Strengthening Intellectual Property Protection in Ukraine

The Law of Ukraine "On Amendments to Certain Legislative Acts to Strengthen the Protection of Intellectual Property Rights" (the Law) became effective on 15 April 2023. The Law aims to harmonize Ukraine's legal framework with the one of the European Union (EU) by implementing provisions of the EU-Ukraine Association Agreement and the EU Directive on the Enforcement of intellectual property rights (Directive 2004/48/EC). By introducing the amendments, Ukraine sought to bolster the safeguarding of intellectual property rights (IPR) and enhance its commitment to international standards. 

A crucial aspect of the Law revolves around the remedies for IPR infringement. Notably, it now mandates that the infringer must bear all expenses associated with removing counterfeit goods from the market and destroying the materials and tools used in production thereof. The provision aims to alleviate the financial burden on rightholders and discourage counterfeiting activities. 

Furthermore, the Law introduces a new type of remedy in the form of a one-time monetary reimbursement. If the infringement is unintentional and imposing other remedies would be disproportionate to the damages caused, the defendant may request this option. The court will have the authority to determine the implementation and amount of the one-time reimbursement, providing a fair and flexible approach to addressing unintentional infringements. 

In addition, the Law empowers the court to order the publication or dissemination of information regarding IPR infringement and related court decisions, with the infringer being responsible for covering the expenses. This measure aims to enhance transparency and raise public awareness about the consequences of IPR violations. 

Regarding reimbursement for losses resulting from IPR infringement, the Law provides for compensation in the form of a lump sum. The minimum amount of the lump sum should not be lower than the compensation that would have been paid for obtaining permission (license) to use the respective IPR. Moreover, the Law recognizes the importance of non-material harm by allowing for the awarding of moral damages as compensation. 

The Law encompasses various additional amendments that further strengthen IP protection in Ukraine. Notably, to enhance evidence collection in infringement cases, the court now has the authority to order a suspected infringer or any other relevant party to provide information about the origin of goods and distribution networks. This provision serves as a valuable tool for rightsholders to trace the entire chain of counterfeit manufacturing and distribution, enabling more effective enforcement actions. 

Additionally, the Law addresses the use of 'Ukraine' and international country codes in trademarks. The authorization to use the name 'Ukraine' or the Ukrainian coat of arms in trademarks is now within the competence of the special Collegial Body established by the Ukrainian Intellectual Property Office.  

With the implementation of these comprehensive amendments, Ukraine has made significant strides in fulfilling its IP-related obligations outlined in the EU-Ukraine Association Agreement. The Law demonstrates Ukraine's commitment to strengthening intellectual property protection and aligning its legal framework with EU standards. By enhancing remedies, reimbursement mechanisms, and evidence collection, Ukraine aims to encourage investment and create a robust and supportive ecosystem for IPR holders. 

On 10 June 2023, the Parliament of Ukraine passed a new Law of Ukraine "On Consumer Protection" that, in particular, provides for the functioning of an information database on e‑commerce entities and creates a database of "verified sellers". This novelty will help combat online infringement of IP rights and quickly identify possible violators, as the database of sellers will display their names and official addresses. 

After more than a year of suspension, the World Intellectual Property Organization (WIPO) issued a decision stating that the WIPO Arbitration and Mediation Center would resume accepting new UA-DRP filings and considering domain disputes under the UA-DRP procedure as of 1 July 2023. The reinstatement of the UA-DRP proceedings is subject to procedural safeguards, primarily the option to extend deadlines under the UA Policy and Rules.

A significant milestone in Ukraine's journey towards closer integration into the EU Single Market has been reached with the signing on 5 July 2023 of a Memorandum of Understanding between the European Union Intellectual Property Office (EUIPO) and the Ukrainian National Office for Intellectual Property and Innovations (UANIPIO). This Memorandum marks the beginning of a partnership to strengthen Ukraine's IP system within the country's EU integration process. 

According to the new version of the Law of Ukraine "On Advertising", it is prohibited to place advertisements on websites that raise concerns about the observance of IPR. The list of the respective websites is also subject to inclusion in the WIPO's database. Thus, the Law seeks to facilitate the struggle against IP infringements and promote a more secure online environment. 

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