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22 September 2015

Brands Update. August-September 2015

In this issue of Brands Update we consider the decision of the Supreme Court of Ukraine explaining which courts are competent to cancel decisions of antitrust authorities, answer questions regarding a new tool for capturing of IP rights infringements on the Internet that was officially presented by the  Intelzakhyst State Enterprise (Intelzakhyst), and analyze the changes in the Ukrainian Institute of Intellectual Property State Enterprise (UAPTO) practices in part of trademark applications and paid services.

UNFAIR COMPETITION. Is the issue of court jurisdiction over unfair competition disputes finally closed?

Most probably, the Supreme Court of Ukraine (the SCU) has put a culminating full stop in the years-long “competition” between commercial and administrative courts that pertains to challenging the decisions of the Antimonopoly Committee of Ukraine (the AMC) and its local branches.

It bears mentioning that dual jurisdiction over disputes challenging the AMC decisions became an issue when the Code of Administrative Procedure (the CAP) took effect. While commercial courts had jurisdiction over such disputes by virtue of provisions of the Law of Ukraine “On Protection of Economic Competition”, the administrative courts were competent to consider them based on the CAP provisions. Actually, the claimant was free to choose between the commercial or administrative court, though administrative and commercial courts of cassation had a race in providing information and/or issuing explanatory letters, each substantiating its jurisdiction over the respective dispute.

The SCU resolved the matter in favor of commercial courts. In the case that put an end to the jurisdiction-related competition, an enterprise (the Claimant) filed a claim with the administrative court for invalidation of decision of the AMC local branch (the Respondent) that held the Claimant liable. Leaving aside the fact that dispute arose because the Claimant was held liable for abuse of the monopoly position, the decision is essential for other competition-related disputes, including unfair competition. Courts of the first, appeal and cassation instances sustained the position of the Claimant and canceled the decision of the Respondent. Opposing the above-mentioned decisions the Respondent filed a claim to the SCU for review of the court decisions and referred to an improper application of substantial and procedural law provisions by the cassation courts.

On the joint session of its commercial and administrative chambers, the SCU granted the claim of the Respondent, revoked the decisions of lower courts and closed the proceedings in the case.

To substantiate its decision, the SCU pointed out that the lower courts qualified the dispute within the context of the public law and, consequently, within the jurisdiction of administrative courts. According to the SCU, such conclusion of the lower courts is not based on а proper application of section 6 of the European Convention on Human Rights. Additionally, section 4 of the CAP stipulates that the jurisdiction of administrative courts extends to all public law disputes other than disputes for which the law prescribed another procedure. Laws of Ukraine may stipulate other procedures to resolve certain categories of public law disputes, including in commercial courts. Specifically, such procedure is prescribed by section 60 of the Law of Ukraine “On Protection of Economic Competition” establishing that the applicant, the respondent or the third party may appeal the decision of the AMC in full or in part to the commercial court. Taking into account the content of the above-mentioned provisions of the Ukrainian laws, the cases on invalidation of AMC decisions are within the jurisdiction of commercial courts and subject to consideration in accordance with the Code of Commercial Procedure of Ukraine.

Notably, successful settlement of the dispute is attributable to adoption of the Law of Ukraine “On Ensuring the Right to Fair Trial” (took effect on 29 March 2015), which changed the list of grounds for review of court decisions by the SCU. Particularly, the ground for review under this law includes, inter alia, different application of the same provisions of procedural law by the cassation courts.

CAPTURING OF INFRINGEMENTS. New opportunities to capture IP rights infringements on the Internet

Intelzakhyst announced a new service enabling to capture the content of web pages as screen shots. According to Intelzakhyst, the new service offers better and more efficient opportunities in combating IP rights infringements on the Internet. The main purpose of the service is to capture the copyright infringements, without limiting its application with respect to other IP rights objects.

Furthermore, within the context of combating IP infringements on the Internet Intelzakhyst announced development of a register of infringers and pirate webs. 

In this article we answer key questions of the rights holders regarding this new tool for capturing the infringements.

In which form is an infringement on the Internet captured?

Intelzakhyst captures infringement on the Internet as screenshots using a special software they developed for this purpose. The fact of infringement is documented as an expert opinion (the Expert Opinion). To ensure admissibility of the Expert Opinion as an evidence in the court it is expected that it will be signed by an expert, who is certified as a court expert for “Examination of the telecommunication systems (hardware)”. Intelzakhyst further expects to engage court experts of the Research Center of Court Expertise Regarding Intellectual Property Issues under the respective agreements between Intelzakhyst and the said expert institution. If and when so requested by the customer, the screenshot can be provided on a physical data storage media (e.g., CD). Such data carrier may also contain files related to IP objects (e.g., captured audiovisual works the rights to which were infringed).

The Expert Opinion will be signed by representative of Intelzakhyst and executed on its official letterhead.

As a part of capturing the respective webs Intelzakhyst will take the following actions:

  • detailed examination and mandatory check of the web-site source code;
  • examination of the website source code to identify any intrusion, modification or redirecting;
  • examination of data routing;
  • capturing of the contents of the web-site, specifically in text, graphical and other multimedia forms, including WHO-IS service data.

What is the procedure and the fee for obtaining the Expert Opinion?

To obtain the Expert Opinion it is required to file an electronic application via web-site of Intelzakhyst (registration is required) or contact Intelzakhyst directly by phone or email/mail.

The minimum fee for the Expert Opinion is UAH 2,000 (about EUR 80). This fee covers examination of three web-pages on a web-site. Additional fee is charged for examination and capturing of any extra page. Such extra fee is negotiable on a case-by-case basis but is expected to be about UAH 500 (about EUR 20).

How long does it take to obtain the Expert Opinion?

The Expert Opinion is issued within 1 or 2 days and can be sent via courier services.

To which extent may such Expert Opinion be treated as an adequate and admissible evidence in the court?

Intelzakhyst believes that such capturing of the infringement is a sufficient proof of IP infringement on the Internet and can be used in the court.

However, the lawyers are of the opinion that Expert Opinions, like other evidence, will not be predominant for the court and will be evaluated by the court at its own discretion. Also, lawyers and judges have some questions regarding the legal status of the Expert Opinion. Further, the practitioners have concerns that the expert and other persons signing the Expert Opinion do not bear criminal liability for accuracy of the opinion.

Due to the foregoing, the legal status of the Expert Opinion remains unclear. We expect to find the answer to this question in the court practice.

What are objectives of the register of infringers and pirate webs? How can it help in combating for my rights in case of infringements?

Intelzakhyst considers this register to be an additional information resource for the judges for the purposes of combating IP rights infringements. However, the criteria for qualification of web-sites as pirate and a certain person as infringer remain unclear up to date.

IP AREA REGULATION. The list of UAPTO paid services extends

With effect from 30 July 2015, the list of paid services provided by the Ukrainian Institute of Intellectual Property State Enterprise (the UAPTO) extended significantly. The respective amendments were made to the UAPTO’s Paid Services List.

For example, today the UAPTO offers the following paid services with respect to trademarks:

  • searching for identical or similar signs based on the UAPTO’s data base, including international registrations designated for Ukraine, and issuing of the respective report;
  • developing a logo;
  • preparing applications for trademark registration in Ukraine, the Russian Federation, as well as in accordance with the Madrid system;
  • drafting IP contracts;
  • maintaining records with respect to IP contracts.

The UAPTO provides such paid services with respect to other IP objects (e.g., inventions, utility models or designs).

It is worth mentioning that earlier such services were provided by the Ukrainian Innovation Centre, which is currently one of the UAPTO’s departments. The extension of the list of paid services offered by the UAPTO is an evidence of consolidation of functions related to provision of services in the IP area to improve their promptness and quality.

TRADEMARKS. Online access to trademark applications register is open!

On 21 August 2015, the State Intellectual Property Service of Ukraine opened an online access to the trademark applications on its web-site.

As expected, details of trademark applications which have successfully passed the formal examination after 20 August 2015 are available. The visitors may run the application search according to the following criteria: i) application number; ii) filing date; iii) applicant; iv) key words, and other.

For more information about access to trademark applications, please see the previous issue of Brands Update.

Please contact Oleksandr Padalka or Oleg Klymchuk for more detailed information.

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