Kyiv, 6 Ivana Dracha St., of. 15
Your power to winProtection against counterfeit goods
The consumer market in our country is flooded with counterfeit goods. Medicines, clothing and footwear, and even mobile gadgets and household appliances are the most frequent targets of counterfeiting. There is also the problem of so-called “grey” imports, when original goods of a particular manufacturer are brought into Ukraine not by the manufacturers or their official distributors but by persons not authorised to do so.
The Customs Code of Ukraine provides that customs authorities must assist in protecting intellectual property rights when goods are moved across the customs border of Ukraine.
To assist in protecting intellectual property rights, customs authorities have certain powers granted by law, namely:
- checking goods for infringements of intellectual property rights;
- taking samples of goods in the course of customs control and customs clearance in order to establish the characteristics that determine whether the goods were made using intellectual property;
- suspending customs clearance of goods on the basis of the customs register of intellectual property rights and on the initiative of the supervisory authority;
- destroying goods whose customs clearance has been suspended on suspicion of infringing intellectual property rights.
The Customs Register of Intellectual Property was created to make the protection of intellectual property rights easier.
Owners of intellectual property who have reason to fear that their rights may be infringed may file with the relevant supervisory authority an application for assistance in protecting their property rights in the intellectual property. On the basis of this application, the information will be entered in the Customs Register of Intellectual Property Rights.
The filing and consideration of this application are governed by the Procedure for Registration in the Customs Register of Intellectual Property Rights, approved by order of the Ministry of Finance of Ukraine No. 648 of 30.05.2012.
The problem, however, is that right holders’ applications often lack the information needed to identify counterfeit goods. The absence of such information in the Customs Register of Intellectual Property Rights sometimes leads to delays in the customs clearance of original goods.
Moreover, there are cases when the suspension of customs clearance for an intellectual property infringement is initiated by dishonest persons, which then creates obstacles for bona fide right holders. For example, dishonest entities register trademarks and industrial designs with minor differences from registered ones and then, on the basis of the certificate or patent duly obtained, file with the customs authority an application for assistance in protecting their property rights in those objects by having the information entered in the customs register. As a result, the right holder may in fact be deprived of the right to ask the customs authority for assistance in protecting its property rights in the relevant intellectual property. The way out of such a situation may be for the bona fide right holder to go to court to protect its infringed intellectual property rights, which requires an attorney’s help.
advice on the measures customs authorities take to assist in protecting intellectual property rights;
representing clients before customs authorities in intellectual property matters;
drafting applications, requests and other legal documents for entering data in the Customs Register of Intellectual Property Rights;
appealing decisions, actions or inaction of customs authorities in intellectual property matters.
A declarant should know that customs authorities have a duty to assist in protecting intellectual property rights when goods are moved across the customs border of Ukraine.
If, during customs control, the relevant authority uses the customs register of intellectual property rights to detect goods suspected of infringing intellectual property rights, their customs clearance is suspended and the goods are placed in that authority’s warehouse. At the declarant’s request, permission may be granted to store such goods without placing them in the supervisory authority’s warehouse. Goods whose customs clearance is suspended are stored at the owner’s expense.
The decision to suspend customs clearance of goods for up to 10 working days and, if necessary, to extend this period by no more than 10 working days is taken by the head of the supervisory authority or the official acting as head.
If customs clearance of perishable goods is suspended, the suspension lasts three working days and cannot be extended. In this context, perishable goods are goods whose shelf life or use-by date would expire within 20 days of the suspension of their customs clearance.
During the suspension of customs clearance on suspicion of an intellectual property infringement, the owner of the goods may apply to the supervisory authority for the release of the goods before the suspension period expires. The decision on such early release is taken by the head of the supervisory authority, or the person or official acting as head, subject to certain conditions set by the Customs Code of Ukraine.
The filing and consideration of applications for entry in the Customs Register are governed by the Procedure for Registration in the Customs Register of Intellectual Property Rights, approved by order of the Ministry of Finance of Ukraine No. 648 of 30.05.2012.
An application for entry in the Customs Register can be filed either on paper or electronically. An electronic application must bear the right holder’s electronic digital signature and be accompanied by electronic annexes listed in Registration Procedure No. 648 of 30.05.2012.
The application and its annexes must be considered within no more than 30 days of the date the application is filed. You should also know that the registration procedure requires no fees, guarantee payments or deposit.