President Leonid Kuchma signs omnibus IP bill into law

Well-known trademarks recognized; Court authorized to use preventive measures in removing counterfeit goods from trade channels; Ukraine moves closer to WTO membership

Kyiv, Ukraine — In a major development for intellectual property rights in Ukraine, President Leonid Kuchma signed into law an omnibus intellectual property rights bill that amends nine existing laws regulating various aspects of copyright and industrial property protection.

The omnibus bill, "On Changes to Certain Legislative Acts of Ukraine on the Legal Protection of Intellectual Property" (reg. #1238), passed by the Verkhovna Rada (legislature) on May 22, also includes the recognition of international provisions from the "Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)," and is expected to move Ukraine closer to WTO membership.

"Passage of the Omnibus IP Law is a significant step forward for Ukraine and for owners of intellectual property rights," said Myron Wasylyk, Ukraine's representative of the Coalition for Intellectual Property Rights (CIPR). "The new law codifies many new and important IP provisions related to trademarks recognized throughout the world, among the most significant is the recognition of well-known trademarks in Ukraine," said Wasylyk.

New "Well-Known" Provisions for Trademarks

According to the new law, a mark for goods or services can be recognized "well-known" by the courts or by an appellate decision of a relevant executive branch agency. With regard to trademarks and geographic indications, the new law forbids a later registered geographic indication from superceding an earlier registered trademark. The law also introduces protection for the use of trademarks and domain names in the Internet, which are abused frequently in Ukraine by cyber-squatters and other pirates.

Enforcement & Penalties

The new law, published today in the official press (Uriadoviy Kourier #115), will also strengthen the protection granted to owners of copyright and industrial property rights and will expand the authority of judicial and law enforcement officials in applying preventive measures against the production, circulation and sale of illicit products.

Amendments to the Civil Procedures Code of Ukraine will enable legitimate IP owners to obtain a court order within 48 hours to search warehouses and production facilities where illicit products are suspected of being produced or stored. Courts will also have the authority to seize assets used by alleged violators of IP rights.

Amendments to the Criminal Code of Ukraine introduce significant monetary fines for infringers of IP rights ranging from 200 to 2,000 untaxed minimum salaries. The new law also amends the Criminal Code of Ukraine to include copyright violations as a criminal offense. The new amendments to the Criminal Code set prison sentences for IP offenders and recidivists of up to five years.

Ukraine Moves Closer to WTO

Passage of the omnibus IP law is a prerequisite for Ukraine's entry into the World Trade Organization. Adhering to and incorporating provisions of the international TRIPS Agreement into national IP legislation is one of the requirements any country needs to meet before joining the WTO. President Leonid Kuchma has stated that WTO membership by the end of 2003 is a major policy priority for Ukraine.

"These are important amendments to Ukraine's IP legal framework, however, the dynamic nature of global counterfeiting will require additional authorities for Court and law enforcement agencies to truly stem the tide of counterfeit and pirated products in the Ukrainian marketplace," Wasylyk said. "More changes to Ukraine's IP legal base will be needed in the future," he concluded.

The Coalition for Intellectual Property Rights (CIPR) is a private-public partnership dedicated to advancing intellectual property rights protection, enforcement and reform in the Baltic States and CIS countries. Through public education, legislative action and legal reform, CIPR works with government and private sector partners to establish transparent IPR regimes that adhere to international standards. CIPR's Corporate Members include some of the worlds' most famous trademark, copyright, patent and brand owners, among them: Anheuser Busch, Becton Dickinson, British American Tobacco, The Coca-Cola Company, Dell Computer Corporation, Diageo plc, Four Seasons Hotels Ltd., Gallaher Ltd, Geom Ltd, Gowlings, ICN Pharmaceuticals, Intel Corporation, Kraft Foods International, Kroll, Microsoft, Morshinska Mineral Waters, Pfizer International, Philip Morris Companies, Tiffany and Company, Baker & McKenzie CIS Ltd and Fross Zelnick Lehrman & Zissu serve as CIPR's co-legal counsel.