Various IP Issues Raised at IP Forum in Ukraine

The Intellectual Property Forum held in Kiev, Ukraine on June 26 attracted many IP practitioners and representatives of various state authorities, including the courts, the Ukrainian PTO, and the Ukrainian Antimonopoly Committee (AMCU).

Apart from the two main topics, the IP protection in Ukraine and Russia in light of the Crimea conflict and the Ukraine-EU Association Agreement, there were also discussions on various other IP-related issues in Ukraine.

Ukraine is aiming to bring its laws and practices into compliance with WTO rules and is designing a comprehensive national IP strategy to strengthen its IP system. The newly elected Ukrainian President Petro Poroshenko has stated that the European integration will be among his priorities and that IP protection and enforcement will be an important part of Ukraine’s reform programs.

ICC Business Action to Stop Counterfeiting and Piracy (BASCAP) released a new report on IP in Ukraine on June 25, and BASACP Director Jeffrey Hardy presented the findings during the IP Forum. The 44-page report provides comprehensive policy and legislative recommendations to improve the Ukrainian IP protection system; some of these recommendations are to be included in Ukraine’s National IP Strategy for the period until 2018. Among other things, the report contains statistics on counterfeit goods and their negative effect on Ukraine’s economy. Counterfeit pesticides and agrochemicals are highlighted in the report as the volume and frequency of these goods circulating in Ukraine keeps growing each year.

During the meeting, the judges from the Ukrainian Higher Commercial Court addressed the audience questions about specialized IP courts. The judges stated that it is unlikely that such courts would be established in the near future, mainly because of the lack of financial assistance and the lack of specialized judicial education and training opportunities. They also informed that the Higher Commercial Court was planning to clarify the procedure for the appointment of judicial experts, particularly in which cases it is necessary to appoint the experts. The judges stated that the appointing of judicial experts in patent-related cases is practically always necessary, as these types of cases require specific technical background and knowledge. They also discussed the issue of appointing judicial experts to establish whether the use of similar trademarks causes confusion among consumers as to the source of the goods. The AMCU officials stated that the results of consumer polls and surveys should serve as the main tool in establishing confusion, and not the judicial expertise, which is often subjective and contradictory.

At one of the topic sessions, the IP practitioners shared their experience in domain name disputes. They recommended sending cease and desist letters to everyone that can be identified – hosting providers, domain name registrars, registrants and search engine companies. One of the main problems in domain name disputes is the difficulty of obtaining registrant’s contact information because of privacy protection issues. However, the attorneys have a positive experience with sending attorneys’ motions (a specific kind of motion which can be sent only by a licensed attorney) to registrars asking them to disclose information about the registrant. According to the speakers, this method works in most cases.

During the topic session dedicated to unfair competition, the AMCU representatives emphasized that the AMCU’s main duty is not to protect IP rights, which is the task of the courts, but to combat unfair business practices, and that this should be taken into account when requesting that the AMCU prevents an IP right infringement. The AMCU officials also stressed that the AMCU can initiate unfair competition proceedings even if there was no request filed by the right holder. Such approach is quite new and resembles the practice of ex officio seizures by the customs authorities.

By: Elena Zubenko

For more information, please contact Elena Zubenko at our Ukraine office.