Intellectual Property Rights in Ukraine
General Note on IP Rights in Ukraine
State AuthoritiesIntellectual Property Rights in Ukraine
Patents for Inventions and Utility Models
General Note on IP Rights in Ukraine
According to the Ukrainian intellectual property legislation there are the following intellectual property objects:
- copyright and neighboring rights;
- trademarks and service marks;
- trade names; inventions;
- utility models;
- industrial designs;
- trade secrets;
- plant and animal varieties;
- appellations of origin;
- layouts of integrated circuits;
- technical improvements.
The above mentioned intellectual property rights are regulated and protected by the Ukrainian Legislation as well as by International norms which are implemented into the national legislation.
Besides Ukraine is a party to the numerous treaties, conventions and multinational agreements on intellectual property matters. Moreover, Ukraine became the 152 nd member of the World Trade Organization (“WTO”) on May 16, 2008. Thus, Ukraine is now subject to the requirements of the Agreement of the World Trade Organization on Trade Related Aspects of Intellectual Property Rights (the TRIPS Agreement).
List of Ukrainian legislation (main laws) and International Legislation are stipulated in the table below.
The state authority, which is in charge for Intellectual Property Matters in Ukraine, is the State Intellectual Property Service (formerly known as the State Intellectual Property Department of the Ministry of Education and Science of Ukraine) (SIPS). The SIPS is responsible for the overall control over carrying out the registration, maintaining, transferring and termination of the industrial property rights and copyright.
While setting up a business in Ukraine it is important to know, that Ukraine is a “first to file” rather than a “first to use” jurisdiction. As a result, in order to protect those industrial property rights, which are subject to mandatory registration in Ukraine, it is important to file a formal application with the SIPS for the registration of the relevant object of industrial property. From the other side, it is also important to ensure that intellectual property objects do not infringe on existing intellectual property rights which have been previously obtained and/or registered in Ukraine.
A trademark is a designation in a form of a logo, a word, a term, an image, personal name, company name or a combination thereof, which identifies a company, its goods, and/or its services, and which is registered with the SIPS. It is of a very high importance to note that a trademark is a subject to mandatory registration in Ukraine. Only registered designations are considered to be trademarks and are protected by Law. This procedure helps to avoid a co-existing of similar or identical trademarks on the same or related markets, and, as a result, provides guarantee of a proper protection to a trademark holder.
The process of a trademark registration is carried out by the SIPS and takes about 18 months. During this period pending trademarks enjoy temporary protection until the relevant registration certificates are granted. Once trademark protection has been obtained, the owner of a trademark has an exclusive right to use the respective trademark. Trademark protection is valid for a ten year period and can then be extended for another ten years.
As a member of the Madrid Union, Ukraine honors international trademark registrations extended to the territory of Ukraine, under both the Madrid Agreement and the Madrid Protocol. Such procedure is carried out by a special department of the SIPS. International trademark registrations extended to the territory of Ukraine enjoy the same protection as national trademarks.
Foreigners have the same rights for trademarks as domestic citizens and companies. However, applicant who has no registered establishment or representative office in Ukraine must act through a patent attorney, a person who has a special status in Intellectual Property field according to the Ukrainian Legislation.
Patents for Inventions and Utility Models
Patents are granted for inventions which are new, involve an inventive step, and are industrially applicable. Ukraine follows the principle of universal novelty in granting patents. This means that an invention must be completely original worldwide within the relevant area of science and technology. Inventions are required to meet each of the following requirements, in order to be granted patent protection:
- Novelty;
- Non-obviousness;
- Utility.
Inventions and utility models are also subjects to mandatory registration in Ukraine. The patent prosecution is carried out by the SIPS, where applied invention or utility model is examined on the compliance with the Law requirements.
Patents are granted to inventions for 20 years from the filing date. Patents for inventions in the area of medicine, pharmaceuticals, agrochemistry and related areas may be further extended for a maximum period of five years.
The term of patent validity is conditional upon the payment of annual maintenance fees.
NB: As it has already been mentioned for trademarks, foreign companies and individual persons have equal rights for patent protection along with the Ukrainian residents except one point – applicant who has no registered establishment or representative office in Ukraine must act through a patent attorney.
An Industrial Designs is a result of a creative activity of a human-being in the field of design, which can be presented in a form of a bottle, a label, a model, a form of a device etc. According to the Ukrainian legislation an Industrial Design aimed to satisfy aesthetic and ergonomics purposes, and that is the main difference between an Industrial Design and a Trademark, which mostly serves for the distinctive purposes. The essential features of an industrial design are a form, a color or its combination, configuration. It is worth being mentioned that industrial designs may have 2D or 3D form.
An Industrial design is a subject to mandatory registration in Ukraine. The process of registration is fast and easy; it is carried out by SIPS and takes from 6 to 8 months having only one stage of examination.
Upon successful registration an owner obtains a Patent for Industrial Design and has an exclusive right to use such design. The protection is granted only for 15 year period and cannot be renewed of prolonged.
The Copyright Law protects published, as well as unpublished, works of authorship. The works may be of a scientific, literary, or artistic nature. They are protected regardless of their volume, purpose or genre, as well as their scientific, literary, or artistic value.
The Copyright Law does not require fixation as a mandatory condition for copyright protection. It grants protection to any work of authorship, regardless of the manner of its expression. As a result, a protected work may exist in oral and/or written form.
The Copyright Law protects works of science, literature and arts (copyright) and grants protection to rights of performers, phonograms producers and broadcasting organizations (neighboring rights).
Copyright protection arises by virtue of the creation of a work of art without any registration requirements.
Copyright Law distinguishes between, and provides protection for, both the proprietary and the non-proprietary rights of the author. The non-proprietary rights in copyright are protected indefinitely. The proprietary rights in copyright are granted for the author’s lifetime, plus an additional 70-year period following his/her death.
The holders of IP rights have a possibility to protect their rights by means of entering protected IP objects into the Customs Register. According to the Ukrainian Legislation the objects of the customs registration are trademarks, industrial designs, copyright and neighboring rights.
By entering an IP object into the Customs Register the owners of IP right will have a possibility to monitor the movement of the goods, which contain their protected IP object, in and out the country.
If an IP object is recorded with the customs register the customs official must examine the goods, which contain such IP object, for correspondence to the information recorded with the Customs Register during each customs clearance.
The process of entering an IP object into the Customs Register is carried out by the State Customs Service of Ukraine and takes about 5 months. An IP object may be recorded with the Customs Register for 6 months/1 year. Upon the expiration of this period the registration may be prolonged for another 6 months/1 year.
All of the information included in this document is for informational purpose only, and may not reflect the most current legal developments, judgments, or settlements. This information isn’t offered as legal or any other advice on any particular matter. The Firm and the contributing authors expressly disclaim all liability to any person in respect of anything, and in respect of the consequences of anything, done or omitted to be done wholly or partly in reliance upon the whole or any part of the contents of this brochure. No client or other reader should act or refrain from acting on the basis of any matter contained in this document without first seeking the appropriate legal or other professional advice or the particular facts and circumstances.
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