Protection of intellectual property rights

Intellectual Property Lawyer in Kyiv

Let us first understand the basic concepts.

According to Article 418 of the Civil Code of Ukraine:

1. The right of intellectual property is a person’s right to the result of intellectual, creative activity or other object defined by this Code and other law.
2. Intellectual property rights consist of personal non-property rights of intellectual property and (or) property rights, the content of which in respect of certain intellectual property objects is determined by this Code and other law.

According to part 1 of Article 419 of the Civil Code of Ukraine, the right of intellectual property and the right of ownership of a thing are independent of each other.

According to part 1 of Article 420 of the Civil Code, objects of intellectual property rights, in particular, include:

• literary and artistic works;
• computer programs;
• data compilations (databases);
• performance;
• phonograms, videograms, broadcasting programs (programs);
• scientific discoveries;
• inventions, utility models, industrial designs;
• layouts (topographies) of integrated microcircuits;
• rationalization proposals;
• plant varieties, animal breeds;
• commercial (trade) names, trademarks (marks for goods and services), geographical indications;
• trade secrets.

I will briefly describe some objects of intellectual property rights and documents certifying the rights of subjects of intellectual property rights to these objects.

The right to a scientific discovery is certified by a diploma (part 2 of Article 458 of the Civil Code).

Obtaining intellectual property rights to an invention, utility model, industrial design shall be certified by a patent (Part 1, Art. 462 of the Civil Code). But the subjects of intellectual property rights to an invention, utility model, industrial design must consider the right of the previous user in respect of these objects (Article 470 of the Civil Code).

Obtaining intellectual property rights to the layout of an integrated microcircuits is certified by a certificate (Part 1, Article 472 of the Civil Code). But the subjects of intellectual property rights to the layout of an integrated microcircuits must also reckon with the right of the previous user (Article 480 of the Civil Code).

Information about a trade name may be entered in registers, the order of maintenance of which is established by law (part 3 of Art. 489 of the Civil Code)

Acquisition of intellectual property rights to a trademark (trademark for goods and services) shall be certified by a certificate (State Register of Ukraine Certificate for Trademarks for Goods and Services) (part 1 of Article 494 of the Civil Code).

Protection of intellectual property rights by the court

The order of use of the intellectual property object is regulated by Art. 426 of the Civil Code of Ukraine, including by granting permission (licensing), signing of the license agreement, etc., but not all respect certain legal conditions and there are disputes.

The subject whose rights are violated in this area, in the case of appeal for judicial protection (plaintiff), has the right to choose the means of protecting the violated right, as general (Article 16 of the Civil Code) and special (Part 2, Article 432 of the Civil Code), which include:

1. Application of immediate measures to prevent the violation of intellectual property rights and preservation of relevant evidence;
2. Stopping the passage through the Ukrainian customs border of goods imported or exported in violation of intellectual property rights;
3. Removal from civil circulation of goods produced or introduced into civil circulation in violation of intellectual property rights and the destruction of such goods;
4. Removal from civil circulation of materials and implements, which were used mainly for the manufacture of goods in violation of intellectual property rights or the seizure and destruction of such materials and implements;
5. Application of a one-time monetary penalty in lieu of damages for unlawful use of the object of intellectual property rights. The amount of penalty is determined in accordance with the law, taking into account the guilt of the individual and other circumstances of significant importance;
6. Publication in the mass media of information about the violation of intellectual property rights and the content of the court decision on such an offense.

In order to form a legal position on the case, even a civil case, the explanations of the Supreme Economic Court of Ukraine as set out in the Decision of the Plenum of the Supreme Economic Court of Ukraine № 12 dated October 17, 2012 «On some issues of practice resolution of disputes related to the protection of intellectual property rights» will be useful.