Volodymyr Yakubovkyy and Denys Vergeles prepared an overview of intellectual property rights in Ukraine.
REGULATORY FRAMEWORK OF IP RIGHTS IN UKRAINE
What is the legal regulation of intellectual property rights in Ukraine?
The main pieces of the local legislation that govern IP rights in Ukraine are:
Law on the Protection of Rights to Trademarks of 15.12.1993, No. 3689-XII, as amended;
Law on the Protection of Rights to Industrial Designs of 15.12.1993, No. 3688-XII, as amended;
Law on the Protection of Rights to Inventions and Utility Models as of 15.12.1993, No. 3687-XII, as amended;
Law on Copyright and Allied Rights of 23.12.1993, No. 3792-XII, as amended;
Law on Distribution of Copies of Audiovisual Works, Phonograms, Videograms, Computer Programs, Databases of 23.03.2000, No. 1587-III, as amended;
Law on the Protection of Geographic Designations as of 16.06.1999, No. 752-XIV, as amended;
Law on the Protection of Rights to Composite Semiconductor Products as of 05.11.1997, No. 621/97-BP, as amended;
Law on the Protection of Rights to Plant Varieties of 21.04.1993, No. 3116-XII, as amended;
Civil Code of Ukraine of 16.01.2003, No. 435-IV, as amended.
Ukraine is also a party to the core international and European treaties and conventions on intellectual property rights, in particular:
Paris Convention;
Berne Convention;
WIPO Copyright Treaty;
Patent Cooperation Treaty;
Madrid system;
Hague system;
WIPO-administered treaties on classification;
TRIPS Agreement.
What national agencies govern and regulate IP matters in Ukraine?
The Ministry for the Development of Economy, Trade and Agriculture of Ukraine (MDETA) is responsible for the implementation of the state policy in the intellectual property area.
State Enterprise “Ukrainian Institute of Intellectual Property” (Ukrpatent) is the only institution authorized to deal with the IP matters (patents, trademarks, industrial designs, utility models, geographical indications, etc.).
Registration of IP rights in Ukraine
Trademarks
What is the procedure for trademark registration in Ukraine?
The process of registration of a trademark in Ukraine can be divided into several stages:
1. OPTIONAL – search for similar TM already registered in Ukraine.
Under Ukrainian law, trademarks that are similar to others and therefore can be mixed up cannot be registered. So, to smoothen the registration process it is highly recommended to conduct primary research (i) to identify whether similar trademarks have already been registered in Ukraine; as well as (ii) to prepare in advance well-grounded justification for TM registration if similar TMs are detected.
2. Filing an application for TM registration
After applying for TM registration, a two-stage examination procedure is conducted by Ukrpatent:
(a) Formal stage – verification of the validity of the application documents;
(b) Qualification stage – verification of the ability to grant protection to a respective TM. In particular, the TM is checked for similarity with already registered TMs and compliance with the general qualification requirements.
3. Obtaining a TM registration certificate
TMs are registered in the State Trademark Register of Ukraine. The official online version of the Register is available on the website of Ukrpatent (link). A certificate is issued within one month after the registration of a TM. Information of a TM certificate is published in an official newsletter and registered in the State Trademark Register of Ukraine.
International trademark registrations extended to the territory of Ukraine enjoy the same level of protection as granted by the national registration.
How long does the registration of a TM take?
The process of TM registration takes from 6 months (expedited procedure) to 2 years (standard procedure) as of the acceptance of an application.
A TM registration certificate is granted for 10 years and may be extended every 10 years for the same period.
Industrial designs
What is covered under industrial design protection pursuant to the Ukrainian legislation?
An industrial design is a result of creative work of a person in the sphere of styling (artistic designing). The object of an industrial design may be a shape, picture, coloration or combination thereof, which defines the appearance of an industrial product. IP rights to industrial designs are attested with a patent. However, an industrial design is patentable only if it meets the requirement of novelty.
What objects cannot receive legal protection as industrial designs?
Under Ukrainian law, legal protection cannot be granted to:
(a) objects of architecture (except for small architectural forms);
(b) industrial, hydrotechnical and other stationary structures;
(c) printed products as such;
(d) unstable objects of liquid, gaseous, powdery or similar substances.
What is the procedure for obtaining a patent for an industrial design?
The process of registration of an industrial design consists of the following steps:
1. Filing for registration of the industrial design
After the respective application is filed, it shall be examined from scientific and technical perspectives. Ukrpatent may further request/suggest the applicant to add certain information/restate designated data.
2. Examination of the application
The application is checked for compliance with formal requirements, as well as with conditions for patent protection.
3. Obtaining a patent
The patent is published in an official newsletter, registered in the State Register of Patents for Industrial Designs of Ukraine and within one month after registration issued to the owner of the industrial design
How long does the registration process take and what is the validity of a patent for the industrial design?
The overall procedure of obligatory registration may take from 6 up to 12 months as of the date of filing. Protection is granted for up to 10 years and can be prolonged for no more than 5 years.
Inventions/utility models
What are the qualifications for patent protection of inventions/utility models?
Both inventions and utility models are subject to mandatory state registration. To qualify for patent protection, inventions shall meet the following requirements: (i) novelty; (ii) non-obviousness; (iii) utility. Utility models shall have (i) novelty, and (ii) utility.
What is the procedure for registration of an invention/utility model?
The registration procedure of an invention/utility model includes the following steps:
1. Filing an application for registration of an invention/utility model
As soon as the application is submitted, Ukrpatent conducts a formal examination (verification of the accurateness of the patent application) and a qualification examination (verification whether the designated invention/utility model meets the requirements of patentability).
2. Obtaining a patent for an invention/utility model
Information on issued patents is published in an official newsletter and registered in the State Invention Patent Register or State Utility Model Patent Register. Within one month after registration, the patent is handed over to its owner.
How long does the registration process take and what is the validity of a patent for an invention/utility model?
Generally, the process of obtaining a patent takes about 18 months starting the acceptance of an application.
Protection of inventions is given for 20 years starting the filing date, and can be further extended for 5 years in such spheres as healthcare, pharmaceuticals, agricultural chemistry, and related areas. The term of a utility model patent is 10 years.
Copyright and Allied Rights
What is the basis for the legal protection of copyright and allied rights?
There is no mandatory registration of copyright. Protection is automatically granted to all and any works of authorship, irrespective of the manner of expression i.e. works of science, literature, and art (copyright). Importantly, however, is that ideas, theories, principles, methods, procedures, etc., even if they are expressed, described, explained or illustrated in a work are not subject to copyright protection. They can enjoy patent protection, e.g. as an invention (see above).
Please note that copyright can be voluntarily registered within the MDETA on the basis of a respective application.
What is the timeframe for copyright protection?
An author's rights are generally protected as follows: (i) economic (proprietary) rights – within the author's lifetime and 70 years after his death; (ii) non-property rights – indefinitely.
ENFORCEMENT OF IP RIGHTS IN UKRAINE
How can infringed IP rights be protected in Ukraine?
An IP rights holder can seek protection of its infringed IP rights, inter alia, in:
(a) the High Court on Intellectual Property, which is still in the process of creation. It will have jurisdiction over a majority of IP disputes, including claims for termination of infringements; cancellation of registration certificates; reimbursement of damages; including loss of profit; recognition of a right, etc. Meanwhile, IP disputes are handled by state commercial courts;
(b) MDETA and Ukrpatent, which handle, inter alia, registration of IP rights, registration of IP rights assignments, license agreements;
(c) the Antimonopoly Committee of Ukraine (AMC), which handles cases, inter alia, regarding unfair competition using intellectual property; and
(d) the State Fiscal Service of Ukraine, which takes customs-related measures against IP infringements, such as counterfeiting.
TRANSFER OF IP RIGHTS/OBJECTS
How can IP rights be transferred/assigned to another party?
In commercial relations, the following contractual mechanisms of transferring/assignment of economic IP rights are viable:
(a) license for use of intellectual property;
(b) license contract;
(c) agreement on the creation and use of an IP object;
(d) agreement on the transfer of exclusive economic IP rights;
(e) other agreements on the alienation of IP rights.
Please note that moral IP rights cannot be transferred/assigned and always remain with the author/creator.
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This publication is for informational purposes only. If you would like to learn more or seek legal advice, please contact one of the following or your usual Nobles contact:
Volodymyr Yakubovskyy (Partner), Alexander Weigelt (Partner).