Ukraine Declares ‘Zero Tolerance’ for Patent Trolling

On 21 July 2020, the Ukrainian parliament passed Draft Law No. 2258 “On Amendments to Certain Legislative Acts of Ukraine on Strengthening the Protection of Rights on Trademarks and Industrial Designs, as well as on Combating Patent Trolling” (hereinafter the “Law”) which introduced many changes that seek to further harmonize Ukrainian legislation with EU regulations, in particular with Directive 2008/95/EC relating to trademarks.

The term ‘trolling’ is rarely used in legislation. However, usage of this term in the new Law demonstrates Ukrainian lawmakers’ zero tolerance stance on patent and trademark abuse. The Law introduced plenty of changes, and below we have selected 7 most significant ones as follows:

  1. The validity of industrial design rights (appearance of the product such as a bottle, paper box or special design of accessories or appliances) shortened from 15 to 5 years. This period may be extended by another 5 years, but the total validity of these extensions may not exceed 25 years from the date of the first application.
  2. This Law permits the use of the industrial design for 3 years before its registration. This period begins on the day when the design becomes public, for instance, from the date of first public sale of a product outlined in the new design.
  3. If an industrial design is registered internationally, there is no need to obtain an additional certificate for its use in Ukraine. The same provision applies for trademarks.
  4. If another person uses your industrial design, it is possible to pay only 50% of the annual fee for maintaining industrial design rights.
  5. To prevent and combat patent trolling, the draft law provides for the possibility of cancelling the registration of an industrial design (a “post-grant opposition” mechanism) out of court. To do this one must pay a fee and submit a well-grounded application either during the validity period of the industrial design rights or after their termination. The Authorized Body shall consider the application within three months and make a decision which can be appealed in court.
  6. The Law introduced an opportunity of registering collective (joint) trademarks. This regulatory improvement allows business partners to determine the conditions of use of the TM at the stage of registration and proportionally distribute the costs among the co-owners of the trademark without the need to conclude a license agreement.
  7. It is now possible to register a trademark of another manufacturer for which the certificate has been terminated without the consent of the former owner two years after the expiry of the certificate in question (previously one had to wait three years). Moreover, there is a list of new exemptions when the use of another entity’s trademark does not violate the owner’s rights. For example, comparative advertising of another’s trademark with one’s own is now allowed in order to distinguish products or services and to emphasize differences between them.

Nevertheless, this Law has its imperfections, namely a misalignment with the latest provisions of EU Directive 2015/2436/EC relating to trademarks as the latter repealed Directive 2008/95/EC and provided further regulations such as a public policy filter for trademarks which are excluded from registration for the sake of protecting traditional specialities guaranteed by the state.

This Law has been warmly welcomed by the business community and IP practitioners as it brings Ukraine’s IP sector to a higher and more sophisticated level which better corresponds to the economic activity of Ukrainians and their country’s vibrant market development.

Considering the fast pace of legislative changes, businesses are urged to seek professional advice before registering any IP rights as costs for fixing and restructuring are often greater than a linear application process under professional supervision.

If you have any questions about risks, opportunities and compliance with the requirements of the new Law, please contact Taras Tertychnyi, Associate Partner, by email  or by phone +380 44 277 2447.