PETOŠEVIĆ

September 2020

Ukraine Amends Patent Law

Amendments to the Ukrainian Law on Protection of Rights to Inventions and Utility Models entered into force on August 16, 2020. The most important changes are explained below.

Utility Model and Patent Subject Matter

The amendments limit the utility model subject matter to devices and processes in any sphere of technology, excluding new uses of already known products or processes.

The amendments also limit the patent subject matter by excluding methods of treatment and diagnosis of humans and animals. However, substances or compositions used in methods of treatment or diagnosis are considered patentable subject matter.

The amended law specifically excludes the following from patent protection:

• human cloning methods;
• human germline genetic modification methods;
• use of human embryos for industrial or commercial purposes;
• processes of altering the genetic identity of animals that may cause their suffering without any significant medical benefit to humans or animals, as well as animals bred as a result of such processes;
• the human body at different stages of its formation and development, as well as the simple detection of one of its elements, in particular a gene sequence or its part;
• a product or process involving a plant or animal the use of which is limited to a particular plant variety or animal breed;
• a product or process relating to natural biological material which is not separated from its natural environment or which is not the product of a technical process.

Other non-patentable subject matter, such as computer programs and scientific theories, were introduced into the amended law from the related bylaws, but no substantial changes have been introduced.

Introduction of Pre-Grant and Post-Grant Oppositions

Under the previous version of the law, a patent could only be invalidated in court, and there was no legal ground for any input from third parties during the substantive examination stage (the examiner in charge was not obliged to consider or base any decisions on third party statements).

Under the amended law, it is possible to file a pre-grant opposition within six months from the application’s publication date. After the six-month period expires, it is still possible to file an observation concerning the patentability of an invention, without paying a fee and without a specific deadline. Both pre-grant opposition options will be further regulated by bylaws.

The amended law also introduced post-grant oppositions, which may be filed within nine months from the patent’s publication date.

Pre-grant oppositions are to be filed with the Intellectual Property Office. Post-grant oppositions are an administrative mechanism of invalidating a patent and will be considered by the IPO’s Board of Appeal.

New Rules for Supplementary Protection Certificates

The amendments introduce changes regarding supplementary protection certificates (SPCs), harmonizing Ukrainian legislation with that of the EU, according to the requirements set out in the EU-Ukraine Association Agreement. The validity term of a patent could previously be extended for the period of time that passed between the patent application filing date and the date of the marketing authorization; this period has now been reduced by five years. If the time period is less than five years, obtaining the SPC will not be possible.

SPCs are no longer limited to medicaments and animal and plant protection products, but can also be obtained for patents protecting active pharmaceutical ingredients of such products (or their combinations), as well as their production and use.

Products eligible for an SPC must have a valid marketing authorization in Ukraine, and will only be granted an SPC if the marketing authorization application in Ukraine was filed within a year from the first, original application abroad.

The deadline for applying for SPCs has also changed – it is now within six months from either the patent publication date or from the first marketing authorization date, whichever date is the latest. Under the previous law, the deadline was 6 months before 20 years from the patent filing date.

Non-Resident Rights

The amended law also extended the non-resident rights, according to the Patent Law Treaty of which Ukraine is a signatory. Non-residents now have the right to file a patent application, submit a copy of a priority application and pay the corresponding official fees. Nevertheless, such actions must be followed by the appointment of a representative (patent attorney), otherwise the application will lapse.

Reduced Grace Period

The grace period for novelty as well as for substantive examination requests has been reduced from one year to six months from the missed deadline.

In general, the changes are aimed at harmonizing the Ukrainian patent law with that of the EU. They also intend to limit unfair use and ‘evergreen patents’. It remains to be seen how the changes will be implemented in practice, while the accompanying bylaws and regulations are expected to bring more clarity.

By: Olga Kudoyar and Taras Manolov

For more information, please contact Olga Kudoyar or Taras Manolov at our Ukraine office.

Belarus Amends Law on Geographical Indications

The amended law on geographical indications entered into force in Belarus on August 29, 2020, revising the definition of a geographical indication and specifying the procedure for obtaining GI protection in more detail.

Under the amended law, a geographical indication is defined as a designation which identifies the goods as originating from a certain geographical area if the quality, reputation or other characteristics of such goods can be essentially attributed to their geographical origin.

Under the previous law, the definition of a geographical indication consisted of two parts – the ‘name of place of origin of goods’ (registered with the intellectual property office) and the ‘indicator of the origin of goods’ (not registered, but acquired protection through use). The new version of the law amends this somewhat confusing GI definition by excluding the term ‘indicator of the origin of goods’.

Legal protection of a GI is granted on the basis of its registration with the IPO. Applicants can be any natural and/or legal persons or associations of persons the establishment and activities of which do not contradict the laws of the state in which they are established, and which, according to these laws, are participants in civil law relations. The right to use a GI may be granted to several persons separately or jointly to designate goods they produced in a certain geographical area. GIs identifying goods as originating from a geographical area located in a foreign state can be registered in Belarus if they are registered as a GI in their country of origin.

Under the amended law, non-residents now must be represented by Belarusian patent and trademark attorneys when applying for a GI, unless otherwise provided for in international treaties. Under the previous law, the applicant could decide whether to apply personally or through a Belarusian attorney.

The amended law describes the procedure for obtaining GI protection in more detail. GI applications will go through the following stages:

• Preliminary examination (within three months from the date the IPO receives a confirmation of payment of the official fee, like in the previous law);
• Substantive examination (within one year from the date of the decision to accept the application for consideration; this term was not defined in the previous law).

The grounds for refusal remain the designation’s non-compliance with the established GI requirements or the designation’s ability to mislead consumers about the place of production (origin) of goods and/or their special properties, quality, reputation or other characteristics.

If the application is approved, the IPO will enter the GI into the State Register of Geographical Indications within one month after receiving the confirmation of the official fee payment, and it will also make an entry in the Register on granting the right to use the GI. A certificate on the right to use the GI will be issued within one month from the date the information is entered into the Register.

The certificates previously issued for the right to use a ‘name of place of origin of goods’ will continue to be valid and will gradually be replaced by certificates for the right to use a GI. The new certificates will be provided free of charge at the request of the right holder at the moment of extension of the validity term of the certificate or at any time before its expiration.

Prepared by: Anastasia Khioni

For more information, please contact belarus@petosevic.com.

Source: Belarusian legal information portal ILEX
 

Ukrainian Hosiery Manufacturer Fined for Unfair Competition

The Ukrainian Antimonopoly Committee has recently imposed a fine of approximately EUR 1,500 (USD 1,750) on the Ukrainian pantyhose manufacturer Anita Ko LLC for violating the Ukrainian competition protection legislation by using a confusingly similar packaging design as its competitor. Belarusian hosiery manufacturer Conte SPA JLLC initiated the proceedings, claiming that Anita Ko LLC designed the packaging for its legwear products as a copy of Conte’s packaging.

Anita Ko LLC was registered in Ukraine in 2016, while Conte SPA JLLC has been selling hosiery in Ukraine with the unique packaging under the Conte® trademark since 2014. Conte® products also have a STANDARD 100 by OEKO-TEX® label that identifies textiles that were tested for harmful substances. While the confusingly similar packaging also bore the STANDARD 100 by OEKO-TEX® label, there was no record of Anita Ko LLC in the OEKO-TEX register of certified companies.

The Antimonopoly Committee recognized the existence of similar colors, photos, symbols, and other figurative elements, confirmed that the similarities between two packaging designs were sufficient to mislead consumers with respect to the manufacturer, and ordered Anita Ko LLC to stop using the deceptive packaging.

Prepared by: Valentyna Martynenko

For more information, please contact ukraine@petosevic.com.

Source: Ukrainian Antimonopoly Committee website

Ukrainian Officials Shut Down Production and Online Sale of Fake Spirits

Ukrainian State Fiscal Service officials, in collaboration with the Prosecutor’s Office of Kyiv, recently seized more than 2,000 liters of counterfeit alcoholic beverages infringing numerous trademarks, including Finlandia®, Jack Daniel’s®, Chivas Regal®, Captain Morgan®, Jameson®, Bacardi®, Jim Beam®, Smirnoff® and Sauza®.

The goods were seized during the raid of the illegal alcohol makers’ manufacturing and storage facilities in the capital of Kyiv. Counterfeit vodka, cognac, whiskey, rum and tequila were manufactured by mixing various spirits and flavorings. The counterfeiters evaded the payment of excise duty and sold the fake spirits online. Besides the counterfeit alcohol, the officials also seized manufacturing equipment and a vehicle used for the transportation of fake goods.

Prepared by: Valentyna Martynenko

For more information, please contact ukraine@petosevic.com.

Source: Ukrainian State Fiscal Service website

Hungarian Officials Halt Home Production of Fake Apparel

The Hungarian National Tax and Customs Administration (NTCA) officials recently seized more than 100 apparel items as well as labels and tags infringing the Adidas®, Calvin Klein®, Emporio Armani®, Hugo Boss®, Nike®, Timberland® and Tommy Hilfiger® trademarks. The officials also seized equipment used for the production of fake goods, including screen printing and sewing machines.

The counterfeit goods were discovered during the inspection of a home in Somogy county in southwestern Hungary. The officials also discovered 2.5 kilograms of loose tobacco and 14,000 cigarettes with no excise stamps in the same household.

Prepared by: Erika Farkas

For more information, please contact hungary@petosevic.com.

Source: Hungarian National Tax and Customs Administration website

Serbian Customs Seize Fake Apparel, Authenticity Certificates

Serbian customs officials recently seized more than 300 sweatpants and around 9,000 labels believed to infringe numerous trademarks, including Nike®, Adidas®, Philipp Plein® and Armani®. The goods were seized during the inspection of two garment manufacturing workhops in the town of Raška in southern Serbia.

On a separate occasion, while inspecting a bus travelling from Turkey to Serbia, at the Gradina border crossing point with Bulgaria, the customs officials seized 18 counterfeit authenticity certificates infringing the Gucci® and Emporio Armani® trademarks. The certificates were carried by one of the passengers with the intention of using them to sell counterfeit accessories.

Prepared by: Djurdja Krivokapić

For more information, please contact serbia@petosevic.com.

Source: Serbian Customs website