Multi-protection Levels
UJBL: What are the current trends on the Ukrainian IP landscape?
Victoria Sopilnyak: The current IP trends on the Ukrainian intellectual property landscape can be outlined as follows:
— Reform of the system of collective management of copyright towards implementation of a clear and transparent mechanism. The problem of unfair administration of the system of collective societies was outlined in USTR Reports in the last few years and still remains unresolved;
— Necessity to have all government agencies transitioned to authorized software, as stressed by numerous USTR reports;
— Appearance of new objects of intellectual property rights, such as TV formats;
— Increasing of the number of disputes involving infringement of intellectual property rights on the Internet; development of appropriate court practice and draft laws, allowing to secure evidence on the Internet, disclose information about the domain name holder, identify the jurisdiction in disputes on infringement of intellectual property rights on the Internet, etc.; adoption of new types of contracts, allowing the use of intellectual property objects on the Internet, e.g. free public license, etc.;
— Reconsideration of intellectual property law from the point of human rights, ensuring the proper balance of patents’ rights and the rights of the owners of intellectual property rights (realizing the necessity of implementing the patent opposition procedure, adoption of compulsory licenses as provided by TRIPS, etc.);
— Understanding of the necessity to implement effective ways of alternative dispute resolution so as to unload the court system, such as negotiations, mediation and arbitration in the IP sphere.
UJBL: It is known that the demand for IP protection is affected less by the crisis. How would you describe the recent demands of clients? What are the preferences of Ukrainian and foreign business?
Yaroslav Ognevyuk: Analysis of the quantity and dynamics of customer requests over the past year indicates that their business operates in more or less normal mode. However, we noticed some changes in the types of work which customers prefer of late. In particular, being in a not entirely defined situation regarding reforms in the field of intellectual property clients expressed a desire to get the maximum protection of their intellectual property portfolio, which generates clients’ requests for audit of their rights with the provision of detailed recommendations. Moreover, obtaining a well-known trademark status remains a universal way of getting maximum protection for the trademark in Ukraine with many advantages.
We also noticed that during an unstable period with the national currency, clients try to preserve and even increase their market by fighting against counterfeiting, gray distributors and re-export. Activity in indicated directions is traditionally exhibited by the pharmaceutical industry, agricultural fertilizers sector, engineering, chemical and producers of alcoholic beverages, tobacco, clothing and luxury goods. For example, during anti-counterfeit activity, clients look to monitoring, complex problem solving through detection and liquidation of illegal production.
UJBL: What legislative changes are already in effect with the launch of harmonization of Ukrainian IP law with EU law?
Michael Doubinsky: The harmonization of Ukrainian IP law with EU legislation is one of the important conditions for fruitful cooperation with European organizations. It creates the necessary prerequisites for transition to the next stage of integration, including Ukraine’s membership in the EU. The first steps of the launch of harmonization have already been taken by the State Intellectual Property Service of Ukraine (SIPS).
Adaptation of Ukrainian IP law with EU standards objectively accelerates the integration of Ukraine into the EU. Thus, SIPS has elaborated four draft laws to implement EU legislative rules in Ukrainian IP law:
— On Amendments to Certain Legislative Acts of Ukraine on Intellectual (Industrial) Property provides amendments to 5 special laws in the field of industrial property. In particular, a certificate of additional protection has been implemented. Such certificate will be issued after the expiry of the basic patent for the invention. Furthermore, a number of rules for legal protection of biotechnological inventions have been adopted.
— On Amendments to Certain Legislative Acts of Ukraine (concerning the strengthening of the protection of IP rights) provides amendments to Civil, Commercial, Civil Procedure and Commercial Procedure Codes. In particular, the amendments relate to the order of compensation of damages for the infringement of IP rights, the persons entitled to apply to the court for protection of IP rights, the rules on calling evidence and obtaining information in cases on infringement of IP rights. The changes also include the right to file a preventive claim and to reimburse new kinds of damages as a result of infringement of IP rights.
— On the Collective Management of Copyright and Related Rights provides an opportunity to reform the system of collective management in Ukraine, taking into account current realities. Such amendments will help to improve the management of proprietary rights of the subjects of copyright and related rights that will lead to an increase in the author’s fee and will contribute to ensuring the rights and legitimate interests of subjects of copyright and related rights, which will undoubtedly improve the image of Ukraine on the international market.
— On Amendments to Certain Legislative Acts concerning the Regulation of Issues of Copyright and Related Rights designed to resolve issues related to the protection of copyright and related rights.
The next steps for improving Ukrainian legislation are for Ukraine to join the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration and to ratify the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.
The development of the above-mentioned legislation is only one of the first steps towards improving the protection of IP rights and launch harmonization of Ukrainian IP law with EU legislation.
UJBL: What strategies for managing trademark and patent portfolios do you observe?
Tatyana Shpakovich: Trademark and patent portfolios are important parts of the business, as they are real and valuable assets. Managing such IP portfolios should not be built on principles of immediacy or inconstancy, and on no account should they be considered after the rights are acquired. IP portfolio management should be a strategy that determines the ways and terms of acquiring IP rights, their maintenance, enforcement and timely evaluation.
Taking into consideration that the portfolio may include a huge number of trademarks, patents, designs, domain names, etc., make sure you obtain relevant protection for each object. From the practical point of view, it is useful to organize the portfolio into a manageable database, which will be helpful for observing deadlines, figuring out which objects are pending, and which are protected or require additional actions.
Apply for complex protection. Depending on the nature of your business, consider multiple levels of patent and trademark protection for your IP assets, create brand families. Use qualified advice from the professionals in the area to make sure that the process of registering your trademarks and patents is smooth and not too long.
Use your trademarks. Do not forget about the non-use grace period, upon expiration of which a trademark becomes vulnerable and may be terminated by third parties. For such purposes ensure the continued use of your trademarks in the market, media, advertising, etc. Make sure that your trademarks are distinctive and well-recognized among clients.
Evaluate and audit your portfolio on a regular basis. If you run a growing and developing business, coordinate your portfolio accordingly, do not neglect the importance of priority. The audit will help to determine the strengths and weaknesses of your portfolio and would enable the taking of timely preventive steps.
Monitor the market, the Internet and handle any infringements of your IP objects as soon as they become known. Be proactive: oppose any infringing trademarks at the early stages and enforce your IP rights to prevent heavy losses.
UJBL: What kind of advice could you give to Ukrainian companies expanding abroad and those coming to Ukraine?
Irina Osharova: For Ukrainian companies considering expanding, doing business abroad can be challenging on many levels. One of the substantial issues to consider is protection of one’s IP assets, as well as avoiding violations of the third parties prior rights. When contemplating general advice, the first thing that comes to mind is, of course: research the market. If it comes to trademarks protection in the United States or the United Kingdom, for example, the fundamental issue is their actual and fair use or intention to use at the time of filing of the application, which is not just a formal requirement.
Special attention should be paid to trademark reform in the European Union. As reported earlier, the amendments will come into force on 23 March 2016, and will affect the fee structure, formalities and examination proceedings, absolute and relative grounds of refusal, approach to claiming and examining the lists of goods and services (the new motto is “Clarity and Precision”), appeals procedures, etc. Again, reverting to the issue of use under the novelized EU procedure, it should be mentioned separately that the proof of use period will be now calculated not from the date of publication but from the date of filing of the trademark application.
As for those companies expanding their business to Ukraine, we suggest to always start from initial searches, trademark or patent. Our Agency conducts such searches on a complimentary basis, which allows our clients to instantly have a general picture of the market. As a rule, initial research show whether there is a risk to affect third party rights or, on the contrary, if the rights of a foreign company are already violated by local parties. However, prior to filing of the application, we recommend to also proceed with an analysis of Official Searches provided by the Patent and Trademark Office.
UJBL: Could you describe an interesting and unique case you had to resolve of late?
V. S.: My team recently protected the intellectual property rights of a world-renown manufacturer of notebooks in a court case considered by Solomensky District Court of Kiev.
The Client addressed the court with a claim against the holder and the registrar of domain name moleskine.kiev.ua, the State Service of Intellectual Property of Ukraine with a demand to stop the infringement of intellectual property rights and to recognize Moleskine trademark as well-known. The evidence on notoriety of the trademark gathered by the attorneys allowed the court to satisfy the claim demands made by the client. In its judgment dated April 2015, the court ruled to grant well-known status to Moleskine trademark; to forbid the domain name holder to use the Moleskine trademark in the domain name moleskine.kiev.ua and to oblige the domain name registrar to halt delegation of the domain name moleskine.kiev.ua.
UJBL: The Ukrainian IT sector attracts both public and government attention as a potential driver of economic recovery. What kind of IP-related requests do you get from technology markets?
Anton Koval: This sector of the technology market holds plenty of challenges against rights holders, and over the course of years of practice we have accumulated extensive experience in providing full-scope complex protection of IP assets in the IT sector.
Among the most frequent requests are applying for copyright registrations in relation to software solutions, as well as seeking patent protection for technical solutions. We also recommend registering a software title as a trademark to prevent from illegal use of this mark by third parties. Other requests usually relate to recording with Ukrainian PTO agreements related to transfer of copyright in relation to different technologies.
Very often we receive requests for preparing legal opinions on various issues related to the IT sector’s objects (inter alia, to determine who the copyright holder of a piece of software is, who are the co-authors, how to transfer the copyright, how the rights can be enforced, what are available remedies, etc.).
Another in-demand request relates to issues with trademark infringements in the IT sector, domain names, cybersquatting activities, the closing of infringing web-sites. For example, we recently provided a legal opinion to one foreign IT company with respect to protection of its rights in Ukraine, whose trademark was illegally used by another company on its own web-site. According to our clients’ requests we also provide mediation services in settling different issues in the IT sector, taking part in negotiations between employers as IT companies and employees of these companies with respect to amicable regulations of these issues. Finally, we represent clients from technology markets in courts of all instances and the Police with respect to infringements of IP rights.
UJBL: What type of investments in IP infrastructure should be carried out?
M. D.: Ukraine has a high intellectual potential, but the imperfection of the legal framework in the sphere of IP hinders its normal development. Despite a number of special laws, departmental regulatory acts, decrees issued by the President of Ukraine, court rulings and the existence of the central authorities, including the State IP Service of Ukraine, the IP market is still unadjusted and chaotic.
The drafting of legislation is the next step in the reform of the scope of IP protection. Implementation of reform will allow, first of all, to create a favorable environment for investors and businesses in innovative sectors, as well as fulfill the conditions of the Association Agreement signed with the European Union and to improve the reputation of Ukraine around the world.
The Ministry of Economic Development and Trade of Ukraine is preparing a series of draft laws aimed at solving urgent business problems in the sphere of IP rights protection. Certain amendments must be made in such areas as copyright protection on the Internet, the regulation of royalties’ collection to copyright holders, prevention of patent trolling, simplification of procedures for IP in the field of IT development and public access to licenses, and stepping up responsibility for violations of IP rights. Thus, the state authorities, enterprises, institutions and organizations have to optimize efforts to provide implementation and protection of IP rights. Moreover, it is necessary to establish special authorities responsible for preventing piracy and ensuring control over royalties. It is also important to regulate the situation with companies involved in collective management of copyright, namely to make them completely non-government and to streamline their scope in accordance with specific fields (someone deals with theatres and concerts, while others are engaged in movies and TV, audio recordings, etc.).
Investigation agencies should be established for the private sector of IP rights. It is not an attorney’s job to carry out certain research on infringements of a right holder’s IP rights. Special people — investigators — must be given the powers to do this and provide evidence that is evaluated by a court of law. Furthermore, extension of a notary’s discretion will help to record the infringements via the Internet. Thirdly, the creation of more agencies that provide opinion polls is required. There are some agencies that deal with this. However, the price of the service is too high and sometimes the quality of their work is not high enough. Finally, all professional organizations, enterprises, associations and institutes must consolidate their efforts in order to improve legislation.
Amendments to legislation and the implementation of the above-mentioned factors are currently an obligatory component of successful reforms in all developed countries.
UJBL: What global trends in IP protection may come to Ukraine shortly?
Y. O.: Global trends in the protection of intellectual property are already topical in Ukraine, and this topicality will only increase in future.
The globalization of the economy, the unification of Ukrainian legislation in compliance with WTO requirements and its harmonization with EU legislation have a positive impact on the understanding in Ukraine of international business rules. In future globalization will only grow and in the medium term, Ukraine will be able to qualify for full membership of the EU with all the subsequent consequences for the IP field.
The impact of international external factors is also notable in the field of IP protection in Ukraine. The relevance of Ukraine’s participation in low-effectiveness organizations like the CIS, a former-Soviet club, appears more often on the agenda, and these trends were already experienced by global business. In the short term, all international business will in the main reconfigure its business model in the region and, instead of the central office of the CIS, traditionally located in Moscow, business will look for other centers or will adjust its business format into a fewer links model with a worldwide center for all local offices. These processes are also gradually increasing their impact on the scope of protection of IP rights. Changing the business model increases the importance and responsibility of Ukrainian business and makes the display of its effectiveness a more urgent task, including through the means of IP rights protection.
Another global trend that cannot bypass Ukraine and which is very important for all jurisdictions is the technological process. Recently, the local head of the IP department of a long-standing international customer of top value in its industry field, told me that due to their newest computer program, their company globally reduced demand for external consultants by 20% for the year. Technology will soon displace external consultants, which offer a simple and standard way. I so far remain calm for our company because we are very creative, unique and provide integrated services and solve extremely complex problems in Ukraine. However, it cannot be ruled out that once technology becomes better than us then we will see whether we are ready for this competition.
Doubinsky & Osharova
Key facts:
Year of establishment 2000
Number of lawyers/partners/consultants
7/8/12
Core practice areas
- Intellectual Property Law Litigation
- Commercial Law
- Competition Law
- Pharmaceutical Law
