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Patents, trade marks, copyright and designs in Ukraine: overview

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Patents, trade marks, copyright and designs in Ukraine: overview

A guide to intellectual property law in Ukarine. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

Patents

1. What are the legal requirements to obtain a patent?

The following are patentable either as inventions or utility models:

Products (such as devices, substances, strains and cell cultures of a plant or animal).

Processes (methods) and new applications of known products or processes.

Invention

To be patentable, an invention must:

Be new.

Involve an inventive step.

Have an industrial application.

Utility model

To be patentable, a utility model must:

Be new.

Have an industrial application.

 

2. What categories are excluded from patent protection?

The following categories are excluded from patent protection either as inventions or utility models:

Plants and breeds of animals.

Processes that are biological in nature and that relate to plant and animal reproduction, other than non-biological or microbiological processes.

Topologies of integrated circuits.

Industrial designs.

Discoveries, scientific theories and mathematical methods.

Methods of intellectual, business, organisational and commercial activity (for example, planning, financing, supplying, accounting, crediting, forecasting and rate setting methods).

Rules for performing bodily exercises, carrying out games, contests and public sales.

Designs and schemes for construction, building and territory planning.

Signs (for example, road signs, codes and fonts), schedules and instructions.

Software.

Methods for providing information (for example, tables, diagrams and graphics).

 

3. Which authority registers patents? Does its website provide guidance on the application procedure?

Inventions and utility models are registered by the State Intellectual Property Service of Ukraine. However, applications are filed with, and correspondence is communicated to, the State Enterprise Ukrainian Institute of Industrial Property.

Guidance on the registration procedure (in Ukrainian) is available at http://sips.gov.ua/ua/inventions.html and www.uipv.org/ua/vinaxid.html. Guidance is not available in English.

 

4. On what grounds and when can third parties oppose a patent application or challenge an issued patent?

There is no third party opposition procedure against patent applications.

A patent can be challenged by a third party as soon as it is issued, through the filing of an invalidation action before the court. A patent must be invalidated if:

Patentability criteria are not met (see Question 1).

The claims comprise features of the invention/utility model that were not present in the application as filed.

An international application under the Patent Cooperation Treaty 1970 (PCT) has not been filed with the State Enterprise Ukrainian Institute of Industrial Property.

It infringes third party rights.

 

5. When does patent protection start and how long does it last?

Invention

Patent protection starts from the date of publication of the grant of the patent, and lasts for 20 years from the application filing date, subject to the payment of annuities.

However, temporary protection of the invention (limited to the scope of the claims as published) is granted on publication of the patent application. The applicant can obtain compensation for damages caused by the publication of an application by a person that knew or was notified of the publication of the patent application. Such compensation can only be obtained after the patent is granted.

If the object of the invention is pharmaceutical or a means of animal/plant protection and the exploitation of the invention requires authorisation from the relevant authority, patent protection can be extended for the term that equals the period between the filing of the application for authorisation and obtaining such authorisation, but for no longer than five years.

Utility model

Patent protection starts from the date of publication of the grant of the patent, and lasts for ten years from the application filing date, subject to the payment of annuities.

 

6. On what grounds can a patent infringement action be brought?

A patent infringement action can be brought against unlawful uses of a patented invention/utility model, which includes:

Manufacturing a product that uses the patented invention/utility model, using such product, offering it for sale (including through the internet), selling, importing, and other introduction into circulation of such product, or storing the product for these purposes.

Using the process protected by a patent or offering it for use, provided that the person offering the process knows that use of the process without consent of the patent owner is prohibited, or that it is obvious in the circumstances.

A product is considered to be manufactured with the use of a patented invention/utility model where it includes every feature of an independent claim, or an equivalent feature.

A process protected by a patent is considered to be used where every feature included in an independent claim or equivalent features are used.

 

7. Which courts deal with patent infringement actions?

Commercial courts deal with civil patent infringement actions where the parties to the proceeding are legal entities and/or individual entrepreneurs. If at least one party to the proceeding is an individual, the infringement action must be considered by common courts.

 

8. What are the defences to patent infringement actions?

The defences to patent infringement actions include:

Non-infringement.

Filing a patent invalidation action. The proceeding in the patent infringement action can be suspended by the court until the decision in the patent invalidation action becomes effective.

Right to prior use.

Exhaustion of rights.

Statutory exemptions, which include use of the invention/utility model:

in construction or during its transport to a foreign country, which temporarily or accidentally remains in Ukrainian water, air or territory, provided that the invention/utility model is used exclusively for the needs of such transport;

without commercial purpose, for scientific purpose of in the course of experiment; and

in cases of emergency, subject to notification to the patent owner as soon as it is possible and to the payment of compensation.

 

9. What are the remedies in patent infringement actions?

The remedies in patent infringement actions include:

Preliminary injunction, including seizure of goods or prohibition from taking certain actions.

Obligation to cease the infringement.

Prohibition to conduct infringing activities.

Damages.

Seizure and destruction of the infringing goods, equipment and materials that were used specifically to produce the infringing goods.

 

10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

There is no fast-track and/or small-claims procedure for patent infringement actions. Although preliminary injunctions can be granted within a short time, this does not affect the time frame for consideration of the matter as a whole.

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Trade marks

11. What are the legal requirements to obtain a trade mark?

A trade mark can be any sign or combination of signs including colours, combination of colours, sound and so on, provided that it is technically possible to record the sign in the Trade Mark Register and to make a publication regarding such registration.

A sign must be registered as a trade mark if it does not contradict public order, the principles of humanity and morality, and does not fall within any absolute (for example, non-distinctiveness) or relative (for example, confusingly similar earlier trade mark) grounds for refusal of registration.

 

12. Is it necessary or advisable to register trade marks?

Generally, it is necessary to register trade marks, as economic trade marks rights are obtained through trade mark registration.

However, if a trademark is not registered, the following protections may be available, subject to the active use of the trade mark:

Protection of well-known trade marks. In such a case, the protection will be generally the same as for registered trade marks, except that the right to prohibit the use of the trade mark will cover any goods or services, provided that:

use for such goods or services can suggest an association with the trade mark owner; and

the interests of the trade mark owner can be damaged.

Protection against unfair competition.

 

13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

Trade marks are registered by the State Intellectual Property Service of Ukraine. However, applications are filed with, and correspondence is communicated to, the State Enterprise Ukrainian Institute of Industrial Property.

Guidance on the registration procedure (in Ukrainian) is available at: http://sips.gov.ua/ua/signs.html and www.uipv.org/ua/signs.html.

 

14. On what grounds can the regulatory authority refuse to register a trade mark?

A sign cannot be registered as a trade mark if it:

Represents or imitates state symbols, official names of states and international intergovernmental organisations, and official stamps and distinctions.

Is not distinctive and has not acquired distinctiveness as a result of use.

Is deceptive.

Consists exclusively of signs that are commonly used as designations of certain goods or services, are descriptive of the claimed goods and/or services, or are commonly used symbols or terms.

Only represents the shape determined by the natural state of the goods.

Is identical or confusingly similar with earlier registered or otherwise protected trade marks, trade names, qualified indications of origin and conformity marks (certification marks).

Represents an industrial design, title of a work that is known in Ukraine, citations or characters from such work, or the name, portrait or facsimile of a person that is known in Ukraine.

 

15. On what grounds and when can third parties oppose a trade mark application or cancel a registration?

Any person can file an opposition against a pending trade mark application on the ground that the trade mark does not conform to the conditions for granting legal protection (see Question 14). The opposition must be taken into account if it is received no later than five days before the final decision on application is issued.

Registration can be cancelled on the following grounds:

Non-conformity of the trade mark with the conditions for granting legal protection.

Mention in the certificate of elements of the trade mark image, goods or services that were not mentioned in the filed application.

Infringement of a third party rights.

 

16. When does trade mark protection start and how long does it last?

Trade mark rights are effective from the trade mark application filing date. The protection lasts for ten years and can be renewed for an unlimited number of ten-year periods, on filing of a request for renewal and subject to payment of a renewal fee.

 

17. On what grounds can a trade mark infringement action be brought?

The trade mark certificate provides the owner with an exclusive right to prohibit the unauthorised use of the registered trade mark or a designation that is:

Confusingly similar to the registered trade mark with respect to goods and services indicated in the certificate.

Confusingly similar to the registered trade mark with respect to goods and services related to those indicated in the certificate, if such use can mislead as to the person that manufactures such products or provides such services.

 

18. Which courts deal with trade mark infringement actions?

The courts are the same as for patent infringement actions (see Question 7).

 

19. What are the defences to trade mark infringement actions?

The defences are the same as for patent infringement actions (see Question 8).

However, statutory exemptions include:

Non-commercial use.

Use or comments in news.

Use of one's own name or address in good faith.

 

20. What are the remedies in trade mark infringement actions?

The remedies are generally the same as in patent infringement actions (see Question 9).

The remedies in a trade mark infringement action can also include:

Removal of the unlawfully used trade mark or confusingly similar sign from the product or its package.

Destruction of the unlawful images of a trade mark.

Moral damages.

 

21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

The position is the same as for patent infringement actions (see Question 10).

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Copyright

22. What are the legal requirements to obtain copyright protection?

Works in the field of science, literature or art are protected by copyright from the moment of their creation. Copyright protection covers published and unpublished, and completed and unfinished works, regardless of their designation, genre, volume or purpose. Copyright protection does not cover ideas, theories, concepts, and so on, even if these are expressed in a work.

 

23. Can copyright be registered? If so, is registration required?

Copyright

Copyright can be registered. However, neither registration nor any other formalities are required for protection. Copyright is registered by the State Intellectual Property Service of Ukraine. Guidance on the procedure (in Ukrainian) is available at: http://sips.gov.ua/ua/copyright_registration.html.

Registration is also available for copyright assignments and licence agreements, but is voluntary.

Related rights

There are neither requirements nor procedures for the registration of related rights.

 

24. When does copyright protection start and how long does it last?

Copyright

The protection of economic rights starts from the date of creation of the work and lasts for the life of the author and 70 years after his/her death.

However, the following exceptions apply:

Anonymous works or works created under a pseudonym. Protection lasts for 70 years after the work is published. If authorship is evident or is discovered within 70 years after publication of the work, protection will last for the life of the author and 70 years after his/her death.

Works of co-authorship. Protection lasts for the life of the co-authors and 70 years after the death of the last surviving author.

Works that are not published in whole. The term of protection must be defined in respect of each published part.

Posthumous works of rehabilitated authors. Protection lasts for 70 years after the date of rehabilitation.

Works first published within 30 years after the author's death. Protections last for 70 years from the lawful publication of the work.

The term of copyright protection is calculated from 1 January of the year following the year in which the relevant event occurred (for example, the author's death).

Any person that publishes a work for the first time after the term of copyright protection has expired benefits from such protection for 25 years from publication.

The protection of moral rights is unlimited.

Related rights

The following terms apply to the protection of economic rights:

Performers. 50 years from the date of first recordal of the performance.

Producers of phonograms/videograms. 50 years from the date of first publication of the phonogram/videogram, or their first sound/video recordal if the phonogram/videogram was not published during that time.

Broadcast organisations. 50 years from the date of the first public broadcast.

The protection terminates on 1 January of the year following the year in which the respective term expires.

 

25. On what grounds can a copyright infringement action be brought?

The grounds on which a copyright infringement can be brought before the courts include:

Infringement of moral and economic rights.

Piracy.

Plagiarism.

Unauthorised import on the customs territory of Ukraine of samples of works, phonograms, videograms and broadcast programmes.

Threatened infringement.

Intentional circumvention of copyright technical protection measures.

Modification of right management information (including digital information), and distribution of copyright works bearing such modifications.

 

26. Which courts deal with copyright infringement actions?

The courts are the same as for patent infringement actions (see Question 7).

 

27. What are the defences to copyright infringement actions?

The defences to copyright infringement actions include:

Non-infringement.

Allowed uses of the work, such as:

use of citations (limited scope);

use for educational and personal purposes; and

statutorily allowed modification and decompiling of computer programs.

 

28. What are the remedies in copyright infringement actions?

The remedies in copyright infringement actions include:

Recognition and renewal of rights.

Prohibition (threatened infringement) and cessation of the infringement.

Damages or, alternatively, statutory compensation or collection of income obtained as a result of the infringement.

Moral damages.

Participation in the inspection of production facilities, stores, technological processes and commercial activities.

Publication in mass media of information about the infringement and of the respective court decision.

Obtaining information from infringers about other persons connected with the infringement.

 

29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

The position is the same as for patent infringement actions (see Question 10).

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Registered designs

30. What are the legal conditions to obtain a registered design right?

To be registered, a design must be new.

 

31. Which authority registers designs?

Designs are registered by the State Intellectual Property Service of Ukraine. However, applications are filed with, and correspondence is communicated to, the State Enterprise Ukrainian Institute of Industrial Property.

Guidance on the registration procedure (in Ukrainian) is available at: http://sips.gov.ua/ua/industrial_prototypes.html and www.uipv.org/ua/industrial.html.

 

32. On what grounds and when can third parties oppose a registered design application?

There is no procedure to oppose a design application. A registered design can be cancelled on the following grounds:

The design is not new.

The design patent reveals certain essential features of the design which were not included in the application as filed.

Infringement of third party rights.

 

33. When does registered design protection start and how long does it last?

Design protection starts from the date of publication of the design and lasts for ten years from the application filing date. This term can be extended for up to five years on request of the design owner. The protection is subject to the payment of annuities.

 

34. On what grounds can a registered design infringement action be brought?

A design infringement action can be brought against unlawful uses of the design, which include manufacturing products making use of the design, using such products, offering for sale (including on the internet), selling, importing/exporting and other introduction of such products into circulation, or storage of such products for these purposes.

 

35. Which courts deal with registered design infringement actions?

The courts are the same as for patent infringement actions (see Question 7).

 

36. What are the defences to registered design infringement actions?

The defences are the same as for patent infringement actions (see Question 8).

 

37. What are the remedies in registered design infringement actions?

The remedies are the same as for patent infringement actions (see Question 9).

 

38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

The position is the same as for patent infringement actions (see Question 10).

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Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

There is no concept of unregistered design.

 

40. When does unregistered design protection start and how long does it last?

Not applicable (see Question 39).

 

41. On what grounds can an unregistered design infringement action be brought?

An infringement action regarding an unregistered design can be brought to the extent that the use of the design constitutes unfair competition, that is, where use of the design that another person has started to use earlier in its business activity has caused or may cause confusion.

 

42. What are the defences to unregistered design infringement actions?

The defence is the absence of impact on competition (for example absence of confusion, different markets, and so on).

 

43. What are the remedies in unregistered design infringement actions?

Under the law on protection against unfair competition, the remedies include:

Imposition of a fine on the infringer.

Compensation for damages.

Seizure of the infringing goods from the manufacturer or seller.

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Trade secrets and confidential information

44. What are the legal conditions for rights in confidential information to arise?

A trade secret is information that:

Is secret, in the sense that it is unknown and not easily accessible for persons that usually deal with such type of information, and therefore has commercial value.

Has been subject to adequate security measures by the person controlling such information.

Confidential information is information the access to which is limited by an individual or legal entity (other than a public authority), which can be disseminated at their own discretion, in the order and on the terms established by them.

 

45. On what grounds can an action for unauthorised use of confidential information be brought?

An action can be brought for:

Unlawful collection, use, disclosure or instigation to disclose a trade secret.

Non-compliance with contractual confidentiality obligations.

 

46. Which courts deal with actions for unauthorised use of confidential information?

The courts are the same as for patent infringement actions (see Question 7).

 

47. What are the defences to actions for unauthorised use of confidential information?

The defences to actions for unauthorised use of confidential information/trade secrets include:

Non-infringement.

Public availability of information.

Absence of loss (or potential loss).

 

48. What are the remedies in actions for unauthorised use of confidential information?

The remedies include:

Imposition of a fine on the infringer.

Compensation for damages.

 

49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

The position is the same as for patent infringement actions (see Question 10).

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