Ukraine Association Agreement with EU – Update

On September 16, 2014, Ukraine ratified the Association Agreement with the EU and on September 17, 2014, adopted a plan for its implementation.

In accordance with the plan, relevant IP laws should be drafted by the end of July 2015 and public access to the filed trademark applications should be introduced by the end of December 2016.

The agreement has a significant impact on IP protection in the country. Generally, the provisions provide for the harmonization of the Ukrainian legislation with the EU legal framework and the resolving of a number of problematic issues in the IP sector.

As the preparation of the text of the agreement and its signing by the parties has had a long history, it is unclear yet whether the latest changes in the EU legislation will be included into the drafts of Ukrainian laws and bylaws implementing the agreement, in particular the provisions of the Regulation (EU) No. 608/2013 of the European Parliament and of the Council of June 12, 2013, concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No. 1383/2003 and Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market.

Geographical Indications

Protected GIs at the EU level will also get protection in Ukraine. Comparable products produced in Ukraine and labeled with EU GIs after the agreement entered into force and before the transitional periods end (7 years for cheese and 10 years for alcohol), may continue to be sold in the territory of Ukraine until stocks run out.

Generic names in the Ukrainian language, such as Med (diminutive: Medok) (honey) and Kawa (Coffee) cannot be protected as GIs, as provided for in the Common declaration on the right to use certain names in Annex XXII-D to Chapter 9 of the agreement.

Under the agreement, any natural person or legal entity is allowed to file objections to granting EU protection to Ukrainian GIs as well as to EU GIs in Ukraine, for the EU GIs listed in the annexes to the agreement.

Inventions

In terms of the supplementary protection certificates for medicinal products, the current provisions of the Ukrainian legislation say that the term of protection may be extended for the period that elapses between the filing of the patent application and the authorization to place the product on the market, but not longer than 5 years. For example, if it took 7 years to complete the marketing authorization process, the extension will cover only 5 years. In accordance with the agreement, such period will be reduced by 5 years, and the end result will equal the supplementary protection term. If the process took 7 years, we reduce 7 by 5, and get the 2-year supplementary protection term.

Industrial Designs

The Association Agreement provides for a new criterion for the protection of designs – individual character, as well as a new form of protection – unregistered designs. The term of protection increases from 15 years to 25 for registered designs. For unregistered designs, the term should amount to at least 3 years from the date on which the design was made available to the public in the territory of one of the parties.

By: Yuriy Karlash

For more information, please contact Yuriy Karlash at our Ukraine office.