By adopting Decree No. 320 (on 11 May 2017, effective as of 18 May 2017), the Cabinet of Ministers of Ukraine launched the next phase of the ongoing IP reform outlined in the Concept for Reforming the State Intellectual Property System in Ukraine (the Concept) approved earlier (more on the IP reform here). This phase finalizes liquidation of the State Intellectual Property Service (SIPS) and transfer of all its functions to the Ministry of Economic Development and Trade of Ukraine (MEDT).
Even though the liquidation of SIPS was announced back on 23 August 2016, as of today the government has not made public any guidelines to ensure the transfer of IP policy functions is smooth and trouble free.
What to expect from the transition?
The most straightforward cases of IP rights registration handled by SE Ukrpatent (the Ukrainian Trademark Office) should not be significantly affected by this transition.
However, some delays and unusual issues related to the physical relocation of personnel and reestablishment of internal administrative procedures may affect the following services:
- registration of IP licenses and IP assignment agreements;
- review of oppositions to decisions of the MEDT on IP registration issues;
- designation of trademarks as well-known in Ukraine;
- representation of the MEDT in the courts in IP cancellation and invalidation cases.
While POAs mentioning SIPS issued prior to 18 May 2017 will still be accepted, new POAs issued after this date should indicate the MEDT as the government body responsible for IP registration.
Change of civil court responsible for IP litigation.
The physical relocation of the state IP agency to another district in the City of Kyiv also triggers a change of the civil court responsible for all disputes filed against individuals involving cancellation and invalidation of state-issued IP rights certificates, including trademark certificates, patents for industrial designs, utility models, and inventions.
Therefore, from 18 May 2017, Pecherskiy District Court of the City of Kyiv is the proper venue for initiating the following IP-related court actions:
- cancellation and invalidation actions involving state-issued IP rights certificates owned by individuals;
- IP rights enforcement actions in relation to online IP rights infringements committed by individuals (more on online IP rights enforcement here).
All court actions filed with the Solomyanskiy District Court of the City of Kyiv prior to the above-indicated date will be considered by this court.
IP-related disputes may be further transferred to another civil court after the establishment of the National Agency for Intellectual Property (NAIP), unless a specialized IP court with exclusive jurisdiction over all IP-related disputes is created first.
What is next?
According to the Concept, the final goal of the IP reform is the establishment of the NAIP. Therefore, we might expect another transfer of IP policy functions from the MEDT to the NAIP. However, when the NAIP will be created is unclear, because the government has not yet submitted the necessary draft law to the Parliament.
This LEGAL ALERT is issued to inform Baker McKenzie clients and other interested parties of legal developments that may affect or otherwise be of interest to them. The comments above do not constitute legal or other advice and should not be regarded as a substitute for specific advice in individual cases.