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On the way toward integration with European Union aimed to accession to the Single European Space Ukraine has accepted obligations as for the harmonization of the national legislations and its formalization with the European standards. An important part of the integration of Ukraine to the global economic is the improvement of the national IP protection system. Mostly this concern the national IP legislation improvement aimed at achieving the higher standards of protection and enforcement of IP rights. Therefore, the state policy in the field of protection and enforcement of IP rights shall progress to a new level and had to base on the principles of legality and transparency.
The year 2015, characterized by a range of draft laws in the field of IP introducing by the subjects of legislative initiative as well as by the authorized instance in the field - State Service of Intellectual Property (SIPS). SIPS was focused on the issues of effective cooperation with applicants and right holders as well as improvement of the regulatory and legal framework, elaboration of the respective copyright and related rights laws in order to improve Ukraine’s image in the Special 301 Report. As we remember, one of the reason for including of Ukraine into the 301 Report was failure to implement an effective means to combat the widespread online infringement of copyright and related rights in Ukraine, including the lack of predictable provisions on intermediary liability and liability for third parties that facilitate piracy and other copyright infringements.
In this article we will focus mainly on the most expected legislative innovations and draft laws, which deals with industrial property and copyright protection issues.
The maintenance of the electronic database of pending applications to the trademarks was long awaited news by the IP practitioners and trademark owners. Article 8 of the Law of Ukraine «On Protection of the Rights to Marks for Goods and Services» stipulated that any person have had the right to review the materials of a trademark application after establishing of the application filing date. However, before August 2015, when the Order of Publication of the Details of Trademark Applications on the Internet (the Order) has adopted, it was impossible to review the materials of the trademark applications. Thus, the individual may only conduct a search by ordering of such paid service through Ukrainian Intellectual Property Institute (Ukrpatent). After approval of the respective Order any person has a possibility to familiarize with the following information about trademark application as: filing number and date; priority details; classes of International Classification of Goods and Services (ICGS); an image of the trademark; the applicant’s name and address; etc. Thus, the implementation of the electronic database of the trademark applications was a rather positive innovation which aiming to improve the conditions for any person to oppose trademark application. It is one of the most topical developments in 2015.
Another anticipated innovation of transparency in the IP field was the decision by SIPS to publish decisions of the SIPS Appeal Chamber. Now all the decisions of the Appeal Chamber issued after 23 September 2011 are publishing on the web-site SIPS.
Notably, in 2015 year SIPS gave special attention to the issues of combating of the so-called «patent trolling». In the course of working with IP experts, employees of UIPI and SIPS together with patent attorneys, and importing companies, which suffer highly from the «patent trolling» in Ukraine, certain amendments to the Law of Ukraine «On Protection of the Rights to Industrial Designs» that expected to be introduced in the nearest future were elaborated. The amendments aimed to developing of the additional mechanism for preventing the grant of exclusive rights to industrial designs, which do not comply with the conditions for obtaining the legal protection, or for preventing the grant of those rights to the unfair applicants through the introduction of the procedure of submission of the third-party objections to the grant of industrial design patent.
The abovementioned Draft Law mainly stipulated the following innovations:
- non-registered industrial designs may obtain a legal protection. It means that non-registered industrial design will obtain a legal protection within 3 years from the date when it was made available to the common attention on the territory of Ukraine. The owner of non-registered industrial design will have the right to prohibit it’s use within such period;
- the additional patentability criteria – «individual character» of the industrial design is established. It means that the general impression, which industrial design produces on the informed user shall differs from the impression, which another design produces on the same user;
- the possibility of filing of the motivated objection against registration of the industrial design to the Ukrainian Patent Office within one month from the date of publication of the information about the application, in case of non-compliance with the conditions for obtaining of the legal protection, is provided by the Draft Law;
- the possibility of appeal against the decision of the Ukrainian Patent Office by the individual who has been filed motivated objection against registration of the industrial design the to the Appeal Chamber of SIPS;
- the Draft Law stipulated the provision regarding reimbursement of the damages by the mala fide applicant in case of invalidation of the patent to the industrial design. It means that in case of judicial invalidation of the patent to the industrial design when the court found that the patent owner has been acted unfairly and his actions caused damages to any person, the court is entitled to make a decision about reimbursement of the damages by the patent owner;
The highest priority was given to the issue of protection and enforcement of the copyright and related rights in the Internet. The Draft Law of Ukraine “On Amendments to Certain Legislative Acts of Ukraine on Copyright and Related Rights Enforcement in the Internet» elaborated by the Ministry of Economic Development and Trade of Ukraine is aimed to insure the implementation of minimum standards of copyright protection in the Internet. The above-mentioned Draft law mainly incorporated the requirements of the Association Agreement between the EU and Ukraine concerning the liability of providers, as well as the EU Information Society Directive and Electronic Commerce Directive.
It provides the following innovations:
- the possibility to inquire the hosting provider about the owner of the website which uses appropriate services in order to provide access to the information, which infringed his copyright or related rights;
- the legal owner of the content is entitled to send a notification to the owner of the infringing website and demand on removal of the offending content;
- the use of the website has the right to send a «notice of takedown» to the website owner, where the owner of the website or hosting provider must immediately (no later than within 24 hours) to remove or prevent access to information that violates the copyright or related rights;
- the administrative responsibility is applied for the non-compliance by the website owner or hosting provider of the requirement for the removal of the information, which infringed the copyright and or related rights or for non-providing by the of the identifying information about the web-site owner which infringed which placed the information, which infringed the copyright and or related rights;
- the website owner shall renew the access to the removed information in case when the copyrights owner within the stipulated period do not provide the documents, confirming filing of the lawsuit for the protection if his copyrights;
- the notaries will be entitled to insure the protection of evidence in the Internet by drafting of the corresponding minutes;
Summarizing, we may point out that the core directions of initiatives in IP field last year was deal with protection of copyright in Internet, prevention of patent trolling and improvement of the legislation, regulating protection of the rights to the industrial designs as well as giving of the public access to the databases maintained by the Ukrainian Intellectual Property Institute. Also certain amendments to the Civil Code of Ukraine and Commercial Code of Ukraine were proposed by SIPS and were elaborated as amendments to the Resolution of the Cabinet of Ministers No 847-р «On Plans of Implementation of the Association Agreement between the EU and Ukraine». These amendments primary foresee the following innovations: the procedure of disclosure of evidence by the court instances was amended; the list of interim relief was extended as well as the procedure of reimbursement of damages for the infringement of the IP rights has been elaborated by SIPS. However, the above innovations are still on the stage of approval of Ministry of Economic Development and Trade of Ukraine. We believe that this year will be more fruitful for IP industry and a range of draft laws will be adopted by the Ukrainian Parliament.