Publications > Recent IP activities in Ukraine

Some recent IP activities in Ukraine
An outside-in perspective from the UK
 
As a UK national and IP practitioner of Ukrainian descent, I take particular interest in following developments in Ukrainian political life and economic growth, and in particular of its IP landscape. This is a country where just 18 years ago Intellectual Property Rights (IPRs) just simply did not exist. Now it exports globally, and businesses from around the world seek to protect their interests through Ukrainian IPRs.
 
Undoubtedly, from an IP perspective, the most significant recent development in Ukraine is the accession to the World Trade Organisation (WTO) on May 16, 2008 with its incumbent TRIPS obligations. IPR enforcement as a result becomes an even more serious imperative. In April 2009 Ukraine adopted the Locarno Classification for Industrial designs. The 2007 Annual Report of the State Department of Intellectual Property (SDIP) of the Government of Ukraine provides us with the most up-to-date statistics for IP filings. It also gives, somewhat unexpectedly, news on the IPR implications of the decision made in Cardiff, Wales, in April 2007 that Ukraine will become a joint host nation along with Poland for the 2012 UEFA European Football Championship final tournament. For a football-loving country that could not assert its national identity under the Soviet Union, to be able to host these championships under the Ukrainian flag has a symbolic significance that has gripped the nation from the man in the street to the highest level of Government.  

Accession to the WTO and IP enforcement

 


May 16, 2008 marked the end of 15 years of negotiations with the WTO resulting in profound changes in and liberalisation of Ukraine’s trade regime. On May 31 legislative amendments to IP laws were enacted to help bring the latter into line with all of TRIPS requirements (although this is still a work in progress). Thus, for example, both the Civil Code and the Criminal Code introduced new measures, in compliance with Articles 46 and 59 of TRIPS, for the destruction of counterfeit products as well as plant equipment and other materials used for their manufacture. Also, the Customs Service of Ukraine now has powers to act ex officio in seizing suspected fakes crossing its borders.  

 Counterfeits affect all industries. A reported example from the agro-chemical industry is the 500 tonnes of illegal and potentially highly dangerous counterfeit pesticides for crop treatment, coming from the Altai region in Russia, which were seized at the port of Odessa in late 2006. And in early 2008 it was reported that manufacturers in China were exporting via Odessa similar toxic products labelled as ‘cement’.
 
Not that real cement producers in Ukraine have been unaffected by counterfeits.  At a press conference in July 2009, the largest producers of cement in Ukraine outlined plans to help stem the growing trade in counterfeits. There being a downturn in large construction projects - where cement is delivered in large quantities unpackaged – opportunists have seen a new market in counterfeiting brands of packaged cement for smaller building projects.
 
Turning to anti-piracy enforcement, although illegal domestic manufacture of products from the copyright industry, including physical copies of recorded music, films, games and software, has in recent years diminished, illegal distribution is still rife, within and across the borders. Known open air and street market piracy, for example in Kyiv, Donetsk and Lviv, are reflective of a larger scale ongoing problem that has resulted in Ukraine being currently on the United States Trade Representative (USTR) 2009 Special 301 piracy watch list. Losses to rights holders for business software alone has been estimated at around US $294 million for the 2007-8 period. Official quality stamp or hologram controls have been introduced to make inroads into tackling the problem. However, digital piracy (a world-wide problem, admittedly) has yet to be seriously addressed. For the music industry, progress has been made with the establishment in 2008 of a Government music industry working group to develop solutions.
  
Acquiring IPR

 

Fee reduction

Apart from the effect on IPR enforcement, accession to the WTO has led immediately to the reduction of IP filing fees for non-Ukrainian citizens to comply with the equal-treatment principles of Articles 3 and 4 of TRIPS. Previously there had been a double tariff system with foreigners generally having to pay more than nationals.
 


Filing trends

An analysis of the statistics issued by the SDIP reveal that trade mark filing under the national procedure, both from home and abroad, is on the increase, totalling just over 23,700 in 2007. For foreign companies, class 5 protection (pharmaceuticals etc.) was the most frequent sought, followed by classes 3, 35, 29, 30 and 32, the biggest direct filers being USA, Russia, UK, India, Germany and Switzerland.

Of the countries that sought protection under the Madrid Agreement, Germany, with its 1930 filings (of a total of 9520) was the greatest user, followed by France, Italy, Russia and China. This correlates with sources from WIPO that show the greatest users of the system that year included German companies such as Henkel, Lidl, BMW Boehringer Ingelheim and Beiersdorf.
 

Football IPR

 
Finally, legislative enactments have now been put into place to protect UEFA IPR, and wheels set in motion to provide for their effective enforcement (something similar followed the successful bid of London to host the 2012 Olympic Games, leading to the London Olympics Act). The only cloud looming over the national euphoria of having been selected to co-host the event is the challenge, given the economic climate, of being prepared on time with the necessary infrastructure in the four chosen cities of Kyiv, Kharkiv, Donetsk and Lviv..

If this building work matches the Ukrainian population’s passion for football, and the speed in which it has built its IP infrastructure, the challenge should be met.
 

This article first appeared in the September 2009 Eastern Europe Supplement of Trademark World, Patent World, Copyright World