Ukraine: Intellectual Property

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This country-specific Q&A provides an overview to intellectual property law in Ukraine.

It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.

This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/

  1. What different types of intellectual property rights exist in this jurisdiction to protect?

    (a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);

    Inventions and utility models are protected by patents. In addition, the law provides protection of secret patents for inventions and utility models. Supplementary protection certificates are not provided by the law per se, but duration of patents for inventions that covers substances the use of which requires the State authorization (e.g. medicines and agrochemicals) may be extended in addition for the term up to 5 years.

    Confidential information and know-how may receive legal protection in Ukraine provided that confidentiality requirement is duly observed and subject to requirements prescribed by the laws.

    (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);

    Intellectual property rights to trademark are confirmed by the trademark certificate.
    Unfair competition laws provide the possibility to initiate proceedings on the ground of passing off as well as possibility to take legal actions to prevent unfair competition.
    As to certification marks, Ukrainian legislation provides for requirement to conduct certification of the goods and certain services, subject to requirements of the relevant legislation (e.g., the foreign goods require certification for their import).

    Designations of origin and geographical indications are subject to state registration confirmed by the certificate. In Ukraine, there is no registry of the traditional specialty guarantees, however, the registration and protection of designations of origin provides legal protection to agricultural products of foodstuff of a traditional composition, or produced according to a traditional production method, that is linked to certain geographical area.

    Ukrainian legislation provides protection to trade names. Legal protection is being granted to a trade name from the date of its first use in Ukraine.

    (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).

    Copyright subsists in original works of authorship fixed in material form. Copyright protection covers both published and unpublished works, both completed or incomplete, irrespective of their purpose, genre, volume. Copyright registration is voluntary. Copyright registration is confirmed by copyright certificate.

    Databases are protected as copyrighted works.

    Related rights exist in performance of literary, dramatical, musical, choreography, folklore and other works, phonograms, videograms, programs of broadcast organizations to protect the rights of the performers or works, phonogram and videogram producers, broadcasting companies and their respective successors.

    Industrial designs are protected by patents.

    Exclusive rights to semiconductor topographies are confirmed by certificates.

    Non-proprietary intellectual property rights to plant variety are confirmed by the certificate of authorship to a plant variety.

    Proprietary intellectual property rights to plant variety are certified by patent.
    Certificate of state registration of variety gives its owner the exclusive proprietary right of dispersal of variety.

    Confidential information and know-how are protected based on their confidentiality.

  2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

    Duration of patents for inventions is 20 years from the filing date. The noted duration applies subject to due payment of the annuities. A patent for a substance, use of which needs a special permission from authorized state authority (e.g. medicinal products, agrochemicals) may be extended for up to 5 years. In order to extend a patent, an appropriate request must be filed to UAPTO with confirming documents, payment of official fee and power of attorney (hereafter the PoA) for non-residents of Ukraine prior to 6 months before the expiration of the twenty years’ period.

    Duration of patents for utility models is 10 years from the filing date (non-extendable). The noted duration applies subject to due payment of the annuities.

    Duration of a certificate for a semiconductor topography is 10 years from the filing date (non-extendable).

    Duration of a certificate for Trademarks is 10 years from the filing date; indefinitely renewable for same periods. In order to apply the renewal an appropriate request must be filed to UAPTO with payment of official fee and PoA for non-residents of Ukraine within 6 months before the expiration of the ten years’ period.

    Duration of industrial design protection is 10 years from the filing date; extendible for 5 years. In order to extend a patent, an appropriate request must be filed to UAPTO with confirming payment of official fee and PoA for non-residents of Ukraine within 2 months before the expiration of the ten years’ period. The noted duration applies subject to due payment of the annuities.

    Duration of copyright protection is 70 years from the date of an author’s death or the death of the last co-author (non-extendable).

    The duration of related rights’ protection is 50 years after the first publication of the work (non-extendable).

    Duration of intellectual property rights to plant varieties is 35 years from the date of plant variety registration for trees varieties, shrubby cultures and grapes and 30 years for any other culture (non-extendable).

    Duration of intellectual property rights to designations of origin and geographical indications is 10 years from the date of registration with possibility of extension for 10 years; indefinitely renewable for same periods. In order to apply the renewal an appropriate request must be filed to UAPTO with payment of official fee, a document from the relevant authority that owner produces goods on the territory and with characteristics that comply the data from the State register and PoA for non-residents of Ukraine within 1 year before the expiration of the ten years’ period.

    As regards trade name, Ukrainian legislation does not limit their protection to a certain duration period.

  3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

    As regards patents for inventions and utility models, the first owner is inventor or his legal successor. The employer has a right to obtain a patent provided that an invention (utility model) was created in connection with official duties performance or under a commission. In this case during four months from the date of the inventor’s notification about creation of an invention (utility model) an employer must file an application within UA PTO (or transfer the right to receive a patent (utility model) to another person) or preserve the information regarding a technical solution as confidential information. If an employer does not comply with this requirement during mentioned period, the right to obtain a patent (utility model) begins to belong to an inventor or his legal successor.

    As regards semiconductor topography the first owner is an author or his legal successor. The employer has a right to register in a topography provided that the topography was created in connection with official duties performance or under a commission, unless otherwise is agreed in writing (e.g. employment agreement).
    As regards trademarks the first owner is either a natural person or a legal entity, that filed application irrespective of conditions for creation of a mark.

    As regards industrial design, the first owner is author or his legal successor. The employer has a right to obtain a design protection provided that design was created in connection with official duties performance or under a commission, unless otherwise is agreed in writing (e.g. employment agreement).

    As regards copyright, the first owner is the author. Economic rights to a work created by an employee or under a commission belong to the author and the employer jointly, unless otherwise is agreed in writing (e.g. employment agreement).

    As regards plant variety, its first owner is the author. Economic rights to a plant variety created by an employee or under a commission belong to the author and the employer jointly, unless otherwise is agreed in writing (e.g. employment agreement).

    As regards designations of origin and geographical indications, the first owner is the applicant or group of applicants that have filed the application.

    The first owner of a trade name is a business entity (legal person or registered private entrepreneur) who has first started applying the name in its business operations.

  4. Which of the intellectual property rights described in questions 1-3 are registered?

    Inventions and utility models, industrial designs, trademarks, geographical indications, semiconductor topography rights and plant varieties. Copyright registration is voluntary and can be performed upon request of its owner.

  5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

    As regards inventions and utility models, and semiconductor topographies an application may be filed by an employer, inventor (author), or their legal successors. After examination of formalities utility model is granted and a topography of integrated circuits is registered. Patent for invention is granted after examination of formalities and substantive examination.

    As regards trademarks any natural person or legal entity may apply for trademark registration. The trademark is registered after formal examination and substantive examination. Oppositions are available only during examination.

    As regards industrial design an application may be filed by an employer, inventor (author), or their legal successors. After examination of formalities a design is registered.

    As regards copyright an author or his employer (or their legal successors) can apply for copyright registration. The procedure of copyright registration includes filing the application documents and recordation of the copyright, provided that formal requirements to the application documents, are met.

    As regards plant variety an author and its employer (or their legal successors) can apply for its registration. The procedure of plant variety registration includes filing of application to the relevant authorities, formal examination and substantial examination of application including examination as to the name of variety and examination as to dissemination of a variety.

    As regards designations of origin and geographical indications the following persons can apply for their state registration:

    • a person or a group of persons that in the claimed geographical place manufacture goods, the particular properties, certain qualities, reputation or other characteristics of which are related to that geographical place;
    • the consumer associations;
    • the institutions being directly related to production or investigation of relevant products, articles, technological processes or geographical places.

    The right to use the registered appellation of origin of goods or the registered geographical indication of origin of goods is vested, subject to the registration of that right, in manufacturers which at the geographical place designated in the Register produce goods, the particular properties, certain qualities or other characteristics of which correspond with those included in the Register.

    In case the applicant is non-resident of Ukraine, applications for registration of inventions, utility models, industrial designs, trademarks, integrated circuits, geographical indications, should be filed through Ukrainian trademark / patent attorney.

    The procedure of a trade name state registration is not provided in Ukraine. The state registration of a company may be considered as the first use of a trade name by its owner.

  6. How long does the registration procedure usually take?

    Inventions: 2-3 years.

    Utility models, semiconductor topographies: up to one year.

    Trademarks: approximately 10-14 months.

    Industrial designs: approximately 8-10 months.

    Copyright: 2 months.

    Plant varieties: up to 2-3 years.

  7. What (if any) steps can the applicant take if registration is refused?

    Inventions, utility models, industrial designs, semiconductor topographies, trademarks, designations of origin, geographical indications: The final decision on refusal of UA PTO can be opposed at the board of appeal or at the court during two months after receiving the decision.

    Copyright: if copyright registration is refused due to the formal reasons, the applicant may re-file application for copyright registration. Further, decision on refusal in copyright registration can be challenged via the court.

    Plant varieties: the final decision on refusal of plant variety registration can be challenged via the court.

    Designations of origin, geographical indications: the applicant may file an appeal to the board of appeals of the relevant examination authority, or to the court.

  8. What are the current application and renewal fees for each of these intellectual property rights?

    The fees below are indicated in Ukrainian national currency (UAH) unless otherwise is expressly specified.

    Trademarks:

    • Filing application, basic fee: 1000
      • each additional class over one: 1000
      • color designation: 500
    • Filing request for term extension (maximum 6 months): 400
    • Grant fee: USD 200
    • Publishing fee for each class: 150
      • color designation: 100

    Industrial designs:

    • Filing application, basic fee: 800
      • each additional design (variant) over one: 100
      • each additional design (variant) over ten: 350
    • Filing request for term extension (maximum 6 months): 400
    • Grant fee: USD 100
    • Publishing fee for design representation: 150
      • color designation: 100

    Annuities (industrial designs):

    Year

    1 - 2

    3

    4

    5

    6

    7

    8

    9

    10-12

    13-15

    Fees

    100

    200

    300

    450

    700

    900

    1200

    1500

    1800

    3300

    v:

    • Filing application, basic fee: 800
      • each additional claim over one: 80
    • Filing request for term extension (maximum 6 months): 400
    • Requesting substantive examination for each independent claim (only for inventions): 3000
    • Grant fee: USD 100
    • Publishing fee: 200
      • sheet over 15: 10

    Annuities (inventions):

    Year

    1 - 2

    3

    4

    5

    6

    7

    8

    9-14

    15-25

    Fees

    300

    400

    500

    600

    700

    800

    900

    2100

    1500

    Annuities (utility models):

    Year

    1 - 2

    3

    4

    5

    6

    7

    8

    9-10

    Fees

    300

    400

    500

    600

    700

    800

    900

    2100

    Semiconductor Topographies:

    • Filing application: 800
    • Filing request for term extension (maximum 6 months): 400
    • Grant fee: USD 100
    • Publishing fee: 200
      • sheet over 15: 10

    The duration period is 10 years without further extension and/or restoration.

    Copyright:

    Registration fees (including publication fees): approx. 64 for an individual applicant and approx. 180 for legal entity.  

    Designations of origin and geographical indications:

    • Filing application: 1200
    • Filing request for term extension (maximum 6 months): 400
    • Grant fee: USD 100
    • Renewal fee 4000

    Plant varieties:

    Filing application, basic total fee: 1317

    Expertise fees are paid additionally

    Annuities (patents for plant varieties):

    Year

    1

    2

    3

    4

    5

    6

    7

    8

    9

    10 and each next year

    Fees

    400

    450

    550

    650

    800

    950

    1100

    1300

    1600

    1900

    Annuities (certificates for plant varieties):

    Year

    1 -5

    6-10

    11-15

    16  and each next year

    Fees

    350

    900

    2000

    2500

  9. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

    Patents and utility models: the grace period is 12 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

    Trademarks: the grace period for renewal is 6 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

    Industrial designs: the grace period for renewal is 6 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

    Plant varieties: the grace period for the renewal is 12 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

    Geographical indications and appellations of origin: the grace period for the renewal is 6 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

  10. What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?

    The assignment deed shall be concluded in written form. With regards to registrable IP objects, the assignment shall be registered with relevant state authority.

    Bibliography in the assignment regarding registrable intellectual property objects and details of their owners, should be in compliance with the State Register data. In case of signature of the document by person according to Power of Attorney or authorized representative, a document which confirms an empowerment is required.

    Additionally, original Power of Attorney signed by the assignee is required for non-residents of Ukraine.

    Alterations in documents such as assignment deed and the PoA are not acceptable.
    In case of copyright assignment, assignment registration is required with regard to registered copyrighted objects. Otherwise, assignment registration of copyrighted object is voluntary.

    The assignment of a trade name, designation of origin, geographical indication, is only possible within the framework of assignment of business as a whole or part of the business that is linked to the use of the subject trade name, designation, indication.

  11. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    According to the civil code of Ukraine the rights are considered transferred from the date of assignment registration with relevant authority. This requirement applies with regard to all registrable IP objects (included registered copyrighted works).

    If the assignment is not registered, the assignee does not become an official owner of the patent/certificate and cannot dispose of acquired rights for patent/certificate.

  12. What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?

    The issue of license to use intellectual property rights is conducted on the basis of license agreement. The license agreement should be concluded in written form and should contain essential conditions such as scope of rights, term of license, territory, type of license, payment conditions etc. The license can be an exclusive, non-exclusive or individual.

    As regards trademark licenses, its essential conditions should contain obligation to control the quality of the goods / services produced by the licensee (i.e. the quality shall correspond the quality of the licensor’s goods / services).

    The trade name can be licensed within the framework of franchising agreement or in certain cases, within the framework of a complex licensing of intellectual property rights.

  13. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    License registration is voluntary and can be performed if the parties to the license agreement wish so.

    Under Ukrainian legislation, a license becomes effective when it is signed by the parties.

    Failing to register a license may lead to the following implications:

    • unfair acts and misleading of the counterparty by conclusion of two or more license agreements (both non-exclusive and exclusive license agreements);
    • conducting activities on the same territory by several business entities with the use of the similar license.

    The registration of a license is possible with regard to registrable intellectual property objects such as trademarks, works of copyright, inventions and utility models, industrial designs, semiconductor topographies, and plant varieties.

  14. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

    Non-exclusive and exclusive licensees enjoy the same rights in case of infringement action initiated by the licensor. In both cases the terms of the license agreement should be regarded.

    Considering that the exclusive license is issued to one licensee only with no right to use the licensed IP object by the rights owner within the licensed scope of rights, the exclusive license agreement often grants the licensee the authority to take legal actions against the infringement of intellectual property rights, with or without assistance of the rights owner, subject to conditions of the license agreement.

  15. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

    Illegal use of intellectual property can be considered as a crime if it causes damages no less than minimum amount prescribed by the criminal laws. For example, violation of copyright or the rights to invention shall be punishable by a fine up to equivalent of UAH 51000, or imprisonment for a term up to six years, with or without deprivation of the right to occupy certain positions or engage in certain activities for a term up to three years; illegal use of a trademark shall be punishable by a fine up to equivalent of UAH 255000 with or without deprivation of the right to occupy certain positions or engage in certain activities for a term up to three years.

    The goods made with unauthorized use of intellectual property objects, are subjects to confiscation.

    A criminal prosecution can be pursued on the ground of a claim of an intellectual property owner and in certain cases at the initiative of the law-enforcement bodies.

  16. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

    Ukrainian legislation prescribes the following options of enforcement of intellectual property rights: civil court proceedings, administrative and criminal proceedings, protection of rights on the ground of unfair competition legislation, alternative dispute resolution. Additionally, with respect to copyright and related rights the unit of state intellectual property inspectors acts on the matters of copyright enforcement as regards distribution, storage, transportation, and circulation of specimens of audiovisual works, computer software and databases.

  17. What is the length and cost of such procedures?

    The approximate timeframe for the court proceeding (at the first instance) is approx. 10 months for the criminal and civil proceedings, 3-6 months for the administrative proceedings and proceeding based on breach of unfair competition laws.

    The court fees for filing the civil lawsuit depend on the nature and amount of claims as well as jurisdiction (general jurisdiction court or commercial court). In case of monetary claims, the state fees amount to 1,5 percent from the claimed amount.

    In addition to the court fees, the lawyers’ fees and agent’s fees (such as judicial examinations authorities’ fees, notary, translators’ fees and other agent’s fees) may apply.

    In case of administrative or criminal proceedings and proceeding based on the ground of unfair competition legislation, there are no official fees for their initiating.

  18. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

    Depending whether the parties are legal entities or individuals, a claim is raised before the general jurisdiction courts or economic courts.

    The civil court action is initiated upon submitting of the claim to the court, by any person whose rights have been infringed.

    The administrative and criminal proceeding can be initiated on the ground of the complaint filed by the person or on the ground of investigation of the enforcement authorities.

    The format of the trial is oral and public.

    The average timeframe of the civil court proceeding at the first instance is up to 10 months. The average timeframe of the administrative proceeding at the court, is up to 6 months, criminal proceeding at the court – up to 10 months. The average timeframe of appeal (and second appeal) proceeding is 6 months.

    The judgment is being declared during the court hearing (with the full text of the court decision to be prepared and signed afterwards, in average within 10 working days after the judgment is rendered). The courts of second appeal may render the judgment within the framework of written proceeding and then provide the parties with full text of the judgment.

    The judgment can be enforced, and the relief be awarded by the losing party on voluntary basis. Also, the winning party may apply to the state bailiff service that controls the compulsory judgment enforcement, in certain cases – with assistance of the fiscal authorities, bank institutions and other authorities. Request for compulsory execution of judgment may be filed within three years after the judgment has come in force.

    Appeal (and second appeal) can be filed on the ground of infringement of material and/or procedural law as well as on the ground of wrong estimation of merits of the case.

  19. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?

    a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?

    There are no technical judges or judges with technical experience. The court appoints judicial experts that provide their opinions on matters of technical and other specific nature.

    b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

    The plaintiff is entitled to request preliminary injunctions before commencement of the court proceedings, if there is a risk that the evidence may not be preserved or may be hidden. In the court proceedings, the parties are entitled to provide evidence in support of their claims or defense statements. Additionally, the court may request evidence from any person or authority as well as appoint discovery of evidence in or out of the court.

  20. How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

    The parties to the proceeding are entitled to scrutinize and raise objections against evidence of each other. Then, all evidence is examined by the court. Examination of experts is available. In general jurisdiction court, examination of witnesses is also possible. Cross-examination of witnesses is not available; parties question witnesses one by one.

  21. What customs procedures are available to stop the import and/or export of infringing goods?

    The control of the import and/or export of goods with unauthorized use of intellectual property is conducted by means of the Customs registry of intellectual property objects (hereafter the Customs Registry). Upon entry of intellectual property object in the Customs Registry, the customs control imports and exports of the goods with the use of such object. Any suspected goods are suspended with notification of the rights owner thereof. The rights owner is entitled to take legal actions in case of unauthorized imports and / or exports such as destruction of the shipments at the border, civil court action and others.

  22. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

    There are no mandatory non-court enforcement options or dispute resolution mechanisms.

  23. What options are available to settle intellectual property disputes in your jurisdiction?

    Above all, intellectual property disputes can be settled on an amicable basis or in any court having jurisdiction thereof. Besides the state courts, the parties may apply to arbitration courts as well as International commercial arbitration courts. The mediation procedure as a means of dispute settlement may also be applied by the parties (however, the mediation practice is not commonly applied in Ukraine).

  24. What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?

    Unless otherwise provided by the law, the burden of proof to establish infringement rests with the claimant.

    For instance, the claimant should establish, regarding:

    • Copyright: that infringing work reproduces the prior work or constituent original elements of the prior work;
    • Industrial design: that litigious product reproduces the combination of substantial features according to figures, listed in the State register;
    • Trademark: that the litigious sign is identical or similar to the prior trademark, designates identical or similar products, other requirements may apply as prescribed by the laws;
    • Invention / utility model: that the litigious product is manufactured with the use of a patented invention/utility model and / or applying such a product (every feature of independent claim or its equivalent must be used), offering it for, selling, import, and other introducing it on the market, or storage of such a product with the purposes previously specified; or applying the process protected by the patent, or offering its applying within the territory of Ukraine.

    Pursuant to procedural rules, infringement can be established by any means.
    However, the following means mainly apply for establishing the fact of infringement:

    • interim injunctions aimed to preserve the evidence of infringement and / or withholding infringing products;
    • customs withholding the infringing products at the border, until a court renders final decision;
    • investigation reports survey;
    • witness statements;
    • expert reports appointed by the judge and others.
  25. What defences to infringement are available?

    The defences to infringement may include:

    • the expiration of the limitation period;
    • the absence of infringed rights or legitimate interest of the claimant;
    • the right to prior use;
    • the non-commercial /scientific / research use of IPR object, proof that the use of the IPR object falls within other exceptions and/or limitations prescribed by the law;
    • proof that alleged activities do not constitute infringement;
    • a defence of intellectual property rights invalidity can be raised by filing the counterclaim;
    • use under force majeure circumstances, subject to notification of the patent owner as soon as it becomes possible and subject to later payment of remuneration for the use of a patent;
    • a parallel claim for compulsory licensing; etc.
  26. Who can challenge each of the intellectual property rights described in questions 1-3?

    Intellectual property rights can be challenged by any third party (subject to procedures as prescribed by the relevant laws).

    In case the intellectual property rights are challenged at the courts, the plaintiff has to prove that his rights and / or legal interests are being infringed by existence of the disputed intellectual property object.

  27. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

    Intellectual property rights to all registrable intellectual property objects can be challenged after their registration, during the subsistence of the right, by any interested party (subject to requirements as prescribed by relevant laws).

    Intellectual property rights to trademarks, plant varieties, geographical indications and designations of origin may be challenged prior to registration, by any interested party by means of filing the opposition.

    Intellectual property rights to inventions, utility models can be challenged by filing observations by any interested persons (such observations may be considered by the examination authority although procedure of their mandatory consideration is not prescribed).

    Intellectual property rights to non-registrable intellectual property objects can be challenged during the subsistence of the right.

  28. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

    Any intellectual property object can be challenged after its registration at the courts.

    Grounds:

    Inventions: a patent (utility model) may be invalidated if it does not meet patentability conditions (industrial applicability, novelty and inventive step for inventions; industrial applicability, and novelty for utility models); if an application is filed with infringement of rights of third parties; in case of presence in claims of features that were absent in filed application; in case of filing an application abroad by Ukrainian applicant before filing it to UA PTO and obtaining a consent.

    Trademarks: a trademark certificate may be invalidated on absolute and relative grounds (if it does not meet protectability requirements); in case of presence of mark elements or goods/services that were absent in filed application; if an application is filed with infringement of rights of third parties;

    Industrial designs: a design may be invalidated if it does not meet the novelty requirement; in case of presence of a set of essential features that were absent in filed application; if an application is filed with infringement of rights of third parties;

    Semiconductor topographies: a topography may be invalidated if it is not original; if an application is filed with infringement of rights of third parties; in case of filing an application abroad by Ukrainian applicant before filing it within UA PTO informing about intention regarding filing abroad.

    Geographical indications and designations of origin can be challenged on the following grounds: it is false or misleading; the fulfillment of all registrability requirements is not duly proved (or does not correspond to the actual facts); is a name of a plant or breed variety and therefore can be misleading for the consumers; it is identical or confusingly similar to trademark protected in Ukraine.

    Plant varieties: may be invalidated in case of absence at the filing date of variety distinctiveness, lack of novelty, lack of homogeneity or stability; grant of intellectual property rights to the person not entitled to such ownership, based on the laws (unless the rights are being further assigned to the appropriate person);

    Copyright: intellectual property rights to a copyrighted work can be challenged on the ground of infringement of rights of the third parties in creation, registration, exploitation of copyrighted work.

  29. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?

    Inventions and utility models: The owner may file a declaration within UA PTO for full or partial relief his patent rights. This procedure is not allowed without a notification of the licensee of registered license agreement as well as in case of seizing the property containing patent rights because of debts. If an invention (utility model) is not (or insufficiently) used within 3 years any person who is ready and wishes to use an invention (utility model) may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason. The owner of earlier patent must grant the permission (license) to use an invention (utility model) to the owner of later patent, provided that later patent is intended for other purpose or has significant technical and economic advantages when later patent may not be used without infringement of rights of the owner of earlier patent.

    Trademarks: The owner may file a declaration within UA PTO for full or partial relief his trademark rights. The certificate may be terminated by the court if a mark becomes commonly used for goods and services of a certain type after the filing date of application. The certificate may be fully or partially terminated by the court if a mark is not used in Ukraine with respect to all (or part of) goods and services listed in the certificate within three years without a valid reason.

    Industrial designs: The owner may file a declaration within UA PTO for full or partial relief his design rights. If a design is not (or insufficiently) used within 3 years any person who is ready and wishes to use a design may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason. The owner of earlier design must grant the permission (license) to use a design to the owner of later design, provided that later a design is intended for other purpose or has significant technical and economic advantages when later design may not be used without infringement of rights of the owner of earlier design.

    Semiconductor topographies: If a topography is not used within 3 years any person who is ready and wishes to use a topography may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason.

    Plant varieties: If a variety is not used within 3 years any person who is ready and wishes to use a variety may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason. The owner may file a declaration within the competent authority for relief his economic rights. This procedure is not allowed without a consent of the licensee. In case of relief the owner must inform an author as he has the preference to obtain these rights.

    Copyright: the effect of intellectual property rights to copyrighted works can only be limited by permitted use cases as prescribed by the laws (i.e. exceptions and limitations).

    It is also possible to request the prior use rights by filing the claim to the court for inventions, utility models, industrial designs, trademarks.

  30. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?

    Remedies for infringement of each of the intellectual property rights may include:

    • damages (in case of copyright infringement payment of compensation is possible as alternative to damages);
    • prohibition to conduct certain actions in future (prohibition of further unauthorized use of intellectual property object);
    • confiscation and destruction of infringing products;
    • other actions upon request of the plaintiff.
  31. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

    The official fees for filing the suit, depend on the type of the court (for example, administrative court, general jurisdiction court, commercial court). Amount of official fees depends on amount of claims, on type of the claims (i.e. monetary or non-monetary) and on the person of plaintiff (i.e., natural or legal person).

    Costs recovery including recovery of official fees, recovery (full or partial) of the lawyers’ fees, recovery of other expenses such as experts’ fees etc., is possible for the winning party.