Harmonization of IP Legislation with European Standards: What’s New?
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On the way towards integration with European Union and accession to the Single European Space, Ukraine has accepted obligations on the harmonization of national legislation and its formalization with European standards. An important part of Ukraine’s integration into the global economic system is improving the national IP protection system. This mostly concerns improving national IP legislation with the aim of raising standards of protection and enforcement of IP rights. Therefore, state policy in the field of protection and enforcement of IP rights will progress to a new level and should be based on principles of legality and transparency.
The year 2015 saw a range of draft laws in the field of IP introduced by 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 improving the regulatory and legal framework, elaborating 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 reasons for including Ukraine in the 301 Report was its 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 deal with industrial property and copyright protection issues.
The maintenance of an electronic database of pending applications to the trademarks was long awaited news by IP practitioners and trademark owners. Article 8 of the On Protection of the Rights to Marks for Goods and Services Act of Ukraine stipulated that any person had the right to review the materials of a trademark application after establishing the date of the application’s filing. 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 trademark applications. Thus, the individual may only conduct a search by ordering such a paid service through Ukrainian Intellectual Property Institute (Ukrpatent). After approval of the respective Order any person has the possibility to study the following information about a trademark application: 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 trademark applications was a rather positive innovation which aimed 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. All decisions of the Appeal Chamber issued after 23 September 2011 are now published on the SIPS web-site.
Notably, SIPS gave special attention in 2015 to issues on combating 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, developed certain amendments to the On Protection of the Rights to Industrial Designs Act of Ukraine that are expected to be introduced in the near future. The aim of the amendments is to develop an additional mechanism for preventing the grant of exclusive rights to industrial designs, which do not comply with the conditions for obtaining legal protection, or for preventing the granting of those rights to unfair applicants through the introduction of a procedure of submission of third-party objections to the granting of an industrial design patent.
The above-mentioned Draft Act stipulated the following innovations:
— non-registered industrial designs can obtain legal protection. This means that a non-registered industrial design will obtain 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 a non-registered industrial design will have the right to prohibit its use within such period;
— the additional patentability criteria — “individual character” of the industrial design is established. It means that the general impression, which an industrial design produces on the informed user, shall differ from the impression, which another design produces on the same user;
— the possibility of filing a grounded 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 Act;
— the possibility of appeal against the decision of the Ukrainian Patent Office by an individual who has filed a grounded objection against registration of the industrial design to the Appeal Chamber of SIPS;
— the Draft Act stipulated the provision regarding reimbursement of 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 an industrial design when the court found that the patent owner had 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 Act of Ukraine On Amendments to Certain Legislative Acts of Ukraine on Copyright and Related Rights Enforcement in the Internet developed by the Ministry of Economic Development and Trade of Ukraine is aimed at ensuring the implementation of minimum standards of copyright protection in the Internet. The above-mentioned Draft bill in the main incorporated the requirements of the Association Agreement between the EU and Ukraine as to the liability of providers, as well as the EU Information Society Directive and Electronic Commerce Directive.
It provides the following innovations:
— the possibility to make an inquiry to 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 removal of the offending content;
— the user 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 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 not providing the identifying information about the web-site owner which infringed and which placed the information, which infringed the copyright and/or related rights;
— the website owner shall renew access to the removed information in cases when the copyright owners within the stipulated period do not provide the documents confirming filing of the lawsuit for the protection of his copyrights;
— notaries will be entitled to ensure the protection of evidence in the Internet by drafting the corresponding minutes;
In summarizing, we can point out that the core directions of initiatives in the IP field last year dealt with the protection of copyright in the Internet, preventing patent trolling and improving legislation, regulating protection of rights to industrial designs as well as providing public access to the databases maintained by the Ukrainian Intellectual Property Institute. Furthermore, 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 primarily foresee the following innovations: the procedure on disclosure of evidence by court instances was amended; the list of interim relief was extended and a procedure on reimbursement of damages for infringement of IP rights was elaborated by SIPS. However, the above innovations are still at the stage of approval by the Ministry of Economic Development and Trade of Ukraine. We believe that this year will be more fruitful for the IP industry and a range of draft laws will be adopted by the Ukrainian Parliament.