Legal Protection of Intellectual Property Rights in Ukraine
Oksana V. Horban
The current regulatory system in Ukraine governing intellectual property (IP) is sufficiently developed that it can be said to be in its final stages of formation.
There follows a detailed insight into certain IP rights and specific features of their legal regulation in Ukraine.
I. Commercial (trade) name
Ukrainian legislation does not contain any definition of a commercial name. There is no particular statutory act regulating legal relations regarding the origin, exercise and termination of rights connected to a commercial name. There is no registry of commercial names.
All issues pertaining to commercial names are regulated by the provisions of the Civil and Economic Codes of Ukraine and provisions established by the Paris Convention.
(à) Characteristics of a commercial (trade) name
A commercial name is characterised by the following features: (à) it distinguishes the business entity from other business entities; and (b) it does not mislead the consumer in respect of the activities of such a business entity.
(b) Holders of rights to a commercial (trade) name
The holders of the rights to a commercial (trade) name can be legal entities or individual entrepreneurs.
(c) Specifics of legal protection of commercial (trade) names in Ukraine
Intellectual property rights in a commercial name arise from the moment of its first use in Ukraine and remain in effect until the date of liquidation of the legal entity.
Mandatory state registration and/or compliance with other formalities are not required for the legal protection of a commercial name.
(d) Scope of property rights in commercial names
Property rights in commercial names in Ukraine are restricted and limited only to:
(1) the right to use a commercial (trade) name; and (2) the right to prohibit the use of such commercial (trade) name by third parties.
Ukrainian legislation does not provide for either the right to permit use of commercial names (to issue licences), or the right to prohibit the use of similar commercial names. Property rights in commercial names may be assigned only with the transfer of an integral property complex, or a part thereof, by the owner of the commercial name.
II. Trademark (mark for goods and services)
A trademark is a sign helping to distinguish the goods and services of one producer from the goods and services of other producers. The subject matter of the trademark may be word/s, graphic/s or a combination which does not offend public order or moral principles, and which has not been rejected on grounds for refusal of legal protection.
Registration of sounds and scents as trademarks is not possible in Ukraine, since neither sounds nor scents are signs.
(à) Holders of rights in trademarks
Applicants for and holders of trademarks may be individuals or legal entities, or their associations.
(b) Scope and term of legal protection for trademarks
The scope of legal protection for a trademark in Ukraine is determined by its depiction and the list of services and goods indicated in the certificate or international registration documents for the mark.
The property rights in a trademark are verified in the certificate or international registration documents and come into force from the application date.
The term of legal protection for a trademark is 10 years, starting from the application date, and may be extended every 10 years.
(c) Useful information about the registration of trademarks in Ukraine
Ukraine is a country where the “first to file system” applies, meaning that the right to legal protection is granted to the applicant with the earlier filing date or with the higher priority.
The following trademarks cannot be registered:
— marks depicting or imitating national symbols (coats of arms, flags or emblems), names of states, abbreviated or full names of international or inter-governmental institutions, official quality control, guarantee or standardisation marks, seals, awards or other honours;
— marks with no distinguishing characteristics, for example, letters, figures, realistic images of goods or common abbreviations (e.g. JSC, standing for Joint Stock Company, or LLC, referring to a Limited Liability Company);
— marks commonly used for the identification of goods and services of a particular type, i.e., primarily original and invented marks, which have lost their uniqueness and have become generic terms, e.g. “Linoleum” or “Tape recorder ”;
— descriptive marks, indicating the type, amount, quality, composition, characteristics, purpose, value of goods and services or the place and time of production or distribution of goods or rendering of services;
— misleading marks, thus, the mark “NATURAL” is misleading if registered for synthetic products or if the image of the Statue of Liberty, known all over the world as a symbol of the USA, is registered in the name of either a Canadian or Chinese company;
— marks consisting of common symbols and terms;
— marks reflecting only the form taken by the natural state of the goods;
— identical or misleadingly similar marks that may be confused with marks registered earlier or filed for registration in Ukraine for identical or similar goods or services;
— identical or misleadingly similar marks that may be confused with well-known trademarks protected in Ukraine without registration;
— identical marks or marks similar to popular commercial names in Ukraine which are used for the same goods or services as those applied for, qualified indications of the origin of goods, or marks of conformity;
— industrial designs, titles of scientific, literary, or artistic works known in Ukraine or quotations and characters from such works, without the consent of the copyright holders; and
— surnames, first names, pseudonyms or portraits of persons known in Ukraine without the consent of the latter.
(d) specifics of legal protection for trademarks in Ukraine
The holder of property rights in a trademark is entitled to use the registered trademark and possesses the exclusive right to permit (issue licences for) and prohibit such use by third parties.
Furthermore, Ukrainian legislation provides for a number of exceptions restricting the rights of a holder to prohibit the use of a trademark. In particular, the right of a holder to prohibit the use of a trademark does not exist in the following cases:
— Non-commercial use of a trademark;
— All forms of news release and news comments;
— Use in good faith of proper names and addresses by third parties; as well as
— The exercise of any right arising prior to the application date, or if priority was claimed prior to the priority date, the so-called “right of prior use”.
It should be mentioned that the “right of prior use” is a peculiarity of Ukrainian trademark legislation (although the concept of prior use itself is not a new notion in patent law). The appearance of the right of prior use in some way settled the issue of intellectual property inherited by Ukraine after the collapse of the USSR. It legalised the further use of “Soviet brands” (Stolichnaya vodka and Validol medication) by the successors to the Soviet food and pharmaceutical companies; and
— Use of a trademark for goods brought to market under this mark by the holder of the relevant certificate or with his consent — the so-called “exhaustion of rights”. Unfortunately, the lack of an express definition of the territory in which the goods are brought to market — whether it is the territory of Ukraine or the whole world — leaves a number of questions unanswered. In particular, this is connected with the urgent issue for many trademark holders of the legality of “parallel imports” — when original goods are imported into Ukraine without the consent of the trademark holder.
III. Industrial design
Industrial design refers to the creative activity of a person in the sphere of designing. The subject matter of the industrial design may be a shape, drawing or a combination, determining the appearance of the product and intended to satisfy aesthetic and ergonomic needs.
An industrial design must not offend public order or moral principles and must comply with the terms of legal protection.
Architectural objects (except for small architectural structures), industrial, hydro-engineering and other fixed structures, objects in an unstable form such as liquid or gaseous or dry substances cannot be granted legal protection as an industrial design.
(a) Holders of rights in an industrial design
The primary holder of rights in an industrial design is the author of the industrial design, the secondary holder of rights may be any person who was granted rights in an industrial design by agreement or by law (e.g., by inheritance or by virtue of labor relations).
(b) Scope and term of legal protection for an industrial design
The scope of legal protection for an industrial design is determined by its combination of essential features, presented on the image of the goods recorded in the Registry and certified by its patent.
The term of legal protection for an industrial design is 15 years starting from the application date.
Property rights in an industrial design become effective on the date of its state registration, provided that such rights remain valid.
(c) Useful information about registration of industrial designs in Ukraine
Novelty is the only prerequisite for the provision of legal protection for an industrial design.
However, no examination of such novelty is conducted when registering industrial designs. This means, in turn, that the
examination of industrial designs is of a declarative nature.
(d) Specifics of legal protection for industrial designs
The holder of property rights in an industrial design is entitled to use the industrial design and possesses the exclusive right to permit (issue licences for) and prohibit such use by third parties.
The right of a holder to prohibit the use of an industrial design does not exist in the following cases:
— use of an industrial design in the design or operation of foreign vehicles which temporarily or occasionally spend time in the waters, air, or on the territory of Ukraine, provided that the industrial design is used exclusively for the needs of these vehicles;
— use of an industrial design without any commercial purpose;
— use of an industrial design for scientific purposes or on a trial basis;
— in emergency situations (e.g. natural disasters, calamities or epidemics) by notification of such use and further payment of respective compensation;
— right of prior use; and
— exhaustion of rights.
IV. Invention and utility model
Invention/utility model refers to the result of the intellectual activity of a person in any technological sphere. The subject matter of the invention/utility model may be: (1) a product (e.g. a device, substance or microbial strain); or (2) a process (method); as well as (3) a new application of a known product or process.
An invention/utility model must not offend public order or moral principles and must comply with the conditions for patentability.
A species of animal or plant or any essentially biological process for the production of animals or plants, not related to non-biological or microbial processes; and the integrated circuit topography and design, cannot be legally protected as an invention/utility model.
(à) Holders of rights in an invention/utility model
The primary holder of rights in an invention/utility model is the inventor; the secondary holder of rights may be any person who was granted rights in an invention/utility model by agreement or by law (e.g., by inheritance or by virtue of labor relations).
(b) Scope and term of legal protection for an invention/utility model
The scope of legal protection for an invention/utility model is determined by claim and must be certified by an “invention patent” or a “declarative utility model patent”.
The term of legal protection for an invention is 20 years from the application date. This term may be extended for no more than five years for inventions, the further use of which requires permits from official authorities (e.g. medications, plant or animal protective agents).
Exclusive intellectual property rights in a utility model last
10 years from the application date.
Property rights in an invention/utility model are effective from the date of its state registration, provided that such rights remain valid.
(c) Useful information about registration of inventions/utility models in Ukraine
The patent system in Ukraine is “first to file” and not “first to invent”. An invention is entitled to legal protection provided it is new, constitutes an inventive step and is capable of industrial application.
A utility model will be granted legal protection if it is new and is capable of industrial application. Registration of utility models is of a declarative nature, which means that the novelty and industrial applicability of utility models are not verified in the course of the registration. An application for a utility model may be converted into an application for an invention. This conversion may be carried out at any time prior to an applicant obtaining a decision on issuance of the patent.
(d) Specifics of legal protection for inventions/utility models in Ukraine
The holder of property rights in an invention/utility model is entitled to use the industrial invention/utility model and also possesses the exclusive right to permit (issue licences for) and prohibit such use by third parties.
The list of exceptional cases in which the right of a holder to prohibit the use of an invention/utility model does not exist is the same as the above list provided by law for industrial designs. The Ukrainian law on inventions is also considered not to prevent the commercial use of an invention by any person who has obtained a product manufactured using a patented invention, provided that he/she did not know that this product has been manufactured or brought to market in violation of intellectual property rights. Meanwhile, on receiving the relevant notification from the holder of such rights, the commercial user must discontinue use of the product or pay the relevant compensation to the owner of the rights.
