Provides advice on IPR protection, including information on the registration of patents and trademarks.
In 2020, Ukraine remained on the U.S. Trade Representative’s (USTR) Priority Watch List under the Special 301 review process. The designation is based on three long-standing issues: (1) the unfair and non-transparent administration of the system for collective copyright management organizations (CMOs) that are responsible for collecting and distributing royalties to right holders; (2) widespread use of unlicensed software by Ukrainian government agencies; and (3) failure to implement an effective means to combat widespread online copyright infringement. In 2017, the United States announced Ukraine’s partial suspension as a beneficiary country under the Generalized System of Preferences (GSP) due to Ukraine’s failure to provide adequate and effective protection of intellectual property rights. In 2019, the United States partially restored the suspended GSP benefits in recognition of Ukraine’s progress in reforming its CMO regime, including passage of a CMO law (No. 7466).
The Ukrainian Intellectual Property Institute (UkrPatent) examines and registers patent and trademark applications. On July 10, 2020, Ukraine’s President signed a law (No. 2255), which establishes a new intellectual property agency that would take over this role. It is expected that the new agency will be up and running by the end of 2021. Until it is operational, patent and trademark filings will continue to be reviewed by UkrPatent. On July 20, 2020, Ukraine’s Parliament passed a patent reform law (No. 2259), which looks to meet obligations under the EU-Ukraine Association Agreement, such as compliance with the European Patent Convention. Although the new patent law has not yet been implemented, representatives of the pharmaceutical industry have raised concerns that the law may restrict patentability for certain pharmaceuticals inventions, such as polymorphs and other compositions. In April 2020, the Ministry of Economy released for public comments draft rules on trademark registration, which would facilitate electronic filings with Ukrpatent, as well as comply with requirements under Singapore Trademark Law Treaty and Madrid Protocol. In June 2020, a series of copyright law bills were introduced into the Ukrainian Parliament, which look to meet obligations un the EU-Ukraine Association Agreement. Trade secret protection is available in Ukraine, and administrative enforcement has been conducted by Ukraine’s Anti-Monopoly Committee. Notably, in December 2019, the agency issued a civil fine against a company for misappropriating a rival company’s trade secrets in the form of customer contacts and pricing lists. Companies should be sure to implement appropriate security measures for their proprietary business information, including confidentiality and non-disclosure agreements, should they look to enforce such rights in Ukrainian courts.
The sale of counterfeit goods at physical markets remains an ongoing concern for trademark holders. USTR has identified 7th Kilometer Market in Odesa and Barabashova Market in Kharkiv as notorious markets engaged in the sale of counterfeit products. Most counterfeit goods are not produced in Ukraine but are instead imported and reportedly largely sourced from Turkey and China. Ukraine’s State Customs Service maintains a database of trademarks, which it references in order to seize infringing goods at the border. Companies should record their trademarks with Ukrainian Customs to secure such border enforcement. On June 9, 2020, Ukraine’s Ministry of Finance issued orders (No. 281 and No. 282), which look to improve Customs’ intellectual property border enforcement system, by allowing for online recordation of trademarks with Customs, and by developing an IT platform to enable electronic communications between brand-holders and customs officials.
Companies planning to do business in Ukraine should be aware that U.S. patent rights and U.S. trademark registrations do not confer rights in Ukraine. Protection for such U.S. intellectual property rights in Ukraine would need to be filed with UkrPatent.
In any foreign market companies should consider several general principles for effective protection of their IP. For background, please see Stopfakes.gov or contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov. for more resources.
The U.S. Commerce Department has positioned intellectual property attachés in several markets around the world. For Ukraine, please contact:
Dorian Mazurkevich, Regional Intellectual Property Attaché
U.S. Embassy, Kyiv