Posts Tagged: "Ukraine"

As horrifying images continue to flow from Ukraine, politicians in the United States and Europe find themselves increasingly pressured to expand economic sanctions against Russia. On April 6, 2022, the White House announced a prohibition on new investment in Russia by any U.S. person. This move has undoubtedly been a factor in the stunning exodus of U.S. companies from the region, as it leaves management teams in legal limbo as to whether maintaining current facilities—or even repairing equipment—could be considered a prohibited “investment.”

The U.S. Patent and Trademark Office (USPTO) announced today that certain intellectual property (IP)-related transactions are now authorized in Russia, following publication by the U.S. Department of Treasury’s Office of Foreign Assets Control (OFAC) of General License No. 31. The authorized transactions include the filing and prosecution of any application to obtain a patent, trademark, or copyright, as well as renewal and maintenance fees.

Every night for the last six weeks, the world has seen images and videos of the Russian military laying waste to Ukraine in what can only fairly be characterized as a medieval campaign of destruction. The Russian military has annihilated entire cities, targeted civilians, murdered women and children, and is preventing the American Red Cross from delivering food and medical supplies to civilians trapped and unable to escape. Nearly the entire world has condemned the atrocities committed during this unprovoked Russian war of aggression against its sovereign neighbor. China, who has entered into a no-limits cooperative agreement with Russia, is a notable exception.

In November, 2019, amendments to the Customs Code of Ukraine regarding the protection of intellectual property rights when moving goods across the customs border came into force. The principle of international exhaustion of rights was officially introduced into Ukrainian legislation with this Law.

In June 2019, five-years of legal proceedings between Microsoft and Zhytomyrgas PJSC in the Ukrainian courts came to an end. The parties began their battle in the context of criminal proceedings and ended the dispute in the economic court. Microsoft ultimately was successful. Ukraine has been among the countries on the U.S. Special 301 Report, prepared by the Office of the U.S. Trade Representative, for years due to its high rate of copyright violations. Ukrainian citizens, government agencies and enterprises are no exceptions. At the same time, Ukraine ranks second in Eastern Europe in the number of software developers and number one in the world in the number of developers per 1,000 inhabitants.

Two signs “Oschadbank” and “Sberbank” have the same meaning in Ukrainian and Russian, namely, the abbreviation of SBEREGATELNYY BANK (Savings Bank). After the Soviet Union disintegration in 1991, the signs began to be used separately in Ukraine and Russia. Between 2003-2006, Ukrainian Oschadbank JSC registered two trademarks: Oschadbank and Sberbank. In 2007, Sberbank JSC entered the Ukrainian market under the combined sign “Sberbank Rosii” (Savings Bank of Russia) and after a while in 2015 began to use the trademark without the “Rosii” element.

As of September 1, 2017, the Association Agreement between the European Union and Ukraine came fully into force. For three years Ukrainian legislative and executive authorities were obligated to implement the provisions of the Agreement in the national legislation, however much has not been done… With the Agreement in force without implementing Ukrainian legislation companies can approach the interpretation of European and national law in two ways. Competing companies can, and likely will, differ in their approach to and interpretation of certain provisions and they will have to fight their disputes in court.

According to Ukrainian regulations, there may be several owners for one mark. But what if one of such owners decides to execute the exclusive right without the consent of the other owners? Eventually, disputes may arise, and Ukrainian courts happened to resolve one of such cases; AQUALIFT v. National Center for Medical Technologies LLC (NCMT) and NIC.UA.

Kyiv, Odessa, Crimea, Novy Svet, Inkerman – not only these are the names of locations, but also the signs registered as trademarks for alcoholic beverages, and some cases, the companies themselves, in the Ukraine. The Odessa Sparkling Wine Company has been producing and selling ODESSA branded sparkling wine for more than 20 years now.  However, they have faced an unusual challenge when trying to register ODESSA trademark.

The Voice, So You Think You Can Dance, The X-Factor and may other TV shows have become popular worldwide. All these shows were adapted for TV viewers in various countries, so they could watch their “local” product. Today, a TV format is the moving force of progress within the television industry. As the first TV formats were created, their owners started to think about how best to protect their intellectual property rights. The thing is, a TV format is not recognized as intellectual property either by national regulations or under the Berne Convention on the Protection of Literary and Artistic Works… It’s important to understand that to create a TV format, it is necessary to develop a TV program template containing the detailed description of a show and its and its constituent elements (music, the number of hosts and their roles, the set, etc.).

In my previous article: Challenging Aspects of the Legal Protection of Non-Traditional Trademarks: Shape Trademarks, I mentioned that man has five senses and, accordingly, can perceive information, including trademarks, not only by sight. The diversity of human sensations cannot be reproduced by graphics alone. This is what makes the registration and protection of such trademarks, which can be also perceived by other senses, so interesting, unique and at the same time problematic.

Classic trademarks consist of word or graphic elements, or their two-dimensional combinations. Naturally, they are targeted at one human sense only. Such trademarks can only be perceived by sight. Sight can also help us to perceive non-traditional trademarks such as “color” and shape trademarks. However, apart from sight, man has four other senses: smell, touch, hearing and taste.

The distinctive character is one of the universally accepted criteria for registration of a sign as a trademark. This criterion is derived from the main function of a trademark, i.e. to distinguish the goods or services of one undertaking from those of other undertakings. This requirement is set out in Article 6quinquies (B) (2) of the Paris Convention for the Protection of Industrial Property and in the national laws of the countries that are parties to this Convention. Ukraine and the European Union (the “EU”) are no exception. Both in Ukraine (Article 6(2) of the Law of Ukraine “On Protection of Rights to Trademarks”) and in the EU (Article 3(1) of the EU Directive to approximate the laws of the Member States relating to trade marks), signs which are devoid of any distinctive character may not be registered as trademarks.

Protection of the official names of States and prevention of their registration and use as trademarks have been the focus of attention of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications at the World Intellectual Property Organization (the “SCT”) for over six years (since June 2009). Each of the WIPO Member States has both its own national procedures with their peculiarities and some coinciding positions on the subject. Generally speaking, when performing the examination, the competent national authority examines the sign applied for registration as a trademark and consisting of or containing the name of a State in light of formal and substantive legal requirements, like any other sign.