RESTRICTEDWORLD TRADE
ORGANIZATIONWT/ACC/UKR/68
23 July 1999
(99-3110)
Working Party on the
Accession of UkraineOriginal:  English
ACCESSION OF UKRAINE
Memorandum on Intellectual Property Rights
The following information concerning the intellectual property rights in Ukraine has been
received from the Governmental Commission on Ukraine's Accession to WTO.
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1. Copyright and Related Rights
In order to ensure the lawful usage of works and recordings in Ukraine:
- the Rules for Retail Trade in Audiovisual Works and Recordings have been issued, as
approved by Cabinet of Mini sters No.1209, of 4 November 1997;
- to regulate the trade  in visual works and recordings, the following resolutions of the
Cabinet of Ministers have been adopted: “On Approving the Procedure for Granting
Permits for the Right to Import, Export, and Wholesale and Retail Trade in
Audiovisual Works and Recordings,” No.1302, 17 August 1998, and “On the
Procedure for Agreeing Documents Pertaini ng to the Import, Export, and Wholesale
Trade in Audiovisual Works and Recordings,” No.1389, 7 September 1998;
- the draft Law of Ukraine “On Amending the Law of Ukraine ‘On Copyright and
Related Rights’” has been submitted to the Supreme Rada of Ukraine;
- the draft Law of Ukraine “On Ukraine Joining the Convention on Protecting the
Interests of Record Producers from the Illegal Reproduction of Their Recordings” has
been submitted to the Supreme Rada of Ukraine;
- in 1999–2000 Ukraine intends to join the Convention on Expanding Programming
Signals Transmitted by Satellite, and the Treaty on Author’s Rights on Performance
and Recording;
- the Geneva Convention on the Protection of Program Producers is awaiting
ratification in the Supreme Rada of Ukraine.
With the aim of bringing Ukrainian legislation in line with TRIPS requirements, a draft Law
of Ukraine has been prepared “On Amending the Criminal Code of Ukraine and the Administrative
Infringements Code of Ukraine” (English translation is included at the end of this memorandum).
2. Trademarks and Geographic Indications
In 1999 Derzhpatent will submit to the Cabinet of Ministers of Ukraine a draft Law of
Ukraine “On amending the Law of Ukraine ‘On Protection of Rights to Marks for Goods and
Services’”, which will take into consideration the requirements of EC Directive No.89/104 (EEC),21 December 1988, as well as articles 15–25 of the TRIPS Agreement.WT/ACC/UKR/68
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Pursuant to Annex III of the Agreement on Partnership and Cooperation between Ukraine and
European Communities and the Unilateral Declaration of Ukraine Regarding the Protection of
Intellectual Property Rights, several draft laws have  been prepared with regard to Ukraine joining:
- the Protocol to the Madrid Treaty on the International Registration of Trademarks (Madrid
1989);
- the Nice Convention on the International Classification of Goods and Services for the
Registration of Marks (Geneva 1977, as amended in 1979).
These draft laws were submitted to the Cabinet of Ministers of Ukraine in early 1999.
3. Patents
According to the Procedure for the Cabinet of Ministers of Ukraine to Grant Permission to
Utilize an Invention (Useful Model), Industrial Sample, or Integrated Circuit Design Without the
Consent of the Owner of the Rights to Them, but Paying them Suitable Compensation, approved byCabinet of Ministers of Ukraine Resolution No.516, 29 July  1994, with amendments in the Cabinet of
Ministers Resolution No.444, 6 April 1998, all requirements of Article 31 of the TRIPS Agreement
regarding withdrawal of owner’s rights have been taken into consideration (see items 1, 2, 5, 6–9 of
the said Procedure).
With regard to comments on Article 26 of the Law, namely, that in establishing a term of non-
usage of the invention in Paragraph 1 of Item 1 a term of 3 years is indicated, starting from the date of
publication of the notice of patent issue, the following should be noted. The Paris Convention, with
this aim, establishes a term of 4 years from the date of submitting the application or 3 years from the
date of patent issue. Therefore the choice made by the Ukrainian legislators of the date from which anunlimited number of persons will have the opportunity to find out about the issue of the patent is
completely legitimate. Based on the provisions of articles 19–21 of the Law, the patent is issued
within three months of publication.
In fact, Article 26 does not contradict the rele vant provision of the Paris Convention because,
taking into account the date of publication of the notice of application (18 months from the date of
submitting the invention application), the overall length of these terms would significantly exceed 4years from the date of submitting the application (1.5 years + the term to the date of publishing
information on the patent issue + 3 years following this publication). Moreover, taking into account
that EC experts consider the formulation of these provisions to be ambiguous, this can be taken into
account in amending the current Law.
4. Integrated Circuit Design
The Law of Ukraine “On protecting the rights to integrated circuit designs” has been in effect
since 1997. In addition, Derzhpatent has developed normative acts required for the fulfilment of this
law, which have been registered with the Ministry of Justice of Ukraine. Therefore, Ukrainianlegislation protects all rights to integrated circuit designs.
5. Undisclosed Information (Information not Subject to Discovery)
There are several legislative acts in effect in Ukraine which contain provisions for the
protection of the rights to information not subject to disclosure.  But national legislation does not
currently ensure the full implementation of Article 39 of the TRIPS Agreement.  A draft law on the
amendment of certain legislative acts connected with the protection of such rights is being prepared
with the aim of bringing Ukrainian legislation in line with Article 39 of the TRIPS Agreement.  AWT/ACC/UKR/68
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draft of a single law on the protection of rights of all types of information not subject to disclosure
(with the exception of state secrets) is expected to be developed in the future.
As to the protection of tests and other information provided in the context of marketing
coordination of agrochemical goods (Article 39.3 of the TRIPS Agreement), the UkrainianAgrochemicals Commission works with the scientific-technical documentation of companies
producing pesticides and agrochemicals for the utmost compliance of confidentiality.
6. Application
In order to increase the level of protection of the rights to industrial property, relevant
provisions of the Agreement on Partnership and Cooperation between Ukraine and the EuropeanUnion (UPS) and the TRIPS Agreement will be taken into consideration in the new draft Civil,
Criminal, and Customs Codes of Ukraine, and the Administrative Infringements Code of Ukraine.
Given the codes may have a long time to be adopted, a draft Law of Ukraine “On Amending
Certain Legislative Acts of Ukraine to Increase Liability for Infringements in the Area of IntellectualProperty” has been prepared. It amends the relevant norms of the existing current Criminal, Criminal
Procedures, Civil Procedures, and Arbitration Procedures Codes, as well as the Administrative
Infringements Code. The draft law has been submitted to the Cabinet of Ministers of Ukraine.
Ukraine is currently a signatory to nine main international agreements in the area of
intellectual property, including multilateral conventions on intellectual property rights such as:
- Paris Convention on the Protection of Industrial Property (Stockholm Act of 1967, as
amended in 1979), 25 December  1991;
- Madrid Treaty on the International Registration of Marks (Stockholm Act of 1967, as
amended in 1979), 25 December  1991;
- Agreement on Patent Cooperation (Washington, 1970, with corrections introduced in 1979
and 1984), 25 December 1991;
- Berne Convention on the Protection of Works of Art and Literature, 25 October 1995;
- International Convention on the Protection of New Plant Varieties (UPOV, Geneva Act of
1978), 3 November 1995;
- Budapest Agreement on the International Recognition of Depositing Microorganisms for
Patent Procedure Purposes, 2 July 1997.
7. General
Herein information on the status of draft legislative acts in several areas of intellectual
property, including: geographical markings, patents, border enforcement, IC design, and undisclosed
information; as well as information on other legislative acts which apply in the area of intellectual
property protection. (Also a schedule of the expected completion of the relevant legislative
procedures, and the texts of the more important draft provisions).
Derzhpatent has developed a draft Law of Ukra ine “On Amending Certain Legislative Acts of
Ukraine to Increase Liability for Infringements in the Area of Intellectual Property”, which introduces
relevant norms into the current Criminal, Criminal Procedures, Civil Procedures, and Arbitration
Procedures Codes, as well as the Administrative Infringement Code of Ukraine. The draft law has
been submitted to the Cabinet of Ministers of Ukraine.
The Supreme Rada of Ukraine is considering the draft law “On Amending the Law of
Ukraine ‘On Protection of Rights to Sorts of Plants’” which includes all provisions required by the
International Convention on the Protection of New Plant Varieties (UPOV, Geneva Act of 1991). TheWT/ACC/UKR/68
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draft fully complies with the TRIPS Agreement (Art. 27). After the adoption of this draft law by the
Supreme Rada of Ukraine, it will be possible for Ukraine to join the International Convention on the
Protection of New Plant Varieties (UPOV, Geneva Act of 1991).
A draft Law of Ukraine “On Amending the Law of Ukraine ‘On the Protection of Rights to
Inventions and Utility Models’”, has been submitted to the Supreme Rada. It is consistent with the
provisions of EC Directive No.1768/92 dated 18 June  1992, on the additional protection of rights to
medical products. The term of validity of the rights, as certified in the invention patents pertaining to
medical products whose use requires administrative licensing procedures, may be extended upon a
petition by the patent owner, for a time equivalent  to the period between submitting the application
and the date of receiving administrative license for the use of the medical product, but not more than
for 5 years. Articles 27–34 of the TRIPS Agreement were also taken into consideration. The draft lawis currently being reviewed by the Supreme Rada of Ukraine.
Draft laws concerning amending the Laws of Ukraine “On Protection of Rights to Industrial
Marks” and “On Protection of Rights to Marks for Goods and Services,” which will take into accuont
a number of provisions of the EC Directives and the TRIPS Agreement are being submitted to theCabinet of Ministers for consideration in 1999. For example, in the draft Law of Ukraine “On
Amending the Law of Ukraine ‘On Protection of Rights to Marks for Goods and Services’”, takes into
account EC Directive No.89/104(EEC) and Articles 15–25 of the TRIPS Agreement.
Pursuant to Annex III of the Agreement on Partnership and Cooperation between Ukraine and
European Communities and the Unilateral Declaration of Ukraine on the Protection of Intellectual
Property Rights, draft laws of Ukraine have been prepared for Ukraine's accession to:
- the Protocol to the Madrid Treaty on the International Registration of Trademarks (Madrid
1989);
- the Nice Convention on the International Classification of Goods and Services for Registering
Marks (Geneva 1977, as corrected in 1979).
- penalties for the violation of intellectual property rights.
According to Article 42 of the Law of Ukraine “On Copyright and Related Rights”, the
protection of personal and property rights of persons possessing author’s rights and joint rights can beachieved according to a procedure set out in administrative, civil, and criminal legislation.
According to item 1 of Article 43 of the said Law, in the case of the use of another person’s
work without consent the non-compliance with conditions  in the usage of goods subject to joint rights,
or the violation of personal and property rights of persons possessing author’s rights and joint rights,claims may be submitted to courts.
Item 2 of Article 43 states that a court has the right to prohibit the unlawful use of the
protected right. It also may prohibit the distributi on of the affected product, and order confiscation and
destruction thereof, and of related equipment.
According to Article 44, persons possessing author’s rights and joint rights can demand:
- compensation for losses suffered as a result of violation of author’s and joint rights, including
lost revenues;
- seizure and reallocation of profits the violator obtained as a result the violation of author’s
rights and joint rights, to their benefit instead of compensation of losses;WT/ACC/UKR/68
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- payment of compensation, to be specified by the court, in the sum of from 10 to 50,000
minimum monthly wages, as established by the Ukrainian legislation, instead of
compensation losses or the seizure of profits.
In addition to the compensation of losses and the seizure of profits, a court can impose a fine
in the amount of 10 percent of the sum decreed by the court for the claimant’s benefit. The is paid into
the relevant state budget. Violators may also be required to compensate persons possessing author
rights for moral damages.
In accordance with Article 30 of the Law of Ukraine “On Protection of Rights to Inventions
and Utility Models” and Article 27 of the Law of Ukraine “On Protection of Rights to Industrial
Samples”, disputes including the respective rights are declared by the appropriate judicialproceedings, review disputes concerning the rights to inventions, utility models, industrial samples, as
well as the determination of patent owners, the violation of property rights of patent owners, the
issues of licensing agreements, the rights of prior usage, as well as remuneration and compensation
questions.
Article 21 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”
states that all questions under this law are to be decided by judicial proceedings.
According to Articles 26 and 27 of the Law of Ukraine “On the Protection of Rights to Sorts
of Plants”, persons guilty of violating this law are subject to disciplinary, civil-legal, administrative,
and/or criminal liability. Disputes connected with the implementation of this law are resolved
according to procedures established by law.
Pursuant to Articles 51–52 of the Administrative Infringements Code of Ukraine, the use of
patented varieties of plants without the consent of the patent owner, or the use of plant under a namedifferent from the name entered in the State Register of Plant Varieties of Ukraine, is punishable by a
fine on citizens of between three and ten untaxe d minimum monthly incomes, and on officials of
between seven and fifteen untaxed minimum monthly incomes.
According to part 1 of Article 164-3 of the above Code, illegal use of a company name or a
trade mark, etc., is punishable by a fine of betw een thirty and forty-four untaxed minimum monthly
incomes, along with the confiscation of manufactured products, production equipment, and rawmaterials.
According to Article 221 of the above Code, cases of administrative infraction are reviewed
by district court judges.
According to item 1 of Article 255, where admi nistrative infractions are reviewed by such
courts, infraction protocols must be compiled by the Antimonopoly Committee of Ukraine (51-2,
parts 2 and 3 of Article 164-3).
In civil legislation, the Civil Procedure Code of Ukraine (CPC) establishes appropriate
procedures concerning the filing of a complaint, the presentation of evidence, the rights of the parties,
and the review of decisions. The CPC also sets out rules for the execution of decisions, the payment
of damages, and other enforcement measures.
According to Article 74 of the Customs Code of Ukraine, it is prohibited to import into or to
export from Ukraine goods in violation of intellectual property rights.
Pursuant to Article 86 of the Customs Code of Ukraine, goods and other objects, which are
not allowed to pass into Ukraine as a result of established prohibitions and are not exported fromWT/ACC/UKR/68
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Ukrainian territory on the date of their import, are subject to mandatory transfer to customs for
storage.
The current Criminal Code of Ukraine specif ies criminal liability for the violation of
intellectual property rights.
Article 136 deals with the violation of authors’ rights, person’s scientific publications,
reproduction or dissemination of another person’s work. Such violations are punishable by up to two
years of correctional work, or by a fine of between fifty and one hundred twenty minimum [monthly]
incomes.  However, it is necessary to prove intent to establish an infraction under this provision.
Article 137 penalizes the illegal use of patents and related intellectual property rights. Here
the punishment is two years of correctional work or a fine of thirty minimum (monthly) incomes.
Intent is a prerequisite of this violation.
The following draft amendments have been submitted to the Supreme Rada:
- Article 167.  Violation of intellectual property rights.  Issue under one’s name or other claim
on authorship of another person’s work of science, literature, or art, illegal reproduction or
dissemination of such work, are punishable by a fine of between seven and fifteen untaxed
minimum [monthly] incomes, or up to two years of correctional work.
Claiming authorship of another person’s discoveries, inventions, useful models, industrial
samples, or cost-saving proposals, or publicizing the essence of the invention, useful model,
or industrial sample before their official publication without the author’s permission, are
penalized by a fine of between seven and fifteen untaxed minimum [monthly] incomes or up
to two years of correctional work, or by an arrest term of up to six months.
- Article 209. Illegal use of another person’s trademarks, service marks, company names
(registered), or goods markings—if it has caused significant damage to the interests of the
state or a business entity, or was connected to large amounts of income—is penalized by a
fine of between one hundred and one hundred fi fty untaxed minimum [monthly] incomes, or
by up to two years of correctional work.
Protection of well-known trade or service marks which are not similar to those whose
trademarks were registered (Article 16.3, TRIPS).
In the draft Law of Ukraine “On Amending the Laws of Ukraine ‘On Protecting the Rights to
Marks for Goods and Services’”, provision is made to take into account the requirements of ECDirective No.89/104(EEC), 21 December 1988, a nd Articles 15–25 of the TRIPS Agreement
(including the protection of trademarks in accordance with Article 16.3 of TRIPS concerning the
application of Article 6
bis of the Paris Convention).
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