- Covid-19 Guidance New
- Editor's Preface
- League Tables New
- Ukrainian Legal Market
Practice Areas and Industries Review
- Aircraft and Airports Finance
- Alternative Dispute Resolution
- Anti-Money Laundering
- Banking Disputes
- Business Crime
- Business Immigration
- Business Protection
- Capital Markets
- Commodities Arbitration
- Competition Investigations
- Contract Law
- Corporate Disputes
- Corporate Governance
- Corporate Intelligence
- Counterfeiting and Piracy
- Criminal Process
- Cross-Border Debt Restructuring
- Currency Regulation
- Due Diligence
- Energy Efficiency
- Enforcement of Foreign Awards
- Family Law
- Financial Restructuring
- Financial Services
- Free Trade Agreements
- Government Relations
- International Arbitration
- International Civil Procedure
- International Tax
- IT Law
- Jurisdiction Issues in Commercial Procedure
- Labor & Employment
- Medicine & Healthcare
- Mergers & Acquisitions
- Non-Performing Loans
- Political Prosecution
- Private Clients
- Procedural Actions
- Project Finance
- Public-Private Partnerships
- Real Estate
- Renewable Energy
- Role of Experts in International Arbitration
- Secured Transactions
- State Aid
- Tax Controversy
- Trade Remedies
- Transfer Pricing
- Unfair Competition
- World Trade Organization
Who Is Who Rankings
- Antitrust and Competition
- Banking & Finance, Debt Restructuring
- Capital Markets
- Corporate and M&A
- Criminal Law/ White-Collar Crime
- Energy & Natural Resources
- Information Technologies, Telecommunications & Media
- Intellectual Property
- International Arbitration
- International Trade: Trade Remedies/WTO, Commodities, Commercial Contracts
- Labor & Employment
- Pharmaceuticals & Healthcare
- Private Clients: Wealth Management, Family Law
- Real Estate, Construction, Land
- Tax and Transfer Pricing
- Transport: Aviation, Maritime & Shipping
- Law Firms Profiles
- Lawyers Profiles
Alexander Pakharenko is an Attorney-at-Law, registered Patent Attorney and a Partner with Pakharenko & Partners in Kyiv, Director of the Ukraine Alliance Against Counterfeiting and Piracy. Graduate of the Kyiv Polytechnic Institute, Kharkiv Institute of Intellectual Property, Law Faculty of the Interregional Academy of Personnel Development in Kyiv, Academy of Advocacy of Ukraine. His 20 years of practice in the field of IP which encompasses consulting on all aspects of IPR protection, licensing and enforcement, representing clients in law enforcement and customs agencies, civil and commercial courts, legal counseling on anti-counterfeiting and anti-piracy measures and developing anti-counterfeiting and anti-piracy strategies. Alexander takes an active part in conducting trainings for law-enforcement and customs officers
Ukraine’s Border Protection of IP Rights is Approaching the EU Level
Оn 14 November 2019 the Law of Ukraine No.2020-IX of 17 October 2019 came to force introducing amendments into the Customs Code of Ukraine with regard to enforcing intellectual property rights during transportation of goods across the customs border of Ukraine. These amendments were aimed at fighting against the transportation of goods suspected of infringement of intellectual property rights across the customs border of Ukraine, and particularly fighting against counterfeit and pirated goods.
New Definition of Basic Terms and Concepts
First of all, the definitions of counterfeit goods and IPR objects have been amended:
“Counterfeit goods” mean:
а) goods, which are the subject of infringement of intellectual property rights to a trademark in Ukraine and which bear without authorization a sign, which is identical to the trademark validly registered in Ukraine in respect of the same type of goods or which is misleadingly similar to such a trademark;
b) goods, which are the subject of infringement of intellectual property rights to a geographical indication in Ukraine and bear or are described by, a name or term protected by that geographical indication;
c) any packaging, label, sticker, brochure, ope- rating instructions, warranty document or other similar item, even if presented separately, which is the subject of infringement of intellectual property rights to a trademark or a geographical indication, which includes a sign, name or term which is identical to a validly registered trademark or protected geographical indication, or which is misleadingly similar to such a trademark or geographical indication, and which can be used for the same type of goods as that for which the trademark or geographical indication has been protected in Ukraine (para. 17, part 1, Article 4 of the Customs Code of Ukraine).
Objects of intellectual property right now include objects of copyright and related rights, inventions, industrial designs, geographical indications, plant varieties, semiconductor products (para. 46, part 1, Article 4 of the CCU). Thus, such an IPR object as a utility model is excluded from those objects which can be included in the Customs Register of IPR objects for protection.
The following new terms have been introduced: pirated goods, measures for facilitation of enforcement of intellectual property rights; goods suspected of infringement of intellectual property rights; genuine goods; perishable goods; small consignment of goods.
“pirated goods” (para. 38-1, part 1, Article 4 of the CCU) means goods, which are the subject of infringement of a copyright and/or related right or intellectual property right to a design validly registered in Ukraine and which are, or contain copies, made without the consent of the holder of a copyright or related rights or a design, or of a person authorized by that holder in the country of production;
“goods suspected of infringement of intellectual property rights” (para. 57-1, part 1, Article 4 of the CCU) mean:
a) goods bearing the features of infringement of copyright and related rights, intellectual property rights to inventions, industrial designs, trademarks, geographical indications, plant varieties, semiconductor products and the rights granted by supplementary protection certificates for medicinal and plant protection products;
b) devices, products or components which are primarily designed, produced or adapted for the purpose of enabling or facilitating the circumvention of any technology, device or component which, in the normal course of their operation, prevent or restrict acts which are not authorized by the holder of any copyright or any related right;
c) any mould or matrix which is specifically designed or adapted for the manufacture of goods infringing intellectual property rights;
– “genuine goods” (para. 1, part 3, Article 397 of the CCU) mean goods, which were manufactured with the consent of the right holder, or goods manufactured by a person duly authorized by the right holder for manufacture of a certain quantity of goods, including in excess of the quantities agreed between that person and the right holder;
– “small consignment of goods” (part 2, Article 401-1 of the CCU), to which the destruction procedure can be applied, means goods which are transported (dispatched) across the customs border of Ukraine in one postal dispatch from one sender in international mail items, in one consignment of an express courier from one sender in international express mail items, in an amount of no more than three units per each subcategory pursuant to the UKTZED (Ukrainian Classification of Goods for Foreign Economic Activity) or has a total gross weight of less than two kilograms.
Applying Measures Aimed at Facilitation of Enforcement of Intellectual Property Rights
The following measures are applied to goods suspected of infringement of intellectual property rights (part 1, Article 397 of the CCU):
– suspension of customs clearance of goods on the basis of the data of the Customs Register of IPR objects pursuant to Article 399 of the CCU;
– suspension of customs clearance of goods at the initiative of the state body for revenues and charges pursuant to Article 400 of the CCU;
– destruction of goods, the customs clearance of which is suspended on suspicion of infringement of intellectual property rights pursuant to Article 401 of the CCU;
– suspension of customs clearance and destruction of small consignments of goods, which are transported (dispatched) across the customs border of Ukraine as regular international and express courier mail items pursuant to Article 401-1 of the CCU;
– change of labelling on goods and their packaging pursuant to Article 402 of the CCU.
Such measures are applied in cases of suspicion of infringement of intellectual property rights in relation to (part 1, Article 397 of the CCU):
– goods transported by citizens, into or from, the customs territory of Ukraine;
– goods during their importation into, or exportation from, the customs territory of Ukraine (including for the purpose of transit);
– goods, which are placed under the customs regimes of import, re-import, export, re-export, temporary importation, temporary exportation, customs warehouse, free customs zone, processing within the customs territory, processing beyond the customs territory.
As one can see, four other customs regimes set out by part 1, Article 70 of the CCU, namely duty-free trade, abandoning in favor of the state, destruction or demolition and transit are absent in the list of measures applied in cases of suspicion of infringement of intellectual property rights.
Measures aimed at facilitation of enforcement of intellectual property rights envisaged by part 1 of this Article shall not be applied to: genuine goods; personal belongings; goods imported by citizens into the customs territory of Ukraine in hand luggage and/or accompanied baggage for personal use and not designated for manufacture or other business activity (part 3, Article 397 of the CCU).
Destruction of Counterfeit Goods
In case of suspension of customs clearance of goods suspected of infringement of intellectual property rights during their transportation across the customs border of Ukraine, such goods can be destroyed under customs control without the necessity to establish any infringement of intellectual property rights (Article 401 of the CCU). Such destruction is possible under the following conditions: the right holder informs the customs in writing that there are features of infringement of his intellectual property rights and that he intends to apply the procedure of destruction of such goods; and the declarant submits to the customs the consent of the owner of such goods to their destruction or he does not submit any objection by the owner of such goods to their destruction (tacit consent).
In case of suspension of customs clearance of a small consignment of goods suspected of infringement of intellectual property rights during their transportation (dispatch) across the customs border of Ukraine as regular international and express courier mail items, such goods can be destroyed under the procedure set out by Art. 401-1 of the CCU, if the following conditions are observed: there is a suspicion that such goods are counterfeit or pirated; the goods are not perishable; the information on an IPR object, goods bearing such object and consent of the rights holder for applying the procedure of destruction of small consignments are entered in the Customs Register of IPR objects.
In case of actual destruction of goods, where customs clearance has been suspended based on suspicion of infringement of intellectual property rights, the owner of such goods shall be released from administrative responsibility, as envisaged by Art. 476 of the CCU.
Reimbursement of Costs
In case of suspension of customs clearance of goods under Art. 399, 400 and 401-1 of the CCU, reimbursement of costs related to storage of such goods shall be imposed on the rights holder, who has the right to demand compensation of such expenses from the owner of goods which are the subject of infringement of his intellectual property right or from other persons in accordance with Ukrainian legislation (part 6, Art. 397 of the CCU).
The implementation of the Law of Ukraine No. 202-IX of 17 October 2019 will involve the adoption of subordinate laws to implement Regulation (EU) No. 608/2013 on customs enforcement of intellectual property rights of 12 June 2013 and Commission Implementing Regulation (EU) No. 1352/2013 of 4 December 2013 which set out the forms of documents provided for in Regulation (EU) No. 608/2013.
It is expected that the legislative framework should improve the procedure for registration of IPR objects and create a new Customs Register for IPR objects and its testing, particularly the testing of a new IT-tool for electronic submission of applications for inclusion of IP objects in the Customs Register.
The following will be introduced via the new web portal: submission of all applications for assistance in enforcement of IPR to the Customs Register of IPR objects; electronic messaging between the Customs Service and right holders; publication of information from the Customs Register.