EU-Ukraine IPR Dialogue Addresses Main Issues

Oct 31 2015 - 19:07

On September 29 and 30, 2015, PETOŠEVIĆ CEO Slobodan Petosevic took part in the EU-Ukraine IPR dialogue as the INTA representative/observer.

The dialogue was preceded by a preparatory meeting on September 29, which was led by the EU Delegation, represented by Mr. Pedro Velasco Martins of the ECDG in charge of intellectual property questions. During the preparatory meeting most of the points outlined by the INTA members/trademark owners were highlighted to the EU Delegation, since the intention was to make sure that issues important for trademark owners are properly addressed.

The main changes to the Ukrainian Trademark Law, as presented by the Ukraine PTO, include:

  • Article 6septies of the Paris Convention, on trademarks registered in the name of an agent or representative, will be transposed into the local trademark law
  • A new provision concerning bad faith filings — this ground for refusal may be only invoked in court proceedings after a trademark is registered
  • A new provision on acquiescence, which does not exist in the current law
  • A provision establishing a fixed amount (10-50,000 minimal wages) as an option for compensation where damages are difficult to appraise

The points outlined by INTA were:

1. Criminal sanctions for counterfeiting

Provisions for both imprisonment and fines as available criminal sanctions for willful infringement should be amended.

  • Low penalties: the penalties are still symbolic; the maximum fine should be increased.
  • No imprisonment foreseen: Article 229 of the Criminal Code should be amended. 

2. Improvements regarding the destruction of counterfeit goods needed

3. Customs and border measures

  • There is a need for enhanced cooperation between departments of Customs authorities. INTA recommends that governments should revise their rules and procedures to provide prompt and reasonable access to relevant documents and information gathered by governments on counterfeiters, for the trademark owners to use in conducting private investigations or the filing of complaints to the courts or other government agencies.
  • IPR holder or their agents (not the court-designated experts) should provide expertise on the nature of the detained goods. 

  • The Customs Code needs to be amended to comply with the Singapore Treaty. INTA endorses the adherence to the Singapore Treaty on the Law of Trademarks, particularly to reintroduce the requirement for a security deposit to prevent misuse.

4. Court Proceedings

  • No statutory damages
  • Preliminary injunction is difficult to obtain – a clear test must be established
  • Specialized judiciary is needed
  • Expert opinions in trademark proceedings are unnecessary and costly

5. Substantive trademark law

  • An amendment of the Ukrainian Trademark Law is necessary to allow refusal or invalidation on the grounds of bad faith. 

  • The quality of trademark examination needs to be improved.
  • Real “opposition” proceedings are needed. According to the current system, third parties do not become a party in the proceedings, and their role is merely limited to submitting their “observations” to the PTO. 

  • The calculation of the non-use period with respect to International Registrations is very unclear under the current regulations.
  • In order to prove trademark use, courts require that both the purchasing and the selling take place inside the Ukrainian territory. This poses a problem to trademark owners who conduct business in Ukraine (e.g. via the Internet) without having a physical presence in the territory. 

  • Article 6 of the Trademark Law says that protection should not be granted to trademarks similar or identical to prior trademarks and trade names known in Ukraine. Under the current practice, the Ukrainian PTO will cite earlier trademarks ex officio, whereas when it comes to trade names, they will only take them into consideration if a third party invokes the same through an opposition (observations).

6. Lack of legal regulation of domain names

  • There is no specific law regulating the status of domain names, the procedure of their registration, licensing and transfer. The Trademark Law is also silent regarding the remedies against cybersquatting. New legislation and amendments are thus necessary. 

Since there were doubts that all the issues would be discussed, the priority goals were to develop a direct relationship between the INTA and Ukraine authorities and ensure that at least the counterfeiting issues, the issues related to the proof of use and the issues related to the lack of opposition procedure are tackled. Most of the issues were successfully brought up during the preparatory meeting and consequently were sufficiently mentioned by the EU Delegation during the day of the dialogue. The direct contact between the INTA and the Ukrainian officials was successfully established and will be followed up by meetings in Brussels and Kiev as convenient and appropriate.

By: Slobodan Petosevic

For more information, please contact Slobodan Petosevic at our Luxembourg office.

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