Ukraine Adopts Amendments Strengthening IP Rights Protection
The Law on Amendments to Certain Legislative Acts of Ukraine on Strengthening the Protection of Intellectual Property Rights entered into force on April 15, 2023, amending several IP-related laws and the Civil Procedure and Commercial Codes. The law aims to further align Ukrainian legislation with that of the EU by implementing certain articles of the EU-Ukraine Association Agreement and relevant provisions of the Directive 2004/48/EC.
Remedies for IPR Infringement
The law now stipulates that remedies such as removal from public circulation and destruction of counterfeit goods and the materials and tools used for their manufacturing must be done at the expense of the infringer. It was previously unclear which party should bear these costs.
The law also introduced an alternative remedy in the form of a one-time cash reimbursement, which may be applied upon the defendant’s request, only if the infringement was unintentional and if applying the abovementioned remedies would be disproportionate to the damage caused. The imposition of the alternative remedy and the amount of the one-time cash reimbursement are to be decided by the court.
Information concerning IP right infringement and the respective court decisions may now be published in the media or disseminated in another way at the expense of the infringer, if the court issues such an order upon the plaintiff’s request.
Reimbursement of Losses Caused by IPR Infringement
While losses caused by IPR infringement could previously only be compensated by means of reimbursement of economic harm or lost profits, the amended IP laws now also provide for compensation in the form of a lump sum, which may serve as an alternative in cases where proving lost profits or unfair profits made by the infringer might be difficult. The amount of the lump sum cannot be less than the amount of compensation that would have been paid for the permission to use the respective IP rights. Moral damages can now also be awarded as compensation for non-material harm, e.g. infringed moral rights.
Additional Procedural Means for Collecting Evidence in Infringement Cases
Upon the request of any of the parties, the court may now order a suspected infringer (or any other person believed to have offered, received, owned and/or used infringing goods or provided infringing services for commercial purposes, or a person involved in the production, manufacturing and distribution of infringing goods or services) to provide information on the origin of goods and distribution networks.
Using ‘Ukraine’ in Trademarks
Granting the authorization to use the name Ukraine, the UA/UKR international country code or the Ukrainian coat of arms in a trademark is now under the jurisdiction of the special Collegial Body created by the Ukrainian Intellectual Property Office.
With the adoption of these amendments, Ukraine has implemented all IPR enforcement-related provisions under the EU-Ukraine Association Agreement. According to the interactive system Pulse of Agreement, developed by the Ukrainian government to monitor the Agreement’s implementation, 98% of the IP-related part of the Agreement has been implemented.
By: Igor Alfiorov
For more information, please contact Igor Alfiorov at our Ukraine office.