of Soremartec to the international trademark registered by the Ukraine PTO under No. 798984, protecting the appearance of the Raffaello sweets.
The dispute between the two chocolate makers began in April 2008, when Soremartec filed a claim against Landrin with the Kiev Commercial Court. In July 2008 Landrin filed a counterclaim and a revocation request against Soremartec’s registered trademark. On February 3, 2009 the Kiev Commercial Court ruled in favor of Soremartec.
Later in February 2009, Landrin filed an appeal to reverse the decision of the Kiev Commercial Court and at the same time Soremartec filed a revocation of the mentioned appeal. This time, on June 15, 2009, the Kiev Commercial Court of Appeals ruled in favor of Landrin.
Soremartec immediately filed a cassation appeal with the Higher Commercial Court of Ukraine requesting to reverse the judgment of the Kiev Commercial Court of Appeals and uphold the decision of the Kiev Commercial Court. The cassation appeal was dismissed.
In December 2009, Soremartec filed a second cassation appeal with the Supreme Court of Ukraine and on January 26, 2010 the Supreme Court of Ukraine ruled that Soremartec’s initial claim should be reconsidered in the Kiev Commercial Court.
Last month, the Kiev Commercial Court ruled in favor of Soremartec and dismissed Landrin’s revocation request against Soremartec’s registered trademark.
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Ukrainian magazine “Intellectual Property”; the court decisions
September 21, 2010
REHAU Gets Well-Known Trademark Status in Ukraine
Ukraine is the first country that has recognized the trademark REHAU as a well-known trademark. REHAU AG+Co, headquartered in Germany, is one of the largest polymer processing companies in the world, manufacturing products used in the construction, automotive, medical and other industries.
The Board of Appeals of the Ukrainian Patent and Trademark Office (UA PTO) acknowledged the mark REHAU as well-known in Ukraine on April 16, 2010. The decision of the Board came into effect on July 7, 2010.
REHAU has been acknowledged as a well-known trademark for products in International Class (IC) 17 (polyvinyl chloride profiles for windows, window frames, doors, door frames, door casings) and IC 19 (polyvinyl chloride systems for windows and doors and polyvinyl chloride door casings).
For more information, please contact Maya Kryvoshei at our Ukraine office.
Source: Intelvas.com
July 21, 2010
Ukraine and WIPO Sign Cooperation Program for 2010-2012
On June 30, 2010 in Kyiv, the Ukrainian Vice Prime Minister Volodymyr Semynozhenko and Director General of the World Intellectual Property Organization (WIPO) Francis Gurry signed a cooperation agreement identifying new areas for collaboration in the 2010-2012 period.
The cooperation program aims to improve the Ukrainian intellectual property protection system. WIPO experts are planning to hold various seminars aimed at harmonizing Ukrainian and international legislation and training Ukrainian law enforcement authorities, particularly judges, in the area of IPR protection.
Semynozhenko noted that Ukraine’s cooperation with the WIPO is ongoing for eight years now, during which time Ukraine improved its system of IPR protection. He noted that Ukraine is currently ranked 108th in the world in terms of the IP protection and expressed hopes that the fulfillment of the program’s measures will result in a higher ranking.
For more information, please contact Jelena Jankovic at our Balkan Regional Office.
Source: Ukrainian radio’s website, WIPO
June 23, 2010
Software Piracy Rates Increasing in Ukraine
According to the data recently presented by the analytical company IDC, the rate of unlicensed software use in Ukraine increased by 1 percent last year, reaching the 85 percent mark, while the piracy losses reached USD 272,000,000 (EUR 220,000,000) in 2009.
As the increasing software piracy rates have adverse effects on the technological and economical development of the country and its investment attractiveness, the government has made promises to the international community to actively combat piracy and severely punish the companies offering unlicensed products to their clients.
The deputy chief of the state department for fighting economic crime stated that during the first four months of 2010, Ukrainian law enforcement authorities discovered 107 cases of copyright infringement of Microsoft’s products and that as a result Microsoft initiated 76 proceedings in Ukrainian courts.
The deputy chairman of the Ministry of Education’s intellectual property department said that a special Coordination Board has been created, consisting of state authorities and rights holders, in order to combat the proliferation of unlicensed products in Ukraine.
The Board has outlined several priorities for the 2010-2012 period, which are:
Decreasing the level of software piracy by 5 percent
Making sure that state authorities use legal software
Adopting additional legislation against the producers of pirated products
Organizing additional training for law enforcement officials and judges
Reducing the movement of pirated goods by tightening border control
For more information, please contact Elena Zubenko at our Belgium office.
Source: Unian.net
First Electronic Application for Invention in Ukraine
After working for almost five years on introducing electronic applications, at the beginning of June the Ukrainian Industrial Property Institute received the first electronic application for an invention complete with the digital signature.
The application was prepared and submitted by the patent attorney Tatiana Lisna on behalf of the applicant Taktona, LLC, for an invention in the field of internal combustion engines.
As stated by the Deputy Chairman of the State Department of Intellectual Property Vladimir Dmitrishin, the transition to the paperless form is very important as it will substantially simplify the filing of applications and make the obtaining of industrial property rights procedure faster and cheaper.
For more information, please contact Andriy Nikolayenko at our Ukraine office.
Source: Unian.net
April 26, 2010
Ukraine Rules Against Viasat in Copyright Dispute
Ukraine’s Supreme Court has ruled against satellite television distributor Viasat Ukraine in its dispute with a Ukrainian broadcaster Poverkhnost Sport TV over copyright infringement.
Kyiv Post reported on April 1, 2010 that Poverkhnost Sport TV sued Viasat Ukraine for illegally rebroadcasting Union of European Football Associations (UEFA) Champions League soccer matches in the 2008-2009 season. Poverkhnost permitted several TV channels to air the matches terrestrially, but Viasat Ukraine broadcast those channels live via satellite.
Poverkhnost legal representative Viktoria Zhelenkova said the court ordered the defendant to pay a compensation of EUR 742,095 (USD 1,010,362) to the plaintiff. Viasat Ukraine disagrees with the decision and will appeal. “We still question the very fact that this case was heard by the Supreme Court, given that the Constitutional Court defined the High Commercial Court as the supreme body in the economic courts system. As a matter of fact, the ruling of the Supreme Court on a cassation appeal was unprecedented,” stated Oksana Ferchuk, CEO of Viasat Ukraine.
According to Kyiv Post, this is the first time the Supreme Court has ruled on an issue involving copyright infringement between two broadcasters. It is expected that this case will form an important precedent in Ukraine’s copyright practice.
Viasat Ukraine, founded as Vision TV in 2006, operates as a subsidiary of Swedish media conglomerate Modern Times Group and Austria-based supplier of digital satellite receivers, Strong Media Group.
For more information, please contact Jelena Jankovic at our Balkan Regional Office.
Source: Kyiv Post
Eighty-two Percent Ukrainian Companies Involved In IPR Disputes
Eighty-two percent of companies operating in Ukraine have been involved in intellectual property rights disputes in the past three years, according to a poll of 62 companies, out of which 69 percent Ukrainian and 31 percent foreign.
Fifty percent of the companies polled encountered trademark infringement, while 33 percent were faced with illegal use of industrial samples.
Around 61 percent of company representatives blamed poor legislation for the insufficient protection of intellectual property rights in Ukraine, 32 percent blamed corruption and 26 percent a general lack of awareness about IPR.
The companies participating in the poll commissioned by the Arzinger law firm and conducted by the InMind research company, were from the following sectors: alcoholic and nonalcoholic beverages, foodstuffs, light industry, household chemicals, agricultural chemicals and pharmaceuticals.
For more information, please contact Jelena Jankovic at our Balkan Regional Office.
Source: Ukrainian News Agency
March 30, 2010
USD 62,000 Worth of Pirated Disks Seized from Ukrainian Shop
The police officials of the city of Mariupol, southeastern Ukraine, have recently seized 14,000 counterfeit CDs of music, movies, computer games and software worth approximately USD 62,000 (EU 45,000).
The operation was conducted as part of Ukraine’s program to suppress the production and sale of pirated audio and video material and ensure the protection of Union of European Football Associations (UEFA) IP rights during the Euro 2012 soccer championship, taking place in Ukraine and Poland in June and July of 2012.
During the inspection of the chain store “Mir diskov” in the center of Mariupol, the police found genuine disks located in the store windows, while the cabinets and boxes inside the store contained a large number of pirated ones.
The officials have initiated a legal procedure against the distributors. The investigation has shown that the goods were produced outside Ukraine and that it appears that all stores belong to one owner, but are registered under different names.
For more information, please contact Elena Zubenko in our Belgium office.
Source: Ukrainian IPO
December 22, 2009
Ukrainian Cyrillic Domain to Start Operating by March 2010
The Ukrainian Network Information Center (UNIC) has submitted an application to the Internet Corporation for Assigned Names and Numbers (ICANN) to register the .ukr domain in Cyrillic.
Although UNIC representatives have stated that the new domain is expected to start operating by March 2010, a number of experts expressed doubts because of the peculiar ICANN rule, under which at least one letter should differ in the shape from the Latin one.
Last month Russia started priority registration of Cyrillic domain names on behalf of trademark owners.
Apart from Ukraine and Russia, other countries that use the Cyrillic alphabet include Belarus, Bulgaria, Kazakhstan, Kyrgyzstan, Macedonia, Mongolia, Serbia, Tajikistan and Uzbekistan.
For more information, please contact Jelena Jankovic in our Balkan Regional Office.
Source: Kyiv Post
November 24, 2009
Ferrero Loses Raffaello Trademark Protection in Ukraine
The Ukrainian Arbitration Court ruled against the well-known Italian confectionery manufacturer Ferrero in the dispute with the Russian company Landrin over the protection of the Raffaello trademark in Ukraine.
Landrin manufactures chocolates under the brand Landrin Waferatto, which are very similar in appearance to Ferrero’s Raffaello candy. The Italian company maintained that Landrin used Raffaello trademark images on its chocolate packages. Landrin argued that Ferrero’s trademark has no distinctive features, while Ferrero argued that the images of the Raffaello candies could be considered a trademark.
Ferrero will appeal the decision before the Ukrainian Supreme Court.
Francesco Paolo Fulci, international vice president of Ferrero, explained that Landrin started producing its round waffle sweets with coconut filling for the Ukrainian market in year 2007, and later it spread to Latvia. Fulci underlined that both the Russian and Latvian courts ruled that these actions of the Russian confectionery company are illegal. He also noted that the head of Landrin is a former Ferrero employee in Russia.
For more information, please contact Jelena Jankovic in our Balkan Regional Office.
August 19, 2009
WIPO Holds Summer IP School in Ukraine
The World Intellectual Property Organization (WIPO) held a summer school on intellectual property in Odessa, Ukraine, between July 20 and 30, 2009.
The event was jointly organized by the Ukrainian Intellectual Property Office, the Odessa National Legal Academy, and the WIPO Worldwide Academy.
The objective of the summer school was to enable senior university students and young professionals to acquire deeper knowledge of intellectual property, and to gain an appreciation of IP as a tool for economic, social, cultural and technological development and to reveal the role WIPO plays in the global administration of IP.
The school offered lectures of prominent IP experts from the WIPO and Ukraine, as well as case studies and group discussions on selected topics.
For more information, please contact Jovana Miocinovic in our Balkan Regional Office.
May 12, 2009
Ukraine Accedes to Locarno, Strasbourg and Vienna Agreements
On April 7, 2009, Ukraine acceded to the Locarno Agreement on the International Classification for Industrial Designs, and the Strasbourg Agreement on the International Patent Classification.
According to the World Intellectual Property Organization (WIPO), the Locarno Agreement will enter into force in Ukraine on July 7, 2009, while the Strasbourg Agreement will enter into force on April 7, 2010.
On April 29, 2009, Ukraine acceded to the Vienna Agreement on the International Classification of the Figurative Elements of Marks. This agreement will enter into force in Ukraine on July 29, 2009.
For more information, please contact Jovana Miočinović in our Balkan Regional Office.
April 10, 2008
Ukraine Joins WTO
On Feb. 5, 2008, the World Trade Organization and Ukraine signed an agreement on Ukraine’s entry into the WTO.
Ukraine must ratify the accession agreement no later than July 4, 2008. 30 days after ratification, Ukraine then becomes a full member of the WTO.
Ukraine President Victor Yushchenko called the WTO membership “a decisive milestone in the development of our economy.”
For more information, please contact Judith Goeke.
November 23, 2005
Ukraine Considering Amendments to Intellectual Property Law
Ukrainian authorities recently considered various amendments to its intellectual property laws. Among other things, they considered amending the definition of the term “applicant”, as outlined in the Law on the Protection of Rights to Trademarks, Geographical Indications and Firm Names.
One of the proposals included the requirement for the applicant to carry out an “economic activity” according to the Ukrainian legislation.
This option is not likely to be adopted by the Ukrainian authorities as it would be contrary to Article 3 (7) of the Trademark Law Treaty (WIPO, 1994), to which Ukraine is a contracting party, which reads:
“In particular, the following may not be required in respect of the application throughout its pendency:
(ii) an indication of the applicant’s carrying on of an industrial or commercial activity, as well as the furnishing of evidence to that effect;
(iii) an indication of the applicant’s carrying on of an activity corresponding to the goods and/or services listed in the application, as well as the furnishing of evidence to that effect”.
Among other issues discussed were the genuine use of registered trademarks and prevention of bad faith registrations.
For more information, please contact our Ukraine representative.
July 13, 2005
Changes in Ukraine IP Legislation
A number of amendments to the current IP legislation in Ukraine are under consideration by the competent legislative bodies of Ukraine.
Accordingly, on July 1, 2005, the State Department of Intellectual Property of Ukraine published on its website drafts for changes to five IP laws:
The Law on Protection of Rights to Trademarks, Geographical Origins and Commercial Names;
The Law on Protection of Rights to Topographies of Integrated Circuits;
The Law on Protection of Rights to Trademarks;
The Law on Protection of Copyright and Related Rights;
The Law on Protection of Rights to Patents and Utility Models.
The draft laws seek to further regulate the conditions for acquiring IP rights, procedural issues, termination and renewal of rights, and IP rights protection.
For more information, please contact our Ukraine representative.
February 09, 2005
New Official Fees in Ukraine
In December 2004 the Ukrainian Government adopted a Decree, which introduced new official fees in the field of intellectual property. The decree came into force on February 5, 2005.
New fees have been established for recordal of changes against pending applications, as well as for the publication of grant for trademarks, patents, industrial designs and utility models.
Regarding trademark matters, the amendments include an additional fee for applications in colour. The basic filing and renewal fees will cover only one class of goods/services. Therefore, an extra fee is foreseen for each additional class in excess of one.
For substantive examination of patents, a lower discount is foreseen if a search report is available (30% instead of 50%).
With respect to the annuities, the 1st and 2nd ones shall not be covered by the filing fee for patents and industrial designs.
Official fees for foreign applicants have been fixed in Euros.
For more information on the new official fees in Ukraine, please contact our Ukraine representative.
January 14, 2005
PLEASE NOTE THAT THIS PARTICULAR NEWS PIECE BELOW, ORIGINALLY PUBLISHED IN JANUARY 2005, IS NO LONGER VALID. PLEASE CONTACT US FOR ADDITIONAL INFORMATION REGARDING THE INVALIDITY OF THIS LAW. INVALIDITY NOTED ON THIS WEBSITE IN JUNE 2005.
Pharmaceutical trademarks in Ukraine must now be written in Cyrillic letters on the drugs and/or the packaging, whether or not the trademark is written in Latin script.
Although using an unregistered Cyrillic mark is widely considered as use of a registered mark in Latin, proving use can be time consuming and expensive, and may involve court proceedings if the proprietor is challenged.
Accordingly, to avoid potential difficulties and differences in phonetics and spelling, we recommend pharmaceutical trademarks to be registered in Cyrillic as well as Latin script.
For more information on pharmaceutical trademarks in Ukraine, please contact our Ukraine representative.