Manufacturers of goods, especially those which are known for the high quality of their products, are faced with counterfeiting of their products throughout the world. Currently, counterfeiting is not only the problem of the consumers that are misled, it is more widely the problem for economies and civil order.
In Ukraine, there are several anti-counterfeiting methods. These methods may be applied individually as well as in combination with each other.
1/ Registration of intellectual property object into the Ukrainian Customs Registry, handling of Customs surveillance activities
In Ukraine, the right owner has a right to include intellectual property objects (trademarks, copyrights, inventions, industrial designs, utility models, etc.) in the Customs Registry. The term for registration is up to 30 days.
After the object is included the Customs authorities start to trace imports/exports of the goods with the use of the IP object. If, based on the customs registry data, the Customs officers suspect the goods to be counterfeit, they notify the representative of the right owner accordingly.
The right owner then has the ability to (i) initiate legal actions against the importer/exporter of the counterfeit goods to get the decision of the court to destroy counterfeit goods and oblige the importer/exporter to compensate damages caused by infringement (ii) initiate an administrative case to get the Customs decision for destruction of the counterfeit goods (iii) to destroy counterfeit goods, upon the importer’s/exporter’s consent (iv) to remove the IP object from the goods, upon the importer’s/exporter’s consent and to release them (v) to issue a permission letter to release the goods in case the goods are original.
The important point in handling customs registry matters is participating in Customs training meetings to instruct customs officers on the characteristics that differentiate the counterfeit goods from original ones, in detail.
2/ Actions against the sale of counterfeit goods in the Ukrainian market
In case the right owner is faced with the sale of counterfeit goods in the Ukrainian market, the most relevant actions are (i) applying to the Ukrainian police regarding the illegal usage of the IP object on the product.
Before applying to the police, it is necessary to have evidence confirming the infringement, for this purpose a test purchase should be made.
After the police send the materials of the case to the court, the counterfeit goods are to be destroyed upon the court decision and then the right owner has a right to file a civil court claim to request compensation for damages caused by infringement.
It is also possible to (ii) initiate a court action asking the court to confirm the infringement of intellectual property rights, to destroy counterfeit goods and to request compensation from the infringer.
3/ Actions against the sale of counterfeit goods through the internet
In case the right owner is faced with the sale of counterfeit goods through the internet, the most relevant option is (i) preparing and sending a cease and desist letter. According to our practice, the percentage of satisfaction of the right owner’s demands has increased in recent times. Pre-trial negotiations should also be used in court proceedings.
The other problem is the sale of counterfeit products through Ukrainian marketplaces such as Prom.ua, Bigl.ua, Rozetka.ua and others. These marketplaces provide the users with the ability to advertise/sell the products. The marketplaces are not responsible for the content posted by the users. In order to get the infringing URLs deleted, it is required (ii) to prepare and send take-down requests (based on their policies) to the administration of the marketplaces and request the infringing content be taken down. It should also be noted that negotiations with the marketplaces should also be used while take-down procedures are not yet completely automatic.
Kievpat patent agency has an extensive experience in the activities mentioned above and, depending on the circumstances of each particular case, we will develop a specific anti-counterfeit strategy for the right owner.
Authors:
Nina Moshynska
Managing Partner
Patent & Trademark Attorney
Patent Agency “Kievpat” Ltd.
8th Floor IQ Business Centre, 13-15, Bolsunovska Str., Kyiv, 01014, Ukraine
Phone: +380 (44) 594-01-72
MoshynskayaN@kievpat.ua
http://www.kievpat.ua
Pavel Tatomir
Attorney at law
Mob.: +380 (67) 506-78-11
Phone: +380 (44) 594-0172
Tatomirp@kievpat.ua
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