October 13, 2020

Intellectual Property Law Reform in Ukraine

In September, we together with our member law firm Arzinger, were pleased to host a webinar on the Intellectual Property Law Reform in Ukraine. The main topic was the main changes in the field of intellectual property and advice for businesses in developing a strategy for protecting intellectual property in Ukraine.

The discussed reform of intellectual property includes both changes in state governance of this sphere and the novelties to Ukrainian intellectual property legislation, namely in the following spheres:

  •  Patents

These changes are perhaps especially relevant for pharmaceutical companies as the patent protection now is more favorable to generic drugs producers. For example, Ukraine has introduced «Bolar exemptions», which aim to promote the entry of generic drugs on the Ukrainian market. Furthermore, protection can be denied new forms of a known substance including salts, esters, ethers, complexes, combinations and other derivatives, polymorphs, metabolites, pure form, particle size and  isomers, unless they differ significantly in properties with regard to efficacy. Post-grant opposition option is provided as well.

  • Industrial designs

Changes were also introduced concerning industrial designs. Now, in order for an industrial design to be protectable, it should in addition to novelty also have an individual character. A design is considered to have individual character if the general impression it makes on an informed user is different from the general impression made on such user by any other industrial design, as well as when the component included in the product remains visible during normal use of the product.

Some changes in the design legislation:

– Protection of the design is valid for 5 years. The protection can be subject to renewal,  but the total period of validity should not exceed 25 years.

– An unregistered industrial design can receive protection of 3 years starting when a new design with an individual character was made available to the public.

– A post-grant opposition procedure was introduced into the Ukrainian patent law.

– There is no limitation period for patent cancellation proceedings.

  • Trademarks

There have also been significant changes in respect of trademarks, in particular the following:

  • non-conventional trademarks are subject to legal protection (sound, design, color, packing design, product shape),
  • there is new ground for refusal on trademark registration – it’s prohibited to register in Ukraine those marks which on the application date / priority date are identical / confusingly similar (in particular which are associated with) the third parties’ trademarks, which are registered / applied for registration,
  • collective trademarks are subject to legal protection,
  • pre-grant & post-grant opposition of trademarks are introduced,
  • a list of new grounds  for nominative fairs use of trademarks is introduced. It means that trademarks rightholder  cannot prohibit any third parties to use in business: (a) marks related to kind, quality, quantity, purpose, value, geographic origin, time or any other features of goods/services, (b) marks necessary for identification of purpose of goods/purposes (in particular as spare parts). At the same time such TM use shall not lead to breach of TM rights of rightholders,
  • there are new rules on comparative advertising in Ukraine. The  amended list of actions which do not constitute the infringement to trademark rights was introduced including (1) use of the trademark in comparative advertising strictly for differentiation of goods and services and purposed to underline their features, conditioned that such use is done in accordance to fair trade practice and in compliance with provisions of laws on protection from unfair competition, (2) use of trademarks in comparative advertising which is done in compliance with advertising law, laws on protection from unfair competition and does not constitute unfair commercial practice,
  • some rules on trademarks non-use were introduced: (1) 5 years of continuous term of trademark non-use (since the date of trademark registration or further), (2) any person can claim trademarks non-use (no “interested person” concept), (3) beginning/resume of trademark use cannot be 3 months before claiming / receiving information on possible trademark non-use claim,
  • trademark can be registered in Ukraine if there is a letter of consent of rightholder of the cited registered trademark / holder of trademark prior rights + no risk of customers misleading,
  • the rules of trademarks re-registration were also changed: (1) 2 years (instead of 3 years) for preferential TM re-registration after voluntary revocation of trademark registration / trademark termination in Ukraine was introduced, (2) preferential trademark re-registration can be initiated either by trademark rightholder or any third party under its consent,
  • the rules of customs intellectual property enforcement were also changed: (1) electronic form of communication was introduced, (2) original products are excluded from the customs detentions, (3) expanding the range of  infringements of intellectual property rights covered and reinforces the competence of customs authorities to control the goods under customs supervision, (4) starting from the 2nd day of the customs detention right holder shall bear the costs for storing the seized products at the customs warehouse, (5) destruction of small consignments of counterfeit goods without contacting the right holder.

Our partners from Arzinger law firm are experts in the field of Intellectual property, closely following the development and potential changes in legislation. Do not hesitate to contact them should you have any questions.

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