MIKHAILYUK, SOROKOLAT & PARTNERS Patent and Trademark Attorneys ISO 9001 CERTIFIED
MIKHAILYUK, SOROKOLAT & PARTNERS Patent and Trademark Attorneys
ISO 9001 CERTIFIED


CUSTOM RECORDAL OF IP RIGHTS IN UKRAINE

The owner of an intellectual property object or a person acting on behalf of the owner within the scope of granted powers (e.g. a licensee) is entitled to file an application with the State Fiscal Service of Ukraine requesting protection of the IP rights through recordation of the corresponding data with the Customs register.

The following intellectual property objects may be recorded with the Customs register of Ukraine:

  • trademarks;
  • industrial designs;
  • utility models;
  • inventions;
  • plant varieties;
  • objects of copyright and neighboring rights.

The procedure of recordation of IP objects with the customs registry, including the application form, the list of required information and documents to be attached to the application, procedure of filing and processing of the request as well as maintenance of the register is determined by the Cabinet of Ministers of Ukraine. It is worth mentioning that customs recordal in Ukraine is free of official charge and the requirement to provide a monetary deposit/guarantee has been canceled.

The minimum list of documents to be attached to the application for the customs registration includes:

  • a document confirming the validity of the intellectual property object (e.g. an extract from the corresponding State registry);
  • a detailed description of the intellectual property object and original goods;
  • samples or images of the original goods, in case there is information about infringement description and samples or images of infringing goods;
  • a Power of Attorney (in case the application is filed by a representative).

Depending on the circumstances of a case additional documents and materials may be provided.

In accordance with the current procedure a request for customs registration is subject to consideration within 30 working days as of the filing thereof. The object may be recorded with the Customs register for a term of 6 months or 1 year (at the owners discretion) with the possibility of further extension for an unlimited number of times within the validity term of the rights on the corresponding intellectual property object.

In order to assist in protection of intellectual property rights during the customs control of goods crossing the border, the information on the intellectual property objects recorded with the Customs register is forwarded to all customs authorities of Ukraine. It is worth mentioning that in accordance with the current legislation measures connected with suspension of customs processing are applied in respect of goods that are imported/exported for free circulation with the exception of:

  1. personal belongings;
  2. goods containing intellectual property objects protected under the law which are moved across the border for personal use and not for manufacturing or other business activities, wherein the total cost/weight does not exceed the limits stipulated by part 1 of art. 374 of the Customs Code of Ukraine;
  3. provisions.

If, based on the Customs register data, it is determined that the goods being under customs control and processing may infringe IP rights, their customs processing is suspended for the term of 10 working days which, if necessary, may be extended by additional 10 working days (in respect of perishable goods the term is suspended for 3 working days without the possibility of extension), and the goods are subject to warehousing at the customs authority.

On the date of issuance of a decision to suspend customs processing of goods, the customs authority informs the right owner about the fact of presenting goods to customs processing by means of electronic communication and/or fax and informs the declarant about the reasons of suspension with indication of contact information of the right owner. Later on, the right owner may inform the customs authority about absence of infringement or initiate actions on rights protections. In case of taking measures for intellectual property rights protection the matter of IPR infringement is settled in the scope of further jurisdictional procedures if infringement is not confirmed, the right owner is obliged to cover the expenses associated with storage of suspended goods and losses to the owner/declarant/recipient of goods.

It is worth mentioning that under the current practice transfer of original goods (previously put into civil circulation by the right owner or other person with the right owners consent in any country) by an unauthorized importer (so called parallel/grey imports) is not regarded as infringement of intellectual property rights in case the right owner does not have enough grounds to prohibit such use of a trademark in view of further distribution of goods e.g. the legislation stipulates change or deterioration of the condition of a product after its input into civil circulation by the right owner as one of the above-mentioned grounds.

In case you have any questions regarding Custom recordal of IP Objects in Ukraine please do not hesitate to contact us.

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