IPR Toolkit for Ukraine
Welcome
The United States Embassy in Ukraine recognizes the imperative of strong intellectual property rights (IPR) protection for American business, and aims to work cooperatively with the Government of Ukraine (GOU) to improve its protection and enforcement of IPR.
IPR protection and enforcement is an important component of the U.S. - Ukrainian trade relationship and inadequate IPR protection in Ukraine causes significant economic losses to U.S. businesses. Ukraine remains on the U.S. Government’s 301 Watch List, indicating that inadequate protection of IPR continues to be a significant problem.
This IPR Toolkit was developed by the U.S. Embassy in Kyiv to provide background information to U.S. businesses on the current IPR environment and regulations in Ukraine and where U.S. businesses can go for more assistance.
Disclaimer
The information provided in this toolkit by no means constitutes legal advice and should not be a substitute for advice of counsel. Its intended purpose is to provide an overview of the Ukrainian IPR environment, available enforcement mechanisms and the Ukrainian government offices sharing IPR jurisdiction. We recommend that U.S. companies seeking to do business in Ukraine, or facing IPR infringement issues, retain qualified U.S. and/or Ukrainian legal counsel as they pursue their rights through the Ukrainian IPR enforcement regime.
Current IPR Environment
Ukrainian intellectual property legislation includes nine laws:
The law of Ukraine on:
- Protection of Rights to Inventions and Utility Models
- Protection of Rights to Industrial Designs
- Protection of Rights to Trademarks and Service Marks
- Protection of Plant Varieties
- Protection of Rights to Topographies of Integrated Circuits
- On Protection of Rights to Geographical Indications
- Protection Against Unfair Competition
- Copyrights and Related Rights
- Restriction of Monopolies and Prevention of Unfair Competition
Copyrights
Introduction
A Copyright regulates the right of the authors of works of art, science, literature and other domains of creativity to use or to authorize others to use their works. The right of the author, as well as the system of legal instruments protecting such a right, is called copyright. A copyright does not protect an idea but a work, and arises from the time the work is created.
Both published and unpublished works are protected by copyright.
According to Ukrainian law there are several categories of material that are not eligible for copyright protection. They are:
- news of the day or day-to-day operation;
- works of folk art;
- official records and official translations;
- state symbols of Ukraine, state awards and symbols, and symbols of different organizations.
A copyright gives its owner the exclusive right to reproduce the work in copies, to perform the work publicly, and to distribute copies of the work by any method. The copyright owner also has a right to authorize others to use his work.
A copyright includes exclusive tangible and intangible rights. Only tangible rights, which include the exclusive right to use the product and to give other people permission or prohibition to use it, can be transferred to other persons. The author of the work is entitled to receive rewards for the use of his work.
In Ukraine, copyright is protected for 70 years after the author’s death.
After the expiration of copyright the work becomes in the public domain.
Legislation
A copyright in Ukraine is legislated by the 2001 Law of Ukraine on “Copyrights and Related Rights” and as amended in 2003, 2004, and 2011. (For a copy in Ukrainian go to: http://zakon.rada.gov.ua/cgi-bin/laws/main.cgi?nreg=3792-12 ; in English translation of the 2001 version of the law is available at: http://www.intellect.ua/eng/copyright/law/laws/copyright
In 2001, Ukraine joined major international copyright treaties and conventions, including:
- the Geneva Convention on the Protection of Phonograph Producers. The Copyright Law later granted foreign phonograph producers originating from Geneva Convention member-states national regime and retroactively);
- the Rome Convention for the Protection of Performers, Producers of Phonographs and Broadcasting Organizations;
- the WIPO Copyright Treaty;
- the WIPO Performances and Phonographs Treaty.
Coverage
The category of works covered by copyright legislation includes:
- Works of language (literature, speeches, lectures, recitations and other oral works, computer programs)
- Musical works
- Dramatic and other works created for stage presentation
- Audiovisual works including cinematographic works
- Works of art
- Works of architecture
- Works of applied arts and industrial design
- Photographic works
- Audiovisual works including cinematographic works
- Cartographic works
- Translations for dubbing, sound-tracks, and subtitling of foreign audiovisual works
Registration
While registering copyrights is not required under Ukrainian law, doing so provides essential protection in case of a copyright dispute. Copyright registration is performed by the State Intellectual Property Service of Ukraine: (http://www.sdip.gov.ua/ua/copyright_registration.html - in Ukrainian only).
Copyright registration procedures include filing an application to the State Intellectual Property Service of Ukraine and making an official payment. Certificates of Copyright Registration are included in the State Registry.
Trademarks
Introduction
The Law "On Protection of Rights to Trademarks and Service Marks" defines a trademark as a mark that distinguishes goods and services of one person from similar goods and services of another person.
Trademarks can be verbal (words or combinations of letters), graphic (graphic compositions), volumetric (figures or their compositions of any shape on a plane) or other symbols or their combinations. A trademark can consist of sound, light, color or a combination of colors.
Legislation
Major legal acts which regulate trademarks:
1. Paris Convention for the Protection of Industrial Property of 1883;
2. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 1957;
3. Madrid Agreement Concerning the International Registration of Marks of 1891 with the Protocol to it of 1989;
4. Agreement on Measures on Warning and Discontinuing Use of False Trademarks and Geographic Denotations of 2000 signed by the CIS countries;
5. Law of Ukraine "On Protection of Rights to Trademarks and Service Marks" of 1994 with amendments (the latest in May 2008);
6. Law of Ukraine "On Protection of Rights to Indications of Origin of Goods" of 1999 with amendments (the latest in April 2008);
7. Law of Ukraine "On Protection against Unfair Competition” of 1996 with amendments (the latest in December 2008);
Coverage
A trademark is protected by law from the moment of application for registration of the trademark. A trademark certificate gives the owner the right to ban other persons from using the registered trademark without the owner's permission, except for in cases when such use of the trademark is not recognized as an infringement of the owner's rights.
Ukraine’s Law "On Protection of Rights to Trademarks and Service Marks" does not protect marks that:
- cannot be distinguished one from another;
- are common-use characters or terms;
- indicate a kind, quality, quantity, property, mission, value of goods and services as well as a place or time of manufacturing or sales of goods or services;
- mislead or may potentially mislead persons about the goods, services or individuals that produce goods or provide services;
- are commonly used to denote goods of that kind.
Marks that are not protected under the law include:
- the State Coat of Arms;
- emblems, abbreviations, or full names of international or intergovernmental organizations;
- official controls, marks, and seals;
- awards and other honors.
Marks that cannot receive protection under Ukrainian law include those that are identical or similar up to the point that they may be confused with:
- trademarks for similar goods and services, registered or filed for registration in Ukraine by some other person;
- trademarks of other persons, if these marks are protected without registration on the basis of international treaties to which Ukraine is a party;
- company names known in Ukraine and belonging to other persons, which received the right to the company name before the application date to use similar goods or services;
- qualified indications of origin of goods, except for in cases when they are included in a mark as unprotected elements;
- registered, certified trademarks.
According to recent changes in the Law "On Protection of Rights to Trademarks and Service Marks", marks, which were used in good faith prior to 1 January 1992 by two or more legal persons to denote similar subjects, are not protected as trademarks.
Registration
Trademark registration is performed by the State Intellectual Property Service of Ukraine. The property right to a trademark is certified by a certificate, which is issued for 10 years from the date of application for registration. The certificate can be extended for another 10 years. The certificate is issued to the applicant who was the first to file a registration application.
Companies are advised to submit an application for trademark registration before entering the Ukrainian market, in order not to tempt competitors or other entities from filing a frivolous and competing trademark registration.
When registering a trademark, it is necessary to declare all classes in which activity will be conducted according to the International Classification of Goods and Services. If an applicant decides to be too careful and to declare classes in which activity will not be conducted, someone can petition the court to cancel the certificate if the trademark is not used or is used insufficiently in the classes for three years. On the other hand, the law does not envision the possibility of expanding the list of goods and services for which a trademark has been registered, meaning that if a company decides to expand the scope of its activity, it will not be able to expand its trademark to other classes of goods and services.
When registering a verbal trademark, it is necessary to avoid words, which in case of possible judicial proceedings, may be interpreted by the court as being a specific name.
Sanctions for Trademark Infringement
An owner can enforce his rights to a trademark in a commercial court or through administrative proceedings with Ukraine’s Antimonopoly Committee, or with the Appellate Chamber of the State Department of Intellectual Property.
Ukrainian law provides for civil, administrative and criminal liability for trademark infringement. The Laws "On Protection of Rights to Trademarks and Service Marks" and "On Protection Against Unfair Competition”, as well as the Criminal, Administrative-Procedural, and Customs Codes, list sanctions for trademark infringement.
Under the Laws "On Protection of Rights to Trademarks and Service Marks" and "On Protection Against Unfair Competition", an owner of a certificate can demand that an infringement be halted, can demand compensation of losses resulting from the infringement, and can demand that the wrongfully used mark be removed from the goods and their packaging.
Patents
Introduction
A patent is a legal document that grants a patentee a monopoly right for an invention, utility model, or industrial design. In Ukraine, a patent on an invention is granted for a period of 20 years, on a utility model – 10 years, on industrial design – 15 years.
Legislation
The major legal acts which regulate patents in Ukraine are:
1. Law of Ukraine “On Protection of Rights to Inventions and Utility Models” of 1994 with amendments (the latest in April 2009)
2. Law of Ukraine “On Protection of Rights Industrial Designs” of 1994 with amendments (the latest in May 2003)
Coverage
The following subject matters of an invention are patentable:
- a product (apparatus, substance, strain of microorganism, cell culture of plant and animal)
- a process
- use of a previously known product or process for a new indication
In Ukraine, many things are excluded from being patentable due to unsuitability, public policy and morality.
The requirements of patentability for invention are:
- it is novel;
- involves an inventive step;
- it is capable of industrial application.
The requirements of patentability for a utility model are:
- it is novel;
- it is capable of industrial application.
The requirement of patentability for industrial design is its novelty.
A key criterion, novelty means the invention; utility model or industrial design has not been disclosed in the world before the filing date of the application.
Registration
A patent application can be filed with the State Intellectual Property Service of Ukraine: (http://www.sdip.gov.ua/ua/inventions.html -in Ukrainian only).
The date when the application is filed is called a priority date. A patent application should contain:
- description of invention (utility model, industrial design);
- claims;
- abstract;
- drawings (as needed);
- set of images of the product (for industrial designs).
The description should disclose the subject-matter of the invention clearly and completely.
Claims must disclose the subject-matter of an invention and must be based on the description. Claims define the extent of patent protection. Abstract means a brief description of an invention.
There are two examinations - formal and substantive. The formal examination determines whether an invention (utility model, industrial design) is patentable and whether a patent application complies with established requirements.
A substantive examination checks for
- novelty;
- inventive step;
- capability of industrial application.
Where to Go for More Information 
U.S. Government
- United States Department of State: http://www.state.gov
- United States Department of Commerce: http://www.commerce.gov
- United States Trade Representative: http://www.ustr.gov
- United States Patent and Trademark Office - responsible for granting and administering U.S. patents and trademarks: http://www.uspto.gov
- United States International Trade Commission - investigates claims regarding intellectual property rights violations by imported goods, including allegations of patent and trademark infringement: http://www.usitc.gov
- United States Strategy Targeting Organized Piracy (STOP!) - information on U.S. Government resources to help U.S companies protect their intellectual property: http://www.stopfakes.gov
- The National Intellectual Property Rights Coordination Center (IPR Center) - as a task force, the IPR Center uses the expertise of its 19 member agencies to share information, develop initiatives, coordinate enforcement actions, and conduct investigations related to IP theft: http://www.iprcenter.gov
- Department of Justice, Computer Crime and IP Section - responsible for combating computer and intellectual property crimes worldwide: http://www.cybercrime.gov
- DHS/Customs and Border Protection – responsible for keeping foreign pirated and counterfeit goods from entering the United States: http://www.cbp.gov
- U.S. Copyright Office, Library of Congress - responsible for registering copyright claims: http://www.copyright.gov
- U.S. Embassy – Ukraine: http://ukraine.usembassy.gov
- U.S. Commercial Service – Ukraine - comprehensive, customized solutions to U.S. companies’ international trade challenges and provides export promotion assistance through a variety of products and services: http://www.export.gov/ukraine/
American Chamber of Commerce
The American Chamber of Commerce in Ukraine has an active IPR Committee: http://www.chamber.ua/committee/9
Industry Organizations
- Association of American Publishers - the national trade association of the U.S. publishing industry.
- Biotechnology Industry Organization - represents biotechnology companies, academic institutions, state biotechnology centers and related organizations. Intellectual property information: http://www.bio.org/ip
- Business Software Alliance (BSA) - advocates on behalf of the commercial software industry. Intellectual property information: http://www.bsa.org/usa/antipiracy
- International Federation of the Phonographic Industry (IFPI): http://www.ifpi.org
- Motion Picture Association - advocates on behalf of the American motion picture, home video and television industries. Intellectual property information: http://www.mpaa.org/contentprotection/copyright-info
- Music Publishers Association: http://www.mpa.org
- Pharmaceutical Research and Manufacturers of America (PhRMA): represents U.S. pharmaceutical and biotechnology companies. Intellectual property information: http://www.phrma.org/issues/intellectual-property
- Entertainment Software Association - represents companies that publish video and computer games for video game consoles, personal computers and the Internet. Intellectual property information: http://www.theesa.com/policy/intellproperty.asp
- International Trademark Association - an association dedicated to the support and advancement of trademarks and related intellectual property: http://www.inta.org
- International Anti-Counterfeiting Coalition - the largest international organization devoted solely to combating product counterfeiting and piracy: http://www.iacc.org
International Organizations
- World Trade Organization’s resources on TRIPS: http://www.wto.org
- World Intellectual Property Organization(WIPO) - an international organization dedicated to promoting and protecting intellectual property rights: http://www.wipo.int The Small and Medium-Sized Enterprises Division of WIPO features case studies and information on commercializing intellectual property: http:/www.wipo.int/sme/en
Local Organizations
- State Intellectual Property Service of Ukraine: http://www.sdip.gov.ua/en/departament.html
