This month we look at the practice of administrative courts as to which intellectual property the State Fiscal Service of Ukraine can refuse to record with the Customs Registry of Intellectual Property Objects and new court practice on copyright protection.
The administrative court declared lawful the refusal by the State Fiscal Service of Ukraine to record four utility model patents with the Customs Registry of Intellectual Property Objects (the Registry) due to the inability to identify them in the course of customs clearance. The said decision establishes the practice enabling to record only the utility models registered as products (goods), rather than processes (methods) with the Registry. Recording of utility models with the Registry will now require thorough preparation.
In the said dispute, a legal entity (the Claimant) filed a claim with the court against the State Fiscal Service of Ukraine (the SFS) seeking the declaring unlawful the refusal of the SFS to record utility models with the Register and obligating the SFS to entry the data about them into the Registry.
According to the merits of the case, the Claimant applied to the SFS for recording of four utility model patents with the Registry. All four patents protect food packaging methods.
The SFS refused to record the utility models with the Registry. The SFS explained that those utility models, which lack specific characteristics that can be controlled by the customs authorities while clearing the goods containing the intellectual property are not afforded to recording. The same rule applies if there is no possibility to identify such specific characteristics using the methods suggested by the rights holder (inability to identify the intellectual property in a specific product).
The court found that the said utility model patents are granted for methods(processes) rather than for the products (goods). Therefore, such methods should be identified based on the chronology of using their characteristics according to the patent claims of these utility models.
Consequently, to identify these utility models in the course of customs clearance the customs officers should be in position to control (identify) all characteristics specified in the patent claims of the aforementioned utility models. However, such control (identification) is not feasible, because customs clearance of the goods is conducted within the customs control zone and could not trace all stages of utilizing the methods protected by the said patents.
The court also accepted as an admissible evidence information on other utility models recorded with the Registry. The court emphasized that objects of these utility models are products rather than processes (methods).
Considering the above, the court dismissed the claim and found the refusal of the SFS to be lawful.
The recent court practice in the sphere of copyright protection has been expanded to include remarkable court decisions, awareness about which would be important for the rights holders when protecting their rights and for other persons exploiting copyrighted works. Specifically, for rights holders it reinforces the importance of sending cease and decease letters to infringers, otherwise their actions may be declared by the court as abuse of rights. Another important issue raised again by the court practice is which evidence should be provided to the court to prove the fact of infringement by a particular infringer? As for printing offices, it becomes important to make sure that a publisher has proper rights to use copyrighted works. Another important position of the courts is that no contractual limitation and elimination of liability would be possible when it comes to copyright infringement.
For more information, please contact Oleksandr Padalka or Oleg Klymchuk.