PETOŠEVIĆ

IP Deadlines under Martial Law in Ukraine

Until recently it was not quite clear how exactly IP deadlines are affected by the martial law in Ukraine. The martial law, which was first introduced in Ukraine on February 24, 2022, remains effective until May 25, 2022.

The Ukrainian IPO published several notices back in March, informing the IP community that the IPO continues to operate on a full-time basis to ensure uninterrupted functioning of the intellectual property system and explaining that the earlier published letter of the Ukraine Chamber of Commerce and Industry, certifying the events of force majeure, could be interpreted as applicable only to applicants and right holders residing or domiciled in Ukraine. The IPO did not have the discretion to prescribe the deadline-related procedural issues, which required adoption of a special law.

This uncertainty was finally resolved on April 1, 2022 with the adoption of the Law “On the Protection of Rights of Intellectual Property Subjects during Martial Law in Connection with Military Aggression of the Russian Federation Against Ukraine” No. 2174-IX (the Law). This Law, which entered into force on April 13, 2022, provides for:

1) Suspension of deadlines relating to protection and acquisition of IP rights to trademarks, inventions, utility models, industrial designs, semiconductor topography rights, geographical indications, copyright, and plant varieties for the duration of the martial law period, starting on February 24, 2022. Other than the general prosecution and IPR maintenance deadlines provided by relevant IP laws, the suspension also affects the deadlines for:

• filing oppositions against national trademark applications and international registrations under the Madrid Agreement and Protocol;
• challenging decisions of the Ukrainianin IPO before courts;
• filing appeals before the IPO Board of Appeals;
• filing patent invalidation actions;
• filing requests for reinstatement of the missed deadlines, etc.

According to the Law, these deadlines will continue as of the day following the date on which the martial law regime stops or is lifted, taking into account the time that passed before February 24, 2022.

2) Continuation of validity of IP rights for which the relevant deadlines were suspended. The respective patents and certificates remain valid and fully enforceable.

3) Possibility to subsequently pay the renewal and annuity fees, falling due within the martial law period, within 90 days after the martial law regime is lifted.

4) Possibility for applicants/IPR holders to take necessary actions, i.e. file relevant applications, requests, objections, responses, not later than 90 days following the day on which the martial law regime is lifted, without paying any extension or reinstatement fees.

In spite of all mentioned provisions of the Law in place, IPR holders and applicants are not explicitly exempt from the duty to perform all required actions aimed at securing and protection of IPRs.

It has to be made clear that the primary purpose of this Law was to establish additional protective mechanisms that can be used as a “safety blanket” by IPR holders and applicants in case they cannot comply with respective deadlines due to unforeseen circumstances caused by the war, or when performing certain actions becomes impossible or complicated.

Obviously, some actions may require extensive research and investigation, collection and securing of evidence, negotiating and/or formalising agreements, etc., which is often significantly jeopardised by unpredictability of war. Also, there is a number of troublesome circumstances that IPR holders and applicants, particularly those residing or domiciled in Ukraine, or those whose legal representatives are in zones of military conflict, can face under the martial law. For this particular reason, and understanding the importance of IPRs for future economic recovery and growth, the legislator quickly responded to legislative initiative aimed at preserving IP deadlines and adopting relevant protective mechanisms preventing possible loss of IPRs and damages from such loss of rights in this difficult time.

Still, given that the Ukrainian IPO operates on a full-time basis, and that the e-filing system is fully functional, IPR holders and applicants, particularly non-residents, are advised to follow the “normal” course of action in Ukraine, relying on the Law only in exceptional cases.

There are several reasons for this:

• As noted, the present Law is a “safety blanket” mechanism for the prevention of possible loss of rights and a formalised ground justifying reinstatement of missed deadlines. In its previous notices, the IPO had sent a clear message that the system is fully operational, hence there are no reasons for not meeting due deadlines, unless there are serious obstacles that prevent the applicant from performing the required actions;
• Given the mentioned provisions of the law, there will be only a relatively “narrow window” during which IPR holders will have to perform all actions that fell due within the period of the martial law. It is not difficult to imagine that this may result in a significant backlog in the IPO once the martial law is lifted and possibly create problematic situations;
• The potential backlog problem is coupled with procedural issues, particularly the need to correctly calculate relevant IP deadlines on a case-by-case basis, depending on whether the respective countdown date fell before the introduction of the martial law or during the martial law period, still complying with the provisions of relevant guidelines regulating the procedures of reinstatement. The IPO has not issued its recommendations yet.

Good planning and portfolio management under these difficult circumstances is key to avoiding possible future complications and delays with resumption of IPR prosecution and maintenance files and founding a solid base for the protection and enforcement of intellectual property rights in the post-war economy that will strive for innovation and growth.

By: Natalia Stetsenko and Slobodan Petošević

For any questions, please contact operations@petosevic.com.

WIPO Temporarily Suspends UA-DRP Proceedings

On April 27, 2022, the Ukrainian .UA domain operator Hostmaster announced on its website that in view of the martial law currently in force in Ukraine, the WIPO Arbitration and Mediation Center temporarily suspended its domain name dispute resolution services under the .UA Domain-Name Dispute-Resolution Policy (UA-DRP) and will not accept any new .UA domain name registration requests until further notice.

This decision was taken following WIPO’s consultations with Hostmaster and based on the fact that Ukrainian registrars and parties to a dispute may have difficulties participating in arbitration proceedings during the ongoing military actions.

The UA-DRP administrative proceedings will resume once the martial law regime is lifted in Ukraine. The martial law, which was first introduced on February 24, 2022, currently remains effective until May 25, 2022.

The UA-DRP is a domain name resolution mechanism similar to the UDRP (Uniform Domain-Name Dispute-Resolution Policy). The proceedings are administered by the WIPO Arbitration and Mediation Center. For a complaint to be successful, the following must be proven:

• The complainant's trademark is identical or confusingly similar to the domain name;
• The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
• The domain name is registered and/or used in bad faith.

The remedies available to the complainant are the domain name cancellation or its transfer to the complainant.

The UA-DRP procedure cost is equal to the UDRP procedure cost and ranges from EUR 1,315 (USD 1,500) to EUR 4,385 (USD 5,000). The UDRP procedure usually lasts 60-75 days.

Prepared by: Igor Alfiorov

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

Lithuania Transposes the DSM Directive

Amendments to the Lithuanian Copyright Act aiming to transpose the EU Directive 2019/790 on Copyright and Related Rights in the Digital Single Market (the DSM Directive) entered into force on May 1, 2022. Lithuania, like numerous other EU member states including Austria, Spain, Greece, France, Luxembourg, Belgium and the Czech Republic, was not able to comply with the implementation deadline of June 7, 2021 (once the DSM Directive came into force, all EU member states needed to implement it into their national legislations within 24 months). Below are important things to note regarding Lithuania’s implementation of three articles of the DSM Directive.

Article 15 – Issues with Quantitative Interpretation of ‘Very Short Extracts’

Article 15 of the DSM Directive requires member states to introduce a related or neighboring right for press publishers regarding the online use of their publications. However, as any other right, the press publishers’ right has its substantive limits and the Directive states that this right does not apply to, inter alia, uses of ‘very short extracts’.

Lithuanian lawmakers decided to define the term ‘very short extract’ as an extract that “consists of 125 characters or less, excluding headers and spaces”. This definition raises a number of issues, one of which is that defining ‘very short extracts’ by a number of characters excludes visual artworks or audio recordings. Such issues will probably be raised before the the Court of Justice of the European Union (CJEU), which will have to decide whether a quantitative definition of a ‘very short extract’ accurately implements Article 15 of the DSM Directive.

Article 17 – No Significant Changes to the Original Wording

Notably, the controversial and often discussed Article 17, which regulates the liability of online content-sharing service providers, was transposed mostly in a copy-and-paste fashion.

Article 18 – Expanding the Application of Appropriate and Proportionate Remuneration

The principle of appropriate and proportionate remuneration from Article 18 of the DSM Directive is mostly intended to be applied to the direct, contractual relationship between the author or performer and their producer or publisher. The Lithuanian law, however, implements this provision by establishing a compulsory collective management mechanism, which resembles mandatory collective management, while also having some differences. Namely, according to the amended Lithuanian Copyright Act, the author’s right to receive remuneration for the use of their works is irrevocable and non-transferable if their rights are administered by a collective management organization (CMO). This mechanism, however, is not mandatory, because the author needs to explicitly authorize the CMO to collect the author’s fees. However, once the authorization is given, any other agreements with third parties become null and void. This is what differentiates this mechanism from mandatory collective management, despite their similarities.

By: Zita Szilágyi

For more information, please contact Zita Szilágyi at our Hungary office.

Hungarian Officials Detain Fake Electronic Devices with Unlicensed Software

The Hungarian National Tax and Customs Administration (NTCA) officials recently detained counterfeit automobile diagnostic equipment and computers with unlicensed software during the inspection of a car workshop in Jász-Nagykun-Szolnok county in central Hungary.

The NTCA officials inspected the workshop after seeing a suspicious advertisement on social media promoting the installation of high-end equipment for luxury cars. The detained goods are estimated to be worth approximately EUR 4,500 (USD 4,750).

Prepared by: Erika Farkas

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

Jelena Radević Explains IP to Kindergarden Kids

Jelena Radević, Senior Paralegal from our Montenegro office, presented about IP last month to an unlikely audience of preschool children in the capital of Podgorica.

“The teachers from my daughter's kindergarten invited me to join them for a few hours one day and think of a learning activity. I have a degree in English so I was planning to bring games for teaching English to young children, but then I thought – why not explain intellectual property in a fun way to the little ones”, Jelena remarked.

Jelena explained trademarks, patents and designs in a simple and practical manner and by showing concrete examples. “I showed them that Coca-Cola®, in a stylized font, is a famous registered trademark, that its distinct bottle shape is an example of a design, and that the ’juice’ itself is a patent or actually a trade secret.“

Next, Jelena talked about inventions that changed the world, such as the wheel and paper. “The kids were surprised when they saw a picture of the first computer, which was the size of a room. They laughed when they saw the photo of the first telephone. They learned that Goodyear® was the first tire to drive on the surface of the moon”, Jelena explained.

Jelena also talked about brands such as Nike®, Barbie®, Ferrari® and BMW® which the kids instantly recognized as well as the specific products these brands represent.

“The kids were delighted with the presentation, seeing that IP is all around them and that it protects products and ideas that they like. Young children can easily absorb the idea of IP, especially nowadays when they are exposed to a lot of information and can easily adopt knowledge”, Jelena concluded.

You can see the photos from the presentation in our gallery.

For more information, please contact Jelena Radević at our Montenegro office.