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REPUBLIC OF UKRAINE

The Law on the Protection of the Rights for Designation of Origin of Goods

This Law shall determine legal principles of protection of rights for designation of origin of goods in Ukraine, and shall govern relations that arise in relation to acquisition, exercise, and protection thereof.

TABLE OF CONTENTS

Chapter I. General Provisions

Art. 1. Definitions

Art. 2. Legislation of Ukraine on protection of rights in relation to designation of origin of goods

Art. 3. Authorities of the Agency in the sphere of protection of rights in relation to designation of origin of goods

Art. 4. International Treaties

Art. 5. Rights and obligations of foreigners and persons without citizenship

Chapter II. Legal protection of designation of origin of goods

Art. 6. Granting of right protection for indications of origin of goods

Art. 7. Conditions of granting legal protection

Art. 8. Grounds of refusal of legal protection

Chapter III. Procedure of registration of a qualified designation of origin of goods and/or rights to its use

Art. 9. The right for registration of the qualified designation of origin of goods and/or for use of a registered qualified designation of origin of goods

Art. 10. Application for registration of a qualified designation of origin of goods and/or right to use an already registered qualified designation of origin of goods

Art.11. Examination of application

Art.12. Withdrawal of application

Art.13. Appeal against decisions on applications

Art.14. Registration of a qualified designation of origin of goods and/or right to use an already registered qualified designation of origin of goods

Art.15. Issuance of certificate confirming the right to use a registered qualified designation of origin of goods

Art.16. Registration of a qualified designation of origin of goods abroad

Chapter IV The Rights and Obligations, which arise from Registration of a Qualified Designation of Origin of Goods and/or the Rights to Use It

Art.17. The rights and obligations, which arise from registration of a qualified designation of origin of goods and/or the rights to use it

Art.18. Obligations of the holder of the certificate

Chapter V. Order of Cancellation and Termination of Legal Protection for a Qualified Designation of Origin of Goods or the Right to Use It.

Art. 19. Grounds of cancellation and termination of legal protection for a qualified designation of origin of goods

Art. 20. Invalidation of registration of a qualified designation of origin of goods and/or the right for its use

Art.21. Termination of registration of a qualified designation of origin of goods and protection of the right to use it

Art.22. The order of annulment of the registration of a qualified designation of origin of goods and the right to use it

Chapter VI. Protection of the rights to use designation of origin of goods

Art.23. Infringement of the rights to use designation of origin of goods

Art. 24. Responsibility for infringement of the right to use a qualified designation of origin of goods

Art. 25. Disputes heard by courts

Chapter VI. Final provisions

 

 

Chapter I

GENERAL PROVISIONS Definitions

Art. 1

For the purpose of this Law, the terms below shall mean the following:
"Agency" - specially designated body dealing with issues of intellectual property;
"Board of Appeal" means a body of the Agency, designated for pretrial settlement of disputes on acquisition and protection of rights for objects of industrial property, including those for designation of origin of goods;
"designation of origin of goods" - a term, that includes the following terms:
    - "simple indication of origin of goods";
    - "qualified designation of origin of goods"; simple indication of origin of goods means any verbal or representational (graphic) designation, which directly or indirectly specifies a geographical place of origin of goods;"qualified designation of origin of goods" is a term, that includes the following terms:
     - "name of the place of origin" (hereafter "NPO") means name of a geographical place, that is used to label goods, originating from the indicated geographical place, and having specific properties, which are exclusively or mainly dependent on natural conditions or human factors of such geographical place, or both on natural conditions and human factors;
     - "geographical designation of origin of goods" (hereafter "GDO") means name of a geographical place, that is used to label goods, originating from the given geographical place, and having specific properties, reputation or other characteristics, which are mainly dependent on specific natural conditions or human factors of such geographical place, or both on natural conditions and human factors;
    - "geographical place" means a geographical object with officially determined borders, particularly, a nation, a region of a nation, a populated settlements, locality, etc;
    - "generic name of goods" means a name of geographical origin in the a name of goods that is related to the place, where such goods were originally manufactured, and which since then has become a generally accepted name in Ukraine, used to indicate a (name of) specific type of goods irrespective of specific place of origin;
"specially authorized agency" means a public agency, established by the Cabinet of Ministers of Ukraine, which has authorities to determine and control specific properties, given qualities, or other characteristics of goods, which are indicated with NPO GDO, as well as to determine boundaries of geographical places associated with specific properties, given qualities, or other characteristics of goods, and to determine manufacturers of such goods within the given geographical places;
"person" means an individual or a legal person;
"application" means a set of documents that are required for registration of qualified designation of origin of goods and/or right to use qualified designation of origin of goods;
"applicant" means a person or a group of persons that has filed an application;
"certificate" means a document that certifies the right for qualified designation of origin of goods and/or the right of a person to use the registered name of the place of origin of goods or registered geographical designation of origin of goods;
"registration" means state registration of the name of origin or geographical designation of origin of goods and/or right to use such qualified designation of origin of goods;
"Register" means the State Register of Ukraine of names of origin and designations of geographic origin of goods, as well as rights to use already registered qualified designations of origin of goods.Legislation of Ukraine on protection of rights in relation to designation of origin of goods

Art. 2

Legislation of Ukraine on protection of rights in relation to designation of origin of goods consists of this Law, laws of Ukraine "On protection against unfair competition", "On protection of the rights for trademarks of goods and services", "On protection of consumers' rights", "On advertising", and other regulations and legal acts.Authorities of the Agency in the sphere of protection of rights in relation to designation of origin of goods

Art. 3

1. The Agency shall be responsible for implementation of the State policy in the field of legal protection of rights in relation to designation of origin of goods in Ukraine; shall take measures to maintain functions of the state system of protection of rights in relation to designation of origin of goods in Ukraine, including consideration and examination of applications, state registration of qualified designation of origin of goods and/or rights for use thereof, issuance of certificates, and publication of official information; as well as other responsibilities in accordance with its competence. 2. The Agency may provide to any person the information relating to a registered qualified designation of origin of goods and other services in connection to protection of rights for registered qualified designation of origin of goods. The Agency shall establish the order to provide such services and a schedule thereof.International Treaties

Art. 4

Where an international treaty, which has been made binding by the consent of the Verkhovna Rada of Ukraine, envisages provisions that differ from those established by this Law, the provisions of such international treaty shall prevail.Rights and obligations of foreigners and persons without citizenship

Art. 5

1. Foreigners and persons without citizenship shall have equal rights and obligations as stipulated by this Law with citizens of Ukraine, excluding those established by international treaties of Ukraine. 2. Foreigners and persons without citizenship shall exercise their rights with the Agency through their agents on issues of intellectual property (patent attorneys).

Chapter II

LEGAL PROTECTION OF DESIGNATION OF ORIGIN OF GOODS Granting of right protection for indications of origin of goods

Art. 6

1. Legal protection of simple indications of origin of goods shall be granted on the basis of their use.Legal protection of simple indications of origin of goods consists in forbidding use of indications, which are not true (false) or such that deceive consumers as to the actual geographical place of origin of goods.Simple indication of origin of goods shall not be subject to registration.

2. This Law shall grant legal protection to qualified designations of origin of goods on the basis of their registration, which shall be deemed not limited in time starting on the date of registration.Conditions of granting legal protection

Art. 7

1. Legal protection shall be granted to qualified designation of origin of goods, which specifies a concrete geographical place from where given goods originate, and which is not subject to refusal to grant legal protection as established by this Law.

2. Simple designation of origin of goods shall be any verbal or representational (graphic) designation, which directly or indirectly specifies a concrete geographical place of origin of goods. It can be both a name of a geographical place, used as a name of goods, or a component of such name.

3. Legal protection shall be granted to a name of place of origin of goods, if it meets the following conditions:à) it is a name of a geographical place, from which the given goods originate;
    b) it is used as a name of the given goods or as a component of such name;
    c) there objectively exist specific natural conditions or combinations of specific natural conditions and human factor in the geographic place related to this name, which provide the given goods some special properties compared with homogeneous goods from other geographical places;
    d) the goods, designated by this name, have appropriate properties, which exclusively or predominantly are preconditioned by specific natural conditions of the given geographical place or combination of these conditions with specific human factor of the given geographical place;
    e) production (extraction) and processing of the goods, designated by this name, take place within boundaries of the specified geographical place.

4. Legal protection shall be granted for geographical designation of origin of goods, when the following conditions are met:à) it is a name of a geographical place, from which the given goods originate;
    b) it is used as a name of the given goods or as a component of such name;
    c) in a geographical place, specified by this name, there are characteristic conditions and/or human factor, which provide the goods certain qualities or other characteristics;
    d) the goods, designated by this name, have certain qualities, reputation or other characteristics, predominantly preconditioned by natural conditions and/or by the human factor of the given geographical place;
    e) at least one main component of the goods, designated by this name, is produced and/or processed within boundaries of the designated geographical place.

5. Legal protection may be granted to identical designations of origin of goods, which are used for designation of homogeneous goods of different properties, under condition that distinctive properties of the said goods are preserved while using such designations in order to prevent deception of customers in terms of actual identification of goods.

6. Legal protection shall be granted for homonymous designations of origin of goods under condition there are guarantees to prevent deception of customers in terms of actual identification of goods, geographical place of origin of goods, or boundaries thereof.Grounds of refusal of legal protection Art. 8 1. This Law shall not grant legal protection for qualified designation of geographical origin of goods, if
    a) it does not meet requirements as envisaged by Article 7 of this Law;
    b) it contradicts public interests, principles of humanism, and morals;
    c) it is a generic name;
    d) it correctly indicates the geographical place where goods are manufactured but can cause wrongful perception on the part of customers as to the goods being manufactured elsewhere;
    e) it is a name of plants or breeds, and therefore may mislead customers as to the actual origin of goods.

2. This Law shall not grant legal protection for qualified designation of geographical origin of goods related to geographical places in foreign countries, if
    a) Ukraine has no relevant agreement on mutual protection of this kind designations of origin of goods;
    b) It is not protected in such foreign country.

3. A trade mark that has been registered in Ukraine can not serve as a ground for refusal to grant legal protection for a declared name of a place of origin or a declared geographical designation of origin of the goods, when such trade mark consists only of this designation or contains such declared indication as an component.

Chapter III

PROCEDURE OF REGISTRATION OF A QUALIFIED DESIGNATION OF ORIGIN OF GOODS AND/OR RIGHTS TO ITS USE The right for registration of the qualified designation of origin of goods and/or for use of a registered qualified designation of origin of goods

Art. 9

1. Right for registration of qualified designation of origin of goods shall be granted to:à) a person or group of persons, who manufacture the given goods in the declared geographical place, and special properties, main qualities, reputation or other characteristics of the said goods are related to this geographical place;
    b) associations of consumers;
    c) institutions, that have direct relation to production or examination of appropriate products, goods, technological processes, or geographical places.

2. Right to use a registered name of a place of origin of goods or a registered geographical designation of origin of goods shall be granted under condition of registration of this right to manufacturers, who in a geographical place as specified in the Register produce the goods, when special properties, certain qualities, or other characteristics of the said goods correspond to those that have been filed with the Register.Application for registration of a qualified designation of origin of goods and/or right to use an already registered qualified designation of origin of goods

Art. 10

1. Application for registration of a qualified designation of origin of goods may be filed with the Agency by persons who are entitled for registration pursuant to section 1 of Article 6 of this Law.Application for registration of right to use an already registered qualified designation of origin of goods may be filed with the Agency by persons who are entitled for such use pursuant to section 2 of Article 6 of this Law.If application for registration of a qualified designation of origin of goods is filed with the Agency by persons, who manufacture the goods for which they seek registration, such application shall be considered both an application for registration of right, and use of such designation.

2. Application shall refer to only one designation of origin of goods.

3. Upon assignment of an applicant, an application may be filed by an agent on issues of intellectual property (patent attorney), or other agent.

4. Application shall be compiled in Ukrainian language and shall contain:
    a) a request on registration of a name of origin of goods or geographical designation of origin of goods and/or on right to use the said registered qualified designation of origin of goods, along with information about the applicant and address thereof; b) a declared name of origin of goods or a declared geographical designation of origin of goods;
    d) name of goods for which the applicant seeks registration of the declared designation of origin of goods and/or the right to use already registered qualified designation of origin of goods;
    e) name and boundaries of a geographical place where the goods are manufactured and with which specific properties, certain qualities, reputation, or other characteristics of goods are associated;
    f) description of specific properties, certain qualities, reputation, or other characteristics of goods;
    g) information on use of the declared qualified designation of origin of goods on labels and in coding of goods;
    h) information on interrelation of specific properties, certain qualities, reputation, or other characteristics of goods with natural conditions and/or human factor of a given geographical place.

5. Along with a request, an applicant shall submit: a) a document that confirms that said applicant manufactures the goods, for which the applicant seeks registration of name of origin or geographical designation of origin of goods and/or the right to use registered qualified designation of origin of goods; b) an opinion of a specially designated competent agency, which states that the special properties, certain qualities, or other characteristics of the goods, as described in the request, are objectively substantiated by or related to natural conditions and/or human factors of the indicated geographical place where the goods are manufactured; c) an opinion of a specially designated competent agency concerning the boundaries of the geographical place the special properties, certain qualities, or other characteristics of the goods are related to.

6. Along with the application and instead of the documents that are mentioned in section 5 of this article, foreigners shall submit documents that confirm:à) legal protection of the declared qualified designation of origin of goods in the appropriate foreign country;
    b) right of the said foreign applicant to use appropriate qualified designation of origin of goods. The documents that are mentioned in this section may be filed in a foreign language, and translation of the documents into Ukrainian shall be filed with the Agency within three months after the date the application has been filed. 7. The filing date of an application shall be the date on which the Agency has received the request on registration of a qualified designation of origin of goods and/or right to use an already registered qualified designation of origin of goods. 8. Filing of an application shall be subject to payment of a fee. An application shall not be deemed filed in the case of failure to pay a fee within two months after the date of submission of a request.Examination of application

Art. 11

1. The Agency shall examine application pursuant to this Law and established procedures on the basis thereof within six months from the date an application has been filed.

2. Applicant shall be entitled personally or through an agent to take part in consideration of issues that arise during examination. The order of participation of an applicant or an agent in consideration of the above mentioned issues shall be determined by the Agency.

3. Upon initiative of an applicant, corrections of manifest mistakes and more accurate descriptions of main properties of goods or boundaries of a geographical place of origin of goods may be introduced to application during examination.

4. Examination of application for registration of a qualified designation of origin of goods and/or right to use an already registered qualified designation of origin of goods shall confirm conformity of the said application's information with provisions of Articles 7, 8, and 9 of this Law.

5. During examination of the application on registration of the qualified designation of origin of goods, the said designation shall checked and compared with generic names that have been introduced into the Schedule of generic names of goods.The Schedule of generic names of goods shall be formed by the Agency on the basis of Regulation "On schedule of generic names of goods", as approved by the Cabinet of Ministers of Ukraine.If a declared name of place of origin or a geographical designation of origin of goods that have been submitted for registration is already included in the Schedule of generic names of goods, a refusal to register shall be sent to such applicant.

6. During examination, the agency may invite an applicant to furnish additional documents if it can not carry out the examination without such documents.Applicant shall be required to furnish additional documents within a period of three months as from the date on which applicant has received a request. During the established period, applicant can file a petition for extension of the said period or for renewal of the period applicant missed to respond to a request. Extension of the period to respond to a request or renewal of the period applicant missed to respond to a request under expert examination are subject to payment of a fee.If applicant does not observe the established period of time or does not respond to a request, such application shall be deemed withdrawn.

7. If based on findings of examination, the Agency comes to a conclusion that the declared designation does not meet requirements of granting legal protection of the name of a place of origin of goods or the geographical designation of origin of goods, or if applicant may not be granted the right to use an already registered name of place of origin of goods or already registered geographical designation of origin of goods, the Agency shall decide to refuse registration.Refusal to register shall be sent to applicant.

8. If based on findings of examination, the Agency comes to a conclusion that application is in conformity with requirements as envisaged by Articles 7, 8, and 9 of this Law, information on said application shall be published in the official bulletin of the Agency.The publication shall contain the following:information on the applicant (applicants);name of the goods, which contains a name of place of origin of goods or geographical designation of origin of goods as submitted for registration;boundaries of a geographical place, to which special properties, certain qualities, or other characteristics of the goods are related;description of the main special properties, certain qualities, reputation, or other characteristics of the goods;conditions of use of the qualified designation of origin of the goods on labels and in coding of the goods. The publication may contain other information, required by the Agency.

9. Upon publication of the official information on application for registration of a qualified designation of origin of goods and/or rights to use a registered qualified designation of origin of goods, any person shall be entitled to have access to materials of such application in the order, as determined by the Agency.10. Within six months after the date of publication of the official information on application, any person may submit to the Agency objections as to registration of the declared name of place of origin of the goods, or declared geographical designation of origin of the goods and/or the rights to use a registered qualified designation of origin of goods.Submission of such objection shall be subject to payment of a fee. If such fee is not paid, objection shall be considered not submitted.11. The Agency shall send the applicant a copy of submitted objection and information on the person, who has submitted such objection. Within two months after the date of reception of a copy of objection, the applicant should send the Agency a substantiated response to such objection or submit an application for extension of a period of time for response.Submission of an application for extension of a period of time for response shall be subject to payment of a fee. If such fee is not paid, such application shall be considered not submitted.If within the determined period of time, the applicant fails to respond to the objection, such objection shall be considered in due order on the basis of available materials.12. The Agency shall consider an objection and a response thereto within two months after the last date of the period established for such response.An applicant and a person, who has submitted objection, shall have the right to take part in consideration thereof.13. Within two months, the Agency informs the applicant in writing about the decision concerning objection.14. In case there are no objections or objections are recognized as not substantiated, the Agency makes a decision on registration and informs the applicant.If the considered objections are recognized as reasonable, the Agency shall decide to refuse registration of the given qualified designation of origin of goods and/or the right to use of the given registered qualified designation of origin of goods, and inform the applicant.Decisions on refusal to register shall be published in the official bulletin of the Agency.15. Applicant shall be entitled to have access to all materials that are mentioned in a request or the decision by the Agency. The Agency shall provide copies of materials within one month after the date of request. Withdrawal of application

Art. 12

An applicant may withdraw the application at any time prior to the date of registration of a qualified designation of origin of goods and/or the right to use a qualified designation of geographical origin of goods.Appeal against decisions on applications

Art. 13

1. An applicant may lodge an appeal with a court against any decision of the Agency concerning application.

2. An applicant may submit an appeal with the Board of Appeal against decision by the Agency within three months after the date of receiving thereof.

3. A complaint concerning decision by the Agency on application shall be considered by the Board of Appeal not later than within three months after submission of such complaint.

4. Filing a complaint shall be subject to payment of a fee. A complaint shall not be deemed lodged if fee is not paid. 5. Applicant may appeal against a decision of the Board of Appeal with a court.Registration of a qualified designation of origin of goods and/or right to use an already registered qualified designation of origin of goods

Art. 14

1. The Agency shall effect the appropriate registration of a qualified designation of origin of goods and/or the right to use an already registered qualified designation of origin of goods based on its decision.

2. Registration shall be effected by entering the relevant particulars into the Register concerning a qualified designation of origin of goods and/or persons who are entitled to use an already registered qualified designation of origin of goods. The following information shall be introduced into the Register:
    - the declared indication of origin of goods;
    - qualification of the indication, i.e. the name of a place an origin of goods or geographical designation of origin of goods;
    - name of goods, description of its special properties, certain qualities, reputation, or other characteristics;
    - date of decision on registration of the said name of place of origin of goods or geographical designation of origin of goods;
    - information on the persons, who are granted the right to use the registered qualified designation of origin of goods, and the date of the decision.

3. The Agency shall establish the form of Register and the order of keeping it.

4. Applicant may file a petition on introduction of changes and specifications to the Register. The Agency shall establish the order of entering such changes and specifications into the Register.Introduction of changes and specifications to the Register and correction of manifest mistake which has been made by applicant are subject to payment of a fee in established order

5. Any person shall have the right to access information that has been introduced into the Register, and to receive an excerpt from the Register under condition of payment. The Agency shall establish an appropriate order to do the latter.

6. Information about registration of a qualified designation of origin of goods and/or the rights to use of a registered qualified designation of origin of goods shall be published in the official bulletin of the Agency.

7. Registration of a qualified designation of origin of goods can be the basis to recognize as void a trade mark which was registered before and which consisted only of this designation of origin of goods or contained this designation as an element, with exception of cases when the holder of the said trade mark is the person, which has the right to use this designation and it is a part of a trade mark that is not legally protected.Issuance of certificate confirming the right to use a registered qualified designation of origin of goods

Art. 15

1. The Agency shall issue a certificate confirming the right to use a qualified designation of origin of goods within one month following the date of registration of such designation or following the date of introduction into the Register of information about the persons that have been granted the right to use already registered qualified designation of origin of goods under condition of payment of a fee for issuance of a certificate. 2. The Agency shall establish certificate's form and content. 3. Upon request by the certificate's holder, the Agency shall introduce correction of manifest mistakes, and publish information thereof in the official bulletin of the Agency.

4. The certificate that confirms the right to use a qualified designation of origin of goods shall be effective for ten years as from the date the application has been filed for registration. The Agency shall extend the term of certificate's validity for another 10 years upon petition by a holder of certificate that is filed during the last year of the term of certificate's validity under condition the designated competent agency confirms that said holder of certificate manufactures such goods in the geographical place as identified in the Register, and that the properties of goods correspond to the properties as specified in the Register. Extension of the term of certificate's validity is subject to a fee. Petition of a certificate's holder concerning extension of the certificate's validity may be filed within six months after the date the certificate's validity expires, under condition that a fee enlarged by 50 per cent is paid within the same term. Certificate's validity shall expire ahead of due time under conditions as stipulated by this Law.Registration of a qualified designation of origin of goods abroad

Art. 16

Application for registration of a qualified designation of origin of goods in a foreign country in relation to a geographical place in Ukraine can be filed only after official registration thereof in Ukraine.

Chapter IV

THE RIGHTS AND OBLIGATIONS, WHICH ARISE FROM REGISTRATION OF A QUALIFIED DESIGNATION OF ORIGIN OF GOODS AND/OR THE RIGHTS TO USE IT The rights and obligations, which arise from registration of a qualified designation of origin of goods and/or the rights to use it Art. 17

1. The rights and obligations, which arise from registration of a qualified designation of origin of goods and/or the rights to use it shall become effective starting on the date of registration thereof.

2. Registration of the right to use a qualified designation of origin of goods does not limit rights of other persons as to registration of their rights to use such designation.

3. The scope of legal protection, which is granted by registration of the right to use a qualified designation of origin of goods, shall be determined based on the property of goods and boundaries of a geographical place as introduced into the Register and reflected in the certificate.

4. The holder of the certificate shall have the right:à) to use the registered qualified designation of origin of goods;
    b) to take measures to prohibit wrongful use of the qualified designation of origin of goods by persons, who have no such right;
    c) to demand of persons, who have violated the right, to terminate such infringements and remedy material and moral damage in the order as established by the law.

5. Use of the registered designation of origin of goods shall be recognized as:
    a) its application on goods or labels,
    b) on packing, use in advertising;
    c) notes in forms, bills, and other documents, that accompany the goods.

6. Certificate's holder shall have the right to accompany the qualified designation of origin of goods with a warning notice, indicating that such designation has been legally registered in Ukraine. Letters NPO in an oval shall be used as a warning notice about the name of place of origin. Instead of it or together with it there the following words can be placed: "The name of a place of origin of goods registered in Ukraine". Letters GDO in an oval shall be used as a warning notice about the geographical designation of goods' origin. Instead of it or together with it there the following words can be placed: "The geographical designation of place of origin registered in Ukraine"

7. The holder of the certificate shall have no right:
    a) to issue licenses for the use of the qualified designation of origin of goods;
    b) to forbid (hinder) the competent agency to perform supervision as to the availability of specific properties or other characteristics of goods on the basis of which the qualified designation of origin of goods and/or the right to use it has been registered.Obligations of the holder of the certificate

Art. 18

The holder of the certificate shall be obliged to ensure conformity of quality, special properties, and characteristics of the goods, which is being manufactured, with the description thereof in the Register.

Chapter V

ORDER OF CANCELLATION AND TERMINATION OF LEGAL PROTECTION FOR A QULIFIED DESIGNATION OF ORIGIN OF GOODS OR THE RIGHT TO USE IT Grounds of cancellation and termination of legal protection for a qualified designation of origin of goods

Art. 19

1. Legal protection of a qualified designation of origin of goods shall be recognized void if the registration of such designation is recognized void. 2. Legal protection of a qualified designation of origin of goods shall be terminated on the basis of termination of registration of such designation.Invalidation of registration of a qualified designation of origin of goods and/or the right for its use

Art.20

1. Registration of a qualified designation of origin of goods may be recognized void by a court if it does not conform to the conditions of granting legal protection as stipulated by Article 7 of this Law. If registration of a qualified designation of origin of goods or the right to use the said designation has been recognized void, they shall be deemed as such that has not become effective. 2. Registration of the right to use a qualified designation of origin of goods may be recognized void by court if it has been granted with violation of requirements as stipulated by Articles 7, 8, and 9 of this Law. If registration of the right to use a qualified designation of origin of goods and the certificate that confirms the right have been recognized void, the said registration and certificate shall be recognized as such that have not become effective.Termination of registration of a qualified designation of origin of goods and protection of the right to use it

Art. 21

1. Registration of a qualified designation of origin of goods may be canceled by court in the case when specific conditions of a certain geographical place and possibilities to manufacture goods as described in the Register are lost, and when this designation is recognized as a generic name. 2. Registration of a qualified designation of origin of goods in connection to a geographical place abroad shall be also canceled when legal protection of such designation is terminated in the country of its origin. 3. The right to use a registered qualified designation of origin of goods may be terminated: a) upon court's decision on termination of the right due to the loss of specific properties or other characteristics of goods as indicated in the Register. In such case, the right shall be terminated on the date of the court's decision. Upon court's decision on cancellation of registration, the right shall be terminated on the date the registration is canceled; b) in the case of termination of a legal entity or death of a person who are holders of a certificate; c) when certificate's holder files an application with the Agency on renunciation of the right to use such designation. The right shall be terminated on the date of official publication about such renunciation; d) in case of failure to pay a fee for extension of certificate's term of validity. The right shall be terminated on the first day of the next term that has not been paid for.The order of annulment of the registration of a qualified designation of origin of goods and the right to use it

Art. 22

1. The Board of Appeal or courts shall recognize registration and appropriate certificate void. 2. Any person shall be entitled to apply to courts with a claim on annulment of registration and certificate or suspension thereof, as well as on specification of properties of goods as described in the Register or specification of conformity of a qualified designation of origin of goods with geographic place, and on recognition of a registered qualified designation of origin of goods as such that is a generic name. 2. On the basis of decision by the Board of Appeal or a court, the Agency shall introduce appropriate changes to the Register or the Schedule of names of goods and publish such changes in the official bulletin of the Agency.

Chapter VI

PROTECTION OF THE RIGHTS TO USE DESIGNATION OF ORIGIN OF GOODS Infringement of the rights to use designation of origin of goods

Art. 23

1. Infringement of the rights to use designation of origin of goods shall be use of untrue (false) designation or such designation that deceives customers as to the actual origin of goods.

2. Any invasion of the rights of a holder of a certificate for use of a registered qualified designation of origin of goods shall be amenable as provided by Law.

3. Infringement of the rights of a holder of a certificate for use of a registered qualified designation of origin of goods shall be:
    a) Use of a registered qualified designation of origin of goods by a person that do not have the certificate for the right to do so;
    b) Use of a registered qualified designation of origin of goods if the goods do not originate from the geographical place which has been registered for this purpose, even if the actual place of origin of goods or a geographical designation of origin are used in translation and are accompanied with such references as <type>, <kind>, <style>, <sort>, <imitation>, etc.;
    c) use of a registered qualified designation of origin of goods or similar designations for homogenous goods that differ from description in the Register, if such use can deceive customers as to origin of goods and specific properties or other characteristics thereof, and also for not homogenous goods, if and which use can cause damage to the repute of the registered designation or is unlawful use of said repute;
    d) use of a registered qualified designation of origin of goods as a usual (generic) name of goods.

4. There shall be no infringement of rights of holder of certificate in the following cases:
    a) use of a registered qualified designation of origin of goods, as stipulated by subsections 5(b) and (c) Article 17 of this Law, by any person who lawfully purchased the goods that are marked by the qualified designation from holder of certificate and again introduced the goods into exchange (circulation);
    b) use of a qualified designation of origin of goods by a person, who does not possess certificate for the right to use it, but diligently used it before the date of registration. If within 12 months following the date of registration of a qualified designation of origin of goods such person fails to submit application with the Agency in order to obtain the right to use the said designation, further use of the latter shall be considered infringement of the rights of holder of the certificate. Responsibility for infringement of the right to use a qualified designation of origin of goods

Art. 24

1. Infringement of the right to use a qualified designation of origin of goods shall cause civil, administrative, or criminal liability according to the law.

2. When goods enter customs territory of Ukraine with designations that violate the rights of persons that lawfully exercise (holders of certificate) the right to use designation of origin, such goods can temporarily be detained in the order as established by law.

3. Holder of certificate for use of designation of origin shall have the right to demand from violator the following:à) termination of actions that violate the right or pose a threat to do so;
    b) withdrawal of the goods with wrongful use of designation of origin from circulation;
    c) withdrawal of wrongful designation of origin from the goods or from packaging, or destruction of the goods if it is impossible;
    d) indemnification of losses, including lost profit;
    e) indemnification of losses in the amount that do not exceed violator's profit;
    f) other measures, stipulated by law, in relation to legal protection of the rights for designation of origin of goods.

4. Holder of certificate shall have the right to file a claim with a court, demanding to terminate violation and to compensate damages.Disputes heard by courts

Art. 25

1. According to their competence, courts shall examine disputes on the following:
    - legitimacy of registration of a qualified designation of origin of goods;
    - illegal use of a qualified designation of origin of goods;
    - import to customs territory of Ukraine of the goods that are wrongfully marked with a qualified designation of origin of goods.

2. Courts can make decisions on the following:
    - withdrawal of wrongful designation of origin from the goods or from packaging;
    - confiscation of the goods that are wrongfully marked with a designation of origin of goods;
    - withdrawal of the goods with wrongful use of designation of origin from circulation;
    - compensation of damages to a person, who has the right to use a qualified designation of origin of goods;
    - recognition of a qualified designation of origin of goods as a generic name, or annulment of a generic name of goods that has been recognized as such before.

Chapter VI

FINAL PROVISIONS

1. This Law shall become effective in six months after the date of publication thereof.
Other laws shall be effective to the extent they do not contradict this law, before they are brought to conformity with this Law.

2. Within three months following the date this Law becomes effective, the Cabinet of Ministers of Ukraine shall: submit to Verkhovna Rada of Ukraine its proposals concerning changes to laws of Ukraine, that arise from this Law; determine and publish a list of specially authorized agencies that are responsible to determine and control special properties and other characteristics of goods, determine boundaries of geographical places, and identify manufacturers of goods; develop Regulation on the Schedule of generic names of goods;
determine amounts and order of payment of fees for filing applications, issuance of certificates, extension of certificate's validity, extension of terms to file appeals and complaints, etc. as established by this Law;bring its statutory legal acts to conformity with this Law;
ascertain that Ministries and other central executive agencies of Ukraine revise and cancel their legal statutory acts that contradict this Law.

President of Ukraine
L.Kuchma
Kiev, June 16, 1999 #752-XIV

 


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