Protection of rights and representation of interests of Ukrainian right holders in the countries of the Customs Union. Protection of the rights of Russian rights holders in Ukraine

This analytical material prepared by the specialists of Bar association Customs & Corporate Lawyers

I. Protection of the rights and representation of Ukrainian holders in the Customs Union.

It is necessary to bear in mind that as all industrial property rights, trademarks inherent in the territorial nature of the protection of these assets (territoriality principle). In accordance with the principle of legal protection of trademarks is only within national jurisdiction, and the state has the right not to recognize the rights to the intellectual property rights that have arisen within the legal order of another state. Thus, it was under the protection of trademarks territorial nature of the action manifests itself most clearly, as the right to the object of intellectual property arises by virtue of the registration process and special protection document, not by virtue of creating an object, as provided in the Copyright Act. Therefore, in order to mark as an object of intellectual property to be protected in the territory of another state, it is necessary to carry out the registration process is in the state where it will be used.

Effective protection of trademark rights can only be achieved by using a certain system of monitoring compliance with the rights of copyright holders, which would have included several stages oversight activities. Thus, the primary control in the sphere of protection of intellectual property must implement the customs authorities when goods cross the customs territory of the State (if any import). Subsequent control carried out on the domestic market of the State in order to detect signs of violation of the legislation in the field of intellectual property, which is carried out by authorized state bodies (customs, police, bodies of market surveillance, and others.). To improve the quality of primary control of goods containing intellectual property, at the intersection of the Customs Union was to create a single customs registry of intellectual property states - members of the customs union (the Single Register).

This Unified Register was established in accordance with the Agreement of 21 May 2010 "On a single customs registry of intellectual property of - members of the Customs Union" and contains information on trademarks, service marks, subject to copyright and related rights, subject to legal protection in each of the states - members of the customs union.

To speed up the process of interaction and improve the quality of work between the customs authorities of Russia, Belarus and Kazakhstan was adopted "Rules cooperation between the customs authorities of the - members of the customs union on the management of a single customs registry of intellectual property" (approved by the Commission of the Customs Union on 18.06.2010 N 290 ). This regulation defines the main provisions in the area of submission and consideration by the customs authorities of the Member States of the Customs Union of applications for inclusion of intellectual property in the Unified Register.

Within the framework of the national legislation of the Russian Federation, the Federal Law of 27.11.2010 N 311-FZ "On Customs Regulation in the Russian Federation", which defines the main powers of the customs authorities of the Russian Federation and to extend their authority in the area of intellectual property protection in comparison with the provisions of the Customs Code customs Union.

An entry in the Unified Register is carried out by simply filing a written statement in Russian in the central customs authority of the State - a member of the Customs Union. In this case, the statement on behalf of the copyright owner who does not have a permanent establishment in the customs territory of the customs union, may be filed through the persons who have permanent residence (registered) in the territory of one of the states - members of the customs union. If the application is submitted by a person representing the interests of the right holder, the application shall be accompanied by a power of attorney issued by the copyright to such person, the effect of which should cover the entire territory of the Customs Union.

Simultaneously with the application is submitted a written commitment of the copyright owner pecuniary harm that may be caused by the declarant, owner, recipient of the goods or other persons in connection with the suspension of the release of goods. At the same time, in order to guarantee the fulfillment of this obligation, the right holder shall also submit to the insurance contract liability for property damage to persons in connection with the suspension of the release of goods legally binding in all states - members of the customs union. The insurance amount specified in such contract, shall not be less than ten (10) million euros.

It is worth noting that the term of protection of the rights holder on intellectual property, established for inclusion in the Unified Register, may not exceed the term of legal protection of intellectual property in the state - members of a customs union in which the time limit expires before.

Also important is the fact that the charge for the inclusion of intellectual property in the Unified Register will be charged.

However, to be able to make information about the trademark in the Unified Register of the right holder must obtain legal protection for the trademark in all member states of the Customs Union. Legal protection of the trademark may be granted the right holder, with proper feeding of the individual applications in each of the competent authorities for the registration of trademark rights of the Member States of the Customs Union.

However, applicants can also use the system and the international registration of a trademark, which is established and operates under the Madrid Agreement Concerning the International Registration of Trademarks in 1891 and the Madrid Protocol in 1989. The above-mentioned international agreements, the Madrid Union, which includes 85 states and the territory of which the holder may obtain legal protection of a trademark by filing a single international application through the national office to the International Bureau of WIPO. Such a system certainly has a number of advantages. Firstly, it is possible to obtain trademark protection in three member states of the Customs Union on the basis of a single application. There is no need to pay a fee in each State, the payment occurs at the same time, when filing an international application.

Therefore, at this time from the right holder has the opportunity to select the appropriate method of implementing it the registration of a trademark, depending on personal preference and the necessary conditions.

In accordance with Chapter 46 of the Customs Code of the Customs Union, customs authorities shall take measures to protect the rights of intellectual property related to the suspension of the release of goods.

According to Art. 331 of the Customs Code of the Customs Union, if the performance of customs operations involving the placement of goods under customs procedures, including intellectual property, included in the national register of customs or in the Unified Register, Customs officers found signs of violation of intellectual property rights, the release of such goods shall be suspended for a period of ten (10) working days. At the request of the copyright owner or a person representing his interests, this period may be extended for not more than ten (10) working days, if such persons addressed to the competent authorities for the protection of the rights holder in accordance with the laws of - members of the customs union.

In accordance with Art. 308 of the Federal Law "On Customs Regulation in the Russian Federation" customs authorities may suspend the release of goods containing objects of intellectual property not included in the register, upon detection of a violation of intellectual property rights and the availability of information about the legal owner (or his representative) in the territory of the Russian Federation. This provision allows the customs officer to act ex officio (on official duty) without application owner, but with its notice on the following day to suspend the release of goods for a period of 7 days in the identification of suspected counterfeit.

In accordance with the Action Plan for the formation of the Common Economic Space (this is the next stage of the integration of the three countries) adopted the Agreement on common principles of regulation in the field of protection and enforcement of intellectual property rights.

The agreement is aimed at harmonizing the regulatory principles in the field of protection and enforcement of intellectual activity and means of individualization of legal persons, goods, services, and businesses (means of individualization) that are protected by the national legislation of the Parties.

This Agreement obliges the Parties to fix in their national legislation such provisions of protection and enforcement of intellectual property rights, under which each State Party to the Agreement provides persons (natural or legal) and the results of intellectual activities of other States Parties to this Agreement, the same level of protection and enforcement of intellectual property that it accords to its own persons (natural or legal) and intellectual property (national treatment).

The Parties may apply in their national legislation such rules that will provide greater protection of intellectual property rights than those contained in the Agreement, provided that they do not conflict with the provisions of the Agreement.

Parties to the Agreement provide for legislative procedure, which will ensure the effective suppression of trafficking in counterfeit and adulterated goods in the territory of the Customs Union, as well as common measures to combat violations of intellectual property rights on the Internet.

Enactment of the agreement is scheduled from 01 January 2012, in accordance with the approved plans for the formation of the Common Economic Space.

Based on the above it can be concluded that the Customs Union created a system of controls to prevent the receipt of counterfeit products to the markets of the Member States of the Customs Union, participation in which is not burdened with rights holders to unnecessary administrative formalities.

II. Protection of the rights of Russian rights holders in Ukraine.

In Ukraine, the protection of intellectual property at border crossings are dedicated to the following regulations:

1. Customs Code of Ukraine dated July 11, 2002 № 92-IV;

2. Resolution of the Cabinet of Ministers of Ukraine "Issues of registration of intellectual property rights in the customs register, information and cooperation between customs authorities with other law enforcement and regulatory authorities and the owners of rights to intellectual property rights in the event of suspension of customs clearance of goods at the initiative of the customs authority" 13 April 2007 number 622;

3. Order of the State Customs Service of Ukraine "On approval of collateral or equivalent guarantee for reimbursement of costs associated with the actions of the customs authorities of Ukraine on facilitating the protection of intellectual property rights" dated June 20, 2007 № 520.

The person, who in accordance with the laws of Ukraine belong to the property rights of the subject of intellectual property rights, and that has reason to believe that the movement of goods across the customs border of Ukraine violated or may be violated his right to object of intellectual property, has the right to file a specially authorized central executive authority in the field of customs declaration on the promotion of the protection of property rights belonging to him on the subject of intellectual property by making appropriate information in the customs registry of intellectual property rights.

Customs Register of intellectual property rights contains information about the property rights to the objects of copyright and related rights, trademarks, industrial designs and appellations of origin.

To activate the object in the customs register right holder or his representative shall submit to the State Customs Committee statement on the promotion of the protection of property rights. Attached to the application:

1. extract from the relevant register of the Ministry of Education on the registration of intellectual property rights, which confirms the validity of an act of such registration at the time of submission of the application (for brands that have international registration, - extract from the International Register of the International Bureau of Intellectual Property, to which is attached a translation into Ukrainian language);

2. a detailed description of the object and goods containing the object that enables Customs authorities to identify the object and determine the products and goods according to code UKTVED;

3. Samples of goods containing the object or the photographic image;

4. notarized copy of the license agreement on the use of the object (in the case of an application by a person who has been granted the right to use the object and powers on behalf of the copyright owner prevent inappropriate use of the facility, including compliance with the legislation to prohibit such use).

Holder or his representative after receiving reports of possible inscription of the property in the Customs Register shall be given a guarantee (bond holder or bank guarantee) in the amount of 5,000 euros.

At the same time for the registration of rights to intellectual property in Ukraine Russian owner can take advantage of both the Madrid system of international registration of trademarks and the national application procedure in the State Department of Intellectual Property of Ukraine.

Since its registration in the Customs Register of intellectual property rights, customs authorities, on the basis of such a register, take measures to prevent movement across the customs border of Ukraine of counterfeit goods (Art. 256 TAS).

If the customs authority on the basis of customs registry of intellectual property shows signs of violation of intellectual property rights in respect of goods presented to customs control, the customs clearance is suspended for up to 15 calendar days (if necessary extension of this period by not more than 15 days).

If within the first 15 calendar days of receiving notice of the suspension of customs clearance of goods a person who, in accordance with the legislation of Ukraine owns the property rights to the object of intellectual property rights, in writing inform the customs authority which has suspended customs clearance, to appeal to the court in order to protect intellectual property rights or appeal to a customs authority with a written reasoned request to extend the suspension of customs clearance of the goods, the customs clearance of which was suspended, subject to customs clearance in the prescribed manner.

If there is sufficient reason to believe that due to movement across the customs border of Ukraine goods, not included in the Customs Register of intellectual property rights can be violated rights to these objects, the customs authority may, on its own initiative to suspend customs clearance of such goods (EX OFFICIO).

The customs authority shall take measures to prevent on their own initiative customs clearance of goods containing objects of intellectual property rights only if there is information about the person, who in accordance with the laws of Ukraine owns the property rights to such intellectual property.

Activities related to the suspension of customs clearance, customs authorities shall not apply in respect of goods containing objects of intellectual property rights, which move through the territory of Ukraine in transit or imported into the customs territory of Ukraine or exported from it by individuals for their own use (not intended for production or other business), as well as sent by international mail and express shipments (Art. 255 of the Customs Code (TAS)).

Thus, taking into account the comparison between the two systems of protection of intellectual property, we can conclude that the legislation of the Customs Union with the fundamental principles and norms of international law (including the Agreement TRIPS) in the field of intellectual property protection. In this case, the legislation of Ukraine and the Customs Union provide the same level of rights holders, procedures, and ways to protect intellectual property rights by customs authorities.