IP News Eastern Europe - January 2023

January 2023

Ukraine Adopts New Copyright Law

A new Law on Copyright and Related Rights entered into force in Ukraine on January 1, 2023. This is the first major copyright legislation change in Ukraine since 1993, introducing numerous important changes. Most of the novelties are intended to harmonize local legislation with that of the EU. The new law meets modern requirements and international standards and is, in some provisions, even ahead of the current practice in Ukraine, which is why interpreting it from a practical point of view might require time and effort. Below is the summary of the most important changes:

Originality

The new law introduces originality as a protectability requirement. The previous law did not include a definition of originality, while the new law defines it as a feature that characterizes a work created as a result of the author's creative intellectual activity reflecting the innovative solutions offered by the author during the creation process. In other words, a work is deemed protectable if it is created as a result of the author’s own creative intellectual activity.

New Moral Rights

The list of moral rights was expanded to include the author’s right to give the work a title or leave it without one and the author’s right to dedicate the work to someone or even something. These novelties could strengthen the protection of moral rights in Ukraine.

AI/Software as Creator; Protection of Non-Original Works

The new law introduces the sui generis right to protect non-original works created by software – works which differ from other works of a similar type and are created without the participation of humans. Rights to such works arise at the moment of their creation. There can be no intangible rights to such works, while tangible sui generis rights include the right to use and the right to authorize or prohibit third party use of the work. The tangible rights belong to the natural person who is the owner of the rights to the software that created the non-original work.

A novelty regarding the protection of databases created by humans is that non-original databases (e.g. traffic schedules, television and radio broadcast schedules, telephone directories and other similar databases that do not meet the originality requirement) are now also subject to sui generis rights.

The law provides the following validity periods for the above sui generis rights:

• For AI/software-generated works – 25 years counting from the first day of the year following the year of creation (generation) of the work;
• For non-original databases – 15 years counting from their creation.

Public Licenses

The new law provides for public licenses through which copyright holders can grant copyright permissions to the general public. The non-exclusive public license terms and conditions need to be published (e.g. on the Internet) and any third party should be able to accept them. Once the conditions are accepted, the licensee is bound by them and the license is deemed granted.

Resale Royalty Right

The new law establishes royalty rates related to the resale right – the right of the author of an original work of art to receive remuneration for successive sales of their work. Royalties are calculated as a percentage of the sale price, which is divided into six portions, and the royalty rate has now been set as ranging from 6% to 0.25%, depending on the portion. The total royalty amount for each successive sale of one work may not exceed EUR 12,500. The author’s resale right is not only applicable when works are being resold by professional traders (e.g. auctions, galleries, art shops, etc.) but also when they are resold by private persons online.

Hyperlinking and Framing as Copyright Infringement

The new law introduces hyperlinking to and framing (on a web page, displaying content loaded from another web page) of protected content as actions which constitute copyright infringement, if they allow access, use or distribution of copyrighted work without the right owner’s authorization.

Alternative Type of Monetary Liability for Infringers

Under the new law, the right owners may choose a fixed-amount compensation instead of a compensation for the monetary and/or moral damages or the equivalent of the profits the infringer made as a result of the infringement. The fixed-amount compensation ranges between 2 and 200 subsistence minimums, which currently equals EUR 134 – EUR 13,400. This is an important alternative in cases when right owners do not have sufficient evidence regarding the damages resulting from the infringement or the profits the infringer received as a result of the infringement.

Threat of Infringement

The law now clearly defines the actions that are considered to be threats of copyright infringement and that represent legitimate grounds for seeking protection of rights. These actions are the distribution, importation, setting up, or providing, for remuneration, instructions for setting up technical means (including software, an application, technology or device) that grant access to a protected work, without the right owner’s consent.

By: Oleh Karpenko

For more information, please contact Oleh Karpenko at our Ukraine office.

Hungary Amends Trademark Act

On January 1, 2023, Act LV amending several industrial property laws, including the Trademark Act, entered into force in Hungary. Act LV aims to fine-tune and amend certain aspects of various procedures before the Hungarian Intellectual Property Office (HIPO). The amendments are the result of the HIPO’s practical experience and their main goal is to harmonize IP laws with Hungarian procedural legislation, including the Law on Civil Procedure and the Law on General Administrative Procedure. The main amendments to the Hungarian Trademark Act are outlined below.

Deadline Extensions

Deadline extensions that can be obtained during trademark proceedings before the HIPO have been limited to a minimum of one month and a maximum of three months. Multiple extensions lasting between one and three months and a special six-month extension may be requested and granted only in particularly justified cases. The goal of this amendment is to curtail unnecessary delays by restricting the extension period and repeated or longer extensions.

Procedure Suspension

If an adversarial trademark proceeding involves several adverse parties, the proceeding can only be suspended upon a joint request by the parties. The proceeding may only be suspended once, for a maximum period of six months (after which the proceeding is terminated), and may be resumed upon request of any of the parties.

Opposition Proceedings

The amendments allow licensees who are not recorded in the trademark register to file an opposition against a trademark application. The previous text of the law granted this right only to licensees recorded in the trademark register.

The filed oppositions should now include not only the legal grounds on which they are based, but also detailed reasoning and supporting evidence. The goal is to reduce the practice of filing unsubstantiated oppositions within the non-extendable opposition deadline and then subsequently filing detailed reasoning and evidence. However, the wording of the amendment is not clear – on the one hand, it indicates that detailed reasoning should be filed at the time of filing the opposition, but on the other hand, it suggests that the HIPO will ask the opponent to rectify the irregularities if the opposition does not comply with the requirements. The HIPO’s practice in future opposition cases will determine the applicability of the amendment, but for now it is recommended to file oppositions along with detailed reasoning within the opposition deadline. 

Under the amendments, if neither party requests the continuation of the suspended opposition proceeding before the expiration of the relevant deadline, the HIPO will consider the opposition withdrawn and will resume the trademark registration procedure.

Cancellation Actions

Under the amendments, not only the holder of an earlier right, but also the licensee of an earlier right and even an unregistered user of an earlier geographical indication can file a cancellation action based on relative grounds for refusal.

The amendments also introduce the possibility of postponing the hearing in cancellation proceedings – the parties can jointly request a postponement subject to certain restrictions (e.g. no later than three days before the hearing; the reasoning or justification should be given) and the HIPO can also postpone the hearing in case of exceptional circumstances.

Under the amendments, an accelerated cancellation action can be requested if the trademark infringement court case has not only been initiated (as was previously required) but if the court action is still ongoing at the time of filing the cancellation action, or if it is proven not only that the preliminary injunction request has been submitted to the court (as previously required) but also that the preliminary injunction has not yet been refused. Basically, an accelerated cancellation action can be requested only if an infringement action or a preliminary injunction is still ongoing at the time of filing the accelerated action.

Prepared by: Zita Szilágyi

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

Source: The Hungarian Gazette website

Ukrainian IPO Reform Explained

For a long time, Ukraine had a three-level state IP protection system comprising the Ministry of Economy, the State Service of Intellectual Property as the national IPO, and the State Enterprise “Ukrainian Intellectual Property Institute” (Ukrpatent) as the examining authority.

In 2016, the State Service of Intellectual Property ceased to exist, and its functions were transferred to the Ministry of Economy, while Ukrpatent continued to operate as the examining authority.

This lasted until 2020, when a law was adopted introducing a two-level IP system comprising the Ministry of Economy and the National IP Authority (NIPA). The Ministry is responsible for ensuring state policy formation and implementation in the intellectual property field, and the NIPA is the single national IPO performing public functions in order to implement the state IP policy. On October 14, 2020, at the initiative of the Ministry of Economy and with the support of the Ukrainian Government, Ukrpatent started performing the NIPA’s functions.

On October 28, 2022, the Ukrainian Government announced that on November 8, 2022, the NIPA’s functions performed by Ukrpatent would be transferred to the newly created Ukrainian National Office for Intellectual Property and Innovations (UKRNOIPI). This was done in order to complete the institutional reform by creating an effective two-level IP system and to resolve certain discrepancies in the Ukrpatent’s performance of the NIPA’s functions. On November 8, 2022, UKRNOIPI started performing certain NIPA’s functions, accepted official fees on new bank accounts, and proceeded with the transfer of other NIPA’s functions in order to fully absorb the functions of the Ukrpatent.

UKRNOIPI already takes part in court proceedings as the legal successor of Ukrpatent in IP disputes. For example, on December 21, 2022, UKRNOIPI participated in a court hearing for an appeal initially filed by Ukrpatent.

UKRNOIPI also regularly publishes announcements on the ongoing reform and explains its upcoming actions. For example, it was recently announced that IP deadlines remain suspended due to the ongoing war as provided for by the law adopted on April 1, 2022. On January 25, 2023, it was announced that UKRNOIPI was working on re-launching the attestation process for trademark and patent attorneys and on forming the Attestation Commission. The attestation has not been conducted since 2016 when the State Service of Intellectual Property, which was responsible for it, was liquidated.

Finally, the Appeal Board, which stopped operating on November 8, 2022 when the NIPA’s functions were transferred to UKRNOIPI, is also expected to resume operation soon. During recent meetings with the Ukrainian IP community, UKRNOIPI confirmed that it is working on the re-launch of the Appeal Board, but no concrete deadlines have been provided, likely due to the ongoing war in Ukraine. However, the new team is facilitating an open dialogue with the IP community and is eager to resume all operations as quickly as possible.

By: Igor Alfiorov

For more information, please contact Igor Alfiorov at our Ukraine office.

EAPO Increases Fees for Eurasian Designs

The Eurasian Patent Office (EAPO) has introduced amendments to certain official fees payable when filing and renewing Eurasian design applications. The new fees entered into force on January 1, 2023.

The official filing fees increased by approximately 20%; the official grant and publication fees by 33%; and the official renewal fees by 5-24%.

The former and current fees are outlined in the table below:

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

EAPO Expands Electronic Document Exchange, Starts Accepting Applications with 3D Models

The Eurasian Patent Office (EAPO) has recently amended its Procedure for the electronic exchange of documents, expanding the electronic document flow between users and the EAPO. As of January 1, 2023, all letters patent are issued in electronic format only, while the EAPO-ONLINE system users can now submit requests in electronic form for a number of new procedures, including requests to change their representatives, requests for Eurasian patent term extensions, oppositions against Eurasian patents, and observations related to the patentability of inventions.

Additionally, on November 1, 2022, the EAPO started accepting Eurasian applications for the grant of a patent for an invention or industrial design with 3D models of the claimed inventions or designs included. This is expected to simplify and optimize the filing and examination processes.

Prepared by: Djurdja Krivokapić

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

Source: EAPO website

Serbian Customs Detain Fake Apparel, Fragrances, Labels

On January 24, 2023, Serbian customs officials at the Preševo border crossing point with North Macedonia detained over two tons of smuggled goods, including apparel, fragrances and labels believed to infringe numerous trademarks.

The goods were discovered in a truck arriving from Turkey and were intended for several importers in Serbia. While inspecting the truck, the customs officials found more than 7,000 clothing items, including children’s sets, vests, sweatpants, jeans, T-shirts, underwear and socks, believed to infringe numerous trademarks including Zara®, Tommy Hilfiger®, Adidas®, Nike®, Diesel® and Armani®. The officials also discovered over 6 kg of labels infringing Philipp Plein®, Nike®, Adidas® and Karl Lagerfeld® trademarks.

Prepared by: Djurdja Krivokapić

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

Source: Serbian Customs website