In August 2020 the new laws introducing amendments to trademark and patent legislation (the “New Laws”) came into force. These changes concern patent and trademark owners, and producers of pharmaceuticals in particular.
Therefore, it is important to have full knowledge of mechanisms aimed at improving the prosecution and enforcement of patent and trademark rights.
Key amendments introduced by the New Laws
1. New deadlines for opposition to a trademark application
Prior to August 2020, an opposition could be filed during the whole period of trademark registration (approximately 20 – 22 months). Under the New Laws, an opposition could only be filed no later than within the first three months after the publication of the information on the trademark application in the Bulletin.
Please note that the date of filing an application and the date of publication of the information in the Bulletin are two completely different dates. The publication in the Bulletin is made in approximately three months after the application has been filed.
The opposition is considered by the Ukrainian Intellectual Property Institute (“Ukrpatent’) during the substantive examination of the application and, as a result, the respective decision is made at the end of the examination term. If the opposition is not satisfied, the opposing party may appeal this decision to the Appeals Chambers of the Ministry for Development of Economy, Trade and Agriculture of Ukraine (the “Appeals Chamber”). Since there are no post-grant opposition proceedings regarding trademarks in Ukraine, the appeal mechanism considerably expedites the challenge of the trademark registration as well as reduces its cost in contrast with filing the respective claim with the court.
If the appeal is not sustained either, the trademark is considered as registered, yet the opposing party retains the right to invalidate the trademark registration through the court. If the opposition is not submitted in time and, as a result, the trademark is registered in Ukraine in due course, the opposing party may also have recourse to the court.
Therefore, it is important to monitor the publications of trademark applications in the Bulletin. To that effect, one may seek assistance of a trademark attorney or use trademark monitoring services.
2. New limitations of exclusive rights of trademark owners
The New Laws introduced limitations of exclusive rights, in particular the right to use the trademark. Thus, it is legal to use someone else’s trademark in trade to indicate the intended use of goods and services, such as additional equipment or spare parts. Free use of someone else’s trademark with respect to the description of qualities of certain goods and services is also permitted in trade. Such use is authorised in comparative advertising to emphasise the differences between goods and services in an objective manner. However, the use of trademarks should be based on fair business practices.
For instance, if the goods and services of a company are connected with a certain trademark, the company may use it in the course of trade but in such a manner that the customer would not perceive the company as the owner of this trademark. Therefore, entities may use other trademarks in business and trade on the grounds of fair competition.
3. The period of non-use of a trademark without the risk of its cancellation is extended
Prior to the amendments, the non-use of a trademark within a period of three years was a ground for early cancellation of a trademark. Under the New Laws, the period is prolonged to five years subject to the Ukraine-European Union Association Agreement.
Thus, if a trademark is not used for five consecutive years, any person may file a claim on cancellation of the trademark registration with the court.
Please note that if a trademark’s use is commenced or renewed prior to filing the appropriate claim, the cancellation becomes impossible. However, this provision no longer applies if the preparation for such renewal or commencement of use started within three months prior to filing of the claim or after the trademark owner found out about the possibility to file such a claim.
4. New trademark invalidation ground in relation to the trademarks registered by agents without an authorisation.
The New Laws introduced a new ground for invalidation of trademark certificates. Owners of trademarks registered abroad may pursue legal action against their agents or representatives who have registered the same trademarks in Ukraine in bad faith. Apart from invalidation of the trademark certificate, the respective owner may request the court to transfer him the rights to the trademark registered in Ukraine. This is quite a new and helpful option.
5. The line between objects of inventions and utility models became clearer
Prior to the amendments, the objects of inventions and utility models were nearly identical. Under the New Laws, an invention can be either a product (a device, substance, strain, culture of cells, plants and animals, etc.) or a process (method). A new application of a known product or process was excluded from this list.
A utility model is either a process (method) or a device (one of the kinds of a product). However, there is still an issue of separating a device from other products as the legislation does not provide for the definition of a device.
6. Partial implementation of the Bolar provision in Ukraine
Another amendment is a new provision known in the pharmaceutical legislation of other countries as the Bolar provision. Thus, (1) the importation of goods manufactured using an invention (utility model) into the customs territory of Ukraine for research and/or (2) the use of an invention (utility model) in research for preparation and submission of information for a medicinal product registration, are not recognised as patent rights infringements.
Hence, it allows the procedures necessary for the development and preparation to the registration of generic pharmaceuticals before the patent expires and minimises the period between the beginning of the development of a generic and its market entry.
Notwithstanding the fact that the new legislation granted the right to use an invention for research and preparation for registration of generic pharmaceuticals, the application for registration of a generic and further registration itself infringes the rights of the patent owner.
Consequently, the Ukrainian interpretation of the Bolar provision does not provide the producers of generics with an opportunity to register the medicines and await the patent expiration of the original pharmaceuticals.
7. Post-grant opposition procedure now applies to inventions and utility models
Under the New Laws, any person may file an opposition to the Appeals Chamber concerning an invention (utility model) due to its non-conformity with patentability criteria.
An opposition may be filed within nine months from the date of publication of the state registration of an invention. As for a utility model, an opposition may be filed during the whole period of its validity.
The parties in this case are the claimant and the patent owner. The opposition is reviewed within four months after its submission subject to payment of the submission fee. This period may be prolonged by two months upon a request by any of the parties and subject to payment of the submission fee. The review of an opposition may also be suspended for not more than two months.
Therefore, the Appeals Chamber decides on the opposition concerning an invention or utility model within eight months at the latest. Please note that if the claim is satisfied, the patent rights are deemed cancelled starting from the day that follows state registration of the invention (utility model).
Considering financial resources and time, the post-grant opposition procedure is far more effective and efficient in contrast with court proceedings.