Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Intellectual Property & Antitrust 2016, (published in November 2015; contributing editor: Peter Levitas, Arnold & Porter LLP) For further information please visit www.gettingthedealthrough.com.

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Intellectual property

1 Intellectual property law

Under what statutes, regulations or case law are intellectual property rights granted? Are there restrictions on how IP rights may be enforced, licensed, or otherwise transferred? Do the rights exceed the minimum required by the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)?

Intellectual property rights (IP rights) are regulated by:

  • the Civil Code of Ukraine;
  • the Act of Ukraine on Protection of Rights to Inventions and Utility Models;
  • the Act of Ukraine on Protection of Rights to Indication of Origin of Goods;
  • the Act of Ukraine on Protection of Rights to Marks for Goods and Services;
  • the Act of Ukraine on Copyright and Neighbouring Rights; and​
  • the Act of Ukraine on Protection of Rights to Industrial Designs and
  • other legislative acts.

They exceed the minimum protection required by the WTO Agreement on TRIPs. Ukraine is also a party to international conventions such as the Berne Convention for the Protection of Literary and Artistic Works of 1886; the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations of 1961; the Paris Convention for the Protection of Industrial Property of 1883; the Madrid Agreement Concerning the International Registration of Marks of 1891; the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 1989; the Hague Agreement Concerning the International Deposit of Industrial Designs of 1925 and others, which have become part of the Ukrainian legal system.

All the restrictions with regard to exercising, enforcing, licensing and transferring IP rights are provided for by the law. For instance, an assignment of IP rights to patents, industrial designs or trademarks will be effective in Ukraine only upon state registration. Licence agreements are not required to be registered; however, they may be registered by either party in the respective state registry.

Intellectual property rights that are not effective as of the date of the IP licence agreement (eg, the rights to objects that are not created from the date of signing the licence agreement) may not be subject to licensing. Certain powers and rights to use an IP object that are not explicitly determined in the licence agreement shall be considered not transferred to the licensee. A licence agreement should envisage that the quality of goods and services produced or provided will not be lower than the quality of goods and services of the trademark or patent holder, who will ensure compliance with that requirement. If the territory of the agreement is not determined, the licence agreement will be effective within the territory of Ukraine. Provisions of the licence agreement that contradict the Civil Code of Ukraine are deemed unenforceable. Trademark assignment is not allowed in case it causes confusion with consumers.

In certain cases, a compulsory licence may be granted.

Taking into account that Ukraine is a member of the WTO, current Ukrainian legislation complies with the WTO’s legislation (including provisions of the TRIPs agreement).

2 Responsible authorities

Which authorities are responsible for granting, administering or enforcing IP rights?​

The central body of executive power of Ukraine, which implements the state policy in the field of intellectual property and grants legal protection to IP objects, is the State Intellectual Property Service of Ukraine (SIPS). It is managed by the Cabinet of Ministers of Ukraine through the Minister of Economic Development and Trade of Ukraine.

Generally this body deals with issues related to:

  • registration of IP rights, registration of contracts on transferring IP rights, licence agreements;
  • monitoring compliance with IP rights;
  • making proposals on improving legislation in IP; and
  • international cooperation in the field of IP, etc.

The competent courts, as judicial authorities, and a number of administrative bodies are responsible for enforcing IP rights in Ukraine.

3 Proceedings to enforce IP rights

What types of legal or administrative proceedings are available for enforcing IP rights? To the extent your jurisdiction has both legal and administrative enforcement options for IP rights, briefly describe their interrelationship, if any?

According to Ukrainian law, administrative, civil and criminal proceedings for enforcing IP rights are available. An affected person may bring a civil or commercial action either before a general or a commercial court. Commercial courts consider commercial disputes involving legal entities only, while general courts consider civil disputes involving a natural person as one of the parties. Also, an affected person may bring a criminal or administrative action in cases defined by the law. Criminal and administrative cases related to IP rights infringement are considered by the general and administrative courts, respectively. There is no specialised intellectual property court in Ukraine.

Given the expense and complexity of the judicial enforcement of intellectual property rights, administrative (non-judicial) remedies are often a less expensive solution. In Ukraine there are several governmental administrative bodies that handle intellectual property cases. Among them are the State Intellectual Property Service of Ukraine, handling, inter alia, registration of IP rights, registration of IP rights assignments, licence agreements; the Antimonopoly Committee of Ukraine (AMC), handling cases, inter alia, regarding unfair competition using intellectual property; and the State Fiscal Service of Ukraine, which applies border measures against IP infringements, including counterfeiting (by means of recording IP objects in the IP customs register and border detentions). This protection is considered to be quite comprehensive and speedy. The actions take place without any recourse to the courts and involve government departments exercising specific powers by the way of, inter alia, ceasing the restricted activities and enforcing a financial penalty.

4 Remedies

What remedies are available to a party whose IP rights have been infringed? Do these remedies vary depending on whether one utilises judicial or administrative review or enforcement?

Provisions regarding IP provide for different types of remedies depending on the nature of the infringement.

The Ukrainian legislation provides that an IP right holder may protect its IP right by claiming:

  • termination of the infringement;​
  • cancellation of the infringing IP object;
  • damages (including loss of profit);
  • compensation;
  • recognition of a right; and
  • publication of the court decision on the case concerning IP rights infringement.

There are also some specific remedies depending on the IP object that has been infringed and the type of legal or administrative proceedings to be applied.

5 Nexus between competition and IP rights

Do any statutes, regulations or case law in your jurisdiction address the interplay between competition law and IP law?

The Act of Ukraine on Protection against Unfair Competition prohibits unfair competition and, namely, unauthorised use of trademarks, trade names or other designations, products of another manufacturer, copying of appearance of the product, unlawful comparative advertising, illegal collection, disclosure and use of commercial secrets. The commercial courts of Ukraine often apply the Paris Convention of 1883, which allows the competition authority to construe the above law in a broader manner.

6 Patent cooperation treaties and other agreements

Does your jurisdiction participate in any patent cooperation treaties or other similar agreements?

Ukraine is a party to a number of WIPO-Administered treaties such as the Patent Cooperation Treaty, the Patent Law Treaty, the Strasbourg Agreement Concerning the International Patent Classification, the Paris Convention for the Protection of Industrial Property as well as to the TRIPs Agreement as an IP-related Multilateral Treaty.

Moreover, IP-related bilateral agreements on cooperation in the field of industrial property protection, affecting patent cooperation, were concluded between the government of Ukraine and a number of governments of the post-Soviet Union countries.

7 Remedies for deceptive practices

With respect to trademarks, do competition or consumer protection laws provide remedies for deceptive practices?

The Act of Ukraine on Protection Against Unfair Competition defines that the use of a name, trade name, trademark, promotional materials and other designations without the permission of the respective person who
started using them or designations similar to its earlier economic activity that can lead to a confusion with activities of this person will be recognised as illegal.

In addition, the illegal use of a product of another manufacturer or copying its design as well as unlawful comparative advertising is prohibited. The above law provides a fine of up to 5 per cent of income received during the last financial year, and seizure of goods with illegally used trademarks and copies of the products of another legal entity. Moreover, an IP right holder may claim damages according to the procedure defined by the Code of Ukraine on Commercial Proceedings.

8 Technological protection measures and digital rights management

With respect to copyright protection, is WIPO protection of technological protection measures and digital rights management enforced in your jurisdiction? Do statutes, regulation or case law limit the ability of manufacturers to incorporate TPM or DRM protection limiting the platforms on which content can be played? Has TPM or DRM protection been challenged under the competition laws?

At present, there are no provisions of Ukrainian law concerning DRM or TPMs. At the same time, the Act of Ukraine on Copyright and Related Rights regulates the so-called ‘technical means of protection’ – technical
devices or technological means designed to create technological obstacles to infringement of copyright or related rights during receipt or duplication of protected (encoded) recordings in phonograms (videograms) and broadcast organisation transmissions, or to control access to the use of objects of copyright and related rights.

Moreover, the Act of Ukraine on Copyright and Related Rights operates with the term ‘rights management information’, namely information (including in digital form) that identifies an object of copyright or related rights and the author or another person holding the copyright or related rights to this object, the information concerning the conditions of using an object of copyright or related rights or any figures or codes in which such information is represented when any of these elements of the information is attached to or incorporated into a specimen of an object of copyright or related rights or that appears in connection with it and is presented for general notice.

In particular, the law prohibits:

  • any actions for the intentional circumvention of technical means of​protection of copyright or related rights, in particular the production,
  • distribution, importation for distribution and use of means of such circumvention;
  • forging, altering or eliminating rights-management information, in particular rights-management information in electronic form, withoutthe permission of the copyright or related rights holders or the personsimplementing such management; and
  • the distribution or importation into the customs territory of Ukrainefor distribution purposes, and broadcasting of objects of copyright or related rights from which rights-management information, in particular in electronic form, has been eliminated.

In the event of violation of these provisions, the IP right holder is entitled to defend the respective rights before the court, but we are not aware of any administrative or court practice regarding possible DRM protection being challenged under the competition laws.

9 Industry standards

What consideration has been given in statutes, regulation or case law to the impact of the adoption of proprietary technologies in industry standards?

There is neither legislation nor jurisprudence dealing directly with the effect of proprietary technologies in industry standards.

Competition

10 Competition legislation

What statutes set out competition law?

Ukrainian competition law is set out in the Act of Ukraine on Protection against Unfair Competition and the Act of Ukraine on Protection of Economic Competition (the Act on PEC). The Act on PEC contains a list of prohibited anti-competitive practices and rules relating to abuse of a dominant market position as well as remedies and sanctions that may be imposed for unlawful actions. The Act of Ukraine on Protection against
Unfair Competition defines the types of unfair competition and provides for sanctions for such actions.

In addition to the above legislation there are other laws, regulating competition in Ukraine, namely, the Act of Ukraine on the Anti-Monopoly Committee of Ukraine and the Act of Ukraine on Natural Monopolies. Further, Ukrainian secondary legislation governs particular spheres of competition, for example, there are separate regulations for concerted actions, regulations for defining of monopolistic (dominant) position on the market, concentration regulations, etc.

11 IP rights in competition legislation

Do the competition laws make specific mention of any IP rights?

Competition legislation in Ukraine makes specific mention of the protection of IP rights. The Act of Ukraine on Protection against Unfair Competition includes provisions related to illegal use of trademarks or other designations, illegal use of packaging and appearance of products of other manufacturers, unlawful comparative advertising, etc. Also, it deals with issues related to illegal collection, disclosure and use of commercial secrets.

12 Review and investigation of competitive effects from exercise of IP rights

Which authorities may review or investigate the competitive effect of conduct related to exercise of IP rights?

The AMC is the competent authority dealing with the competitive effect of an agreement or conduct, including those related to IP rights. The key instruments used by the AMC are proceedings concerning competitionrestricting practices – prohibited agreements (cartels), unfair competition and abuses of a dominant position. Such a proceeding may end with a decision ordering a business entity to cease its restricted activities and pay a financial penalty. Further, the AMC has the authority to permit or prohibit
mergers, and it investigates the competitive effect.

13 Competition-related remedies for private parties

Can a private party recover for competition-related damages caused by the exercise, licensing or transfer of IP rights?

Private parties normally may not enjoy competition-related remedies if they suffer harm from the exercise, licensing or transfer of IP rights. However, in certain cases such remedies may be available, for example,
against an unfair trademark and domain name registration. In such a case private parties may either bring an action before the court or file a complaint with the AMC.

Upon the complaint of the suffering party the AMC may impose fines and cease the infringing activity. In addition, in the court, civil remedies may be used. The Act of Ukraine on Protection against Unfair Competition stipulates the possibility of claiming damages from the infringer.

14 Competition guidelines

Have the competition authorities or any other authority, issued guidelines or other statements regarding the overlap of competition law and IP?

Neither the competition authority, nor any other authority has issued any guidelines or statements concerning the overlap of competition law and IP in Ukraine.

15 Exemptions from competition law 

Are there aspects or uses of IP rights that are specifically exempt from the application of competition law?

The Act on PEC provides that agreements on the transfer of IP rights or licensing of IP rights to the extent that they limit the implementation of economic activity by the party receiving the IP right, if these restrictions do not exceed the legitimate right of IP right holder, may not be considered anti-competitive actions. It can be presumed that such restrictions may concern the scope of rights being transferred, the term and territory of the licence, the means of use, etc.

However, according to the Act on PEC, agreements that are regarded as anti-competitive concerted actions may be exempted individually by decision of the AMC if they contribute to:

  • improving production or distribution of goods;promoting technical or economic progress;
  • developing small and medium-sized entrepreneurs;
  • optimising the export or import of goods
  • working out and applying unified technical conditions or standards to goods; and
  • the rationalisation of production.

The exemption is granted for a fixed period (the latter shall not exceed five
years) or for an uncertain term. The exemption may be subject to fulfilment
of conditions or obligations.

16 Copyright exhaustion

Does your jurisdiction have a doctrine of, or akin to, ‘copyright exhaustion’ (EU) or ‘first sale’ (US)? If so, how does that doctrine interact with competition laws?

The doctrine of ‘copyright exhaustion’ is provided in the Act of Ukraine on Copyright and Related Rights. If specimens of a lawfully published work are legally put into civil circulation through their first sale in Ukraine, it is permissible to repeatedly introduce them into circulation through sale, bestowal, etc, without the consent of the author (or other copyright holder) and without payment to the author.

An effort to control pricing of products sold downstream is generally forbidden by competition legislation.

17 Import control

To what extent can an IP rights holder prevent ‘grey-market’ or unauthorised importation or distribution of its products?

The Customs Code of Ukraine provides for border measures against IP
infringements, including counterfeiting. These measures extend to both
imports and exports.

To benefit from the border measures, a right holder may file a formal application for customs surveillance. The registration with customs is valid for six months or a year and can be further renewed at the right holder’s request. Customs also has the right to act ex officio. Since the principle of international exhaustion of IP rights is effective in Ukraine, registration of IP objects with customs may hardly solve the issue of parallel importation.

18 Jurisdictional interaction between competition laws and IP rights

Are there authorities with exclusive jurisdiction over IP-related or competition-related matters? For example, are there circumstances in which a competition claim might be transferred to an IP court to satisfy subject matter jurisdiction? Are there circumstances where the resolution of an IP dispute
will be handled by a court of general jurisdiction?

Notwithstanding Ukraine has explored and contemplated the potential of specialised IP courts, currently there is no exclusive jurisdiction over IP-related matters. IP disputes are predominantly being considered by
either the general courts or the commercial courts. Generally, the commercial courts are the more popular forum for IP disputes because of specialised IP judges available. 

The AMC is the sole institution in Ukraine empowered to review anticompetitive behaviour and to initiate and conduct investigation proceedings with regard to transactions and acts that may infringe competition rules, whether or not related to IP rights. Furthermore, the competent courts, as judicial authorities, may also apply the provisions of the competition legislation in relevant cases.

Merger review

19 Powers of competition authority

Does the competition authority have the same authority with
respect to reviewing mergers involving IP rights as it does with
respect to any other merger?

The AMC’s powers cover all mergers including those involving IP rights
without any distinction.

20 Analysis of the competitive impact of a merger involving IP rights

Does the competition authority’s analysis of the competitive impact of a merger involving IP rights differ from a traditional analysis in which IP rights are not involved? If so, how?

The AMC assessment of the competitive impact of a merger involving IP rights does not differ from traditional analysis of a merger. Subject to thresholds set by the law any merger may be assessed by the AMC against
a possible restriction of competition in the Ukrainian market. Due to the absence of any special provisions relating to IP rights, this substantive test does not depend on whether IP rights are involved or not in the transaction.

21 Challenge of a merger

In what circumstances might the competition authority challenge a merger involving the transfer or concentration of IP rights? Does this differ from the circumstances in which the
competition authority might challenge a merger in which IP
rights were not a focus?

As a general rule, the AMC may challenge such a merger when it affects or may affect competition in the market, in particular by the creation or strengthening of a dominant position. The AMC has the right to bring an action to invalidate the transaction that was entered into by the parties in breach of the provisions of the competition legislation of Ukraine to the extent that such a transaction has led or may lead to the restriction of competition.

The Act on PEC provides for a wide spectrum of transactions that result in business concentration. Ukrainian merger control rules set forth a clear standard to assess establishment of ‘control’ as a result of the transaction. The concept of ‘control’ provided under the applicable legislation is based on the principle of the ‘possibility of exercising a decisive influence’ (eg, through rights to use assets, holding top management positions, and voting at the supervisory or executive body of the market player) and, thus, allows for quite a broad interpretation of the establishment (existence) of relations of control. The merger clearance procedure, on the other hand, may be applicable even when no establishment (change) of control is expected as a result of the contemplated transaction.

There are no differences between challenging a merger that involves IP rights and one that does not.

22 Remedies to address the competitive effects of mergers involving IP

What remedies are available to address competitive effects generated by a merger when those effects revolve around the transfer of IP rights?

Current Ukrainian legislation does not provide any special remedies that could alleviate the anti-competitive effect of a merger involving IP rights. Specific competition law violations

23 Conspiracy 

Can the exercise, licensing or transfer of IP rights create pricefixing or conspiracy liability?

Pursuant to the Act on PEC, only concerted actions that have resulted in or may result in prevention, elimination or restriction of competition will be considered anti-competitive if they, in particular, relate to:

  • the setting of prices or other conditions of procurement or sale of goods;
  • the restriction of manufacturing, commodity markets, technical and
  • technological development, investments or establishing control over them;
  • the distribution of markets or sources of supply on an area basis,
  • in accordance with procurement or sales turnover, circle of sellers,
  • buyers or consumers, or otherwise;
  • the distortion of the results of bids, auctions, contests, tenders;
  • the elimination from the market or restriction of access to the market (withdrawal from the market) for other undertakings, buyers or sellers;
  • applying different conditions to equivalent agreements with other undertakings, which results in the creation of a disadvantage for these undertakings in terms of competition;
  • concluding agreements provided that other undertakings assume supplementary
  • obligations, which according to their content or in terms of trade customs and other fair customs in entrepreneurial activities do not relate to the subject of these agreements; and significant restriction of the competitive ability of other undertakings on the market without objective reasons for that.

However, there are special provisions for IP rights transfer, namely the above-mentioned provisions shall not be applied to agreements on the transfer of intellectual property rights or on granting the right to use the intellectual property where it restricts the economic activities of a party to the agreement receiving the right, unless this restriction exceeds the limits of the legitimate rights of the subject of the intellectual property right.

Restrictions relating to the volume of transferred rights, the period and territory of validity of the authorisation to use the object of the intellectual property right, as well as to the type of activity, the sphere of use and the minimal output, must not exceed the limits of intellectual property rights.

24 Reverse payment patent settlements

How have the competition laws been applied to reverse payment patent settlements in your jurisdiction?

The reverse payment patent settlements are not commonly practised in Ukraine, and such institute is not yet reflected in the Ukrainian competition legislation.

25 (Resale) price maintenance

Can the exercise, licensing, or transfer of IP rights create liability under (resale) price maintenance statutes or case law?

Setting resale prices for licensees are recognised as anti-competition concentrated actions, since the Act on PEC forbids concluding agreements with provisions related to the establishing of prices for buying or selling
products (and there are no exemptions for IP rights, and, therefore, IP rights are not treated differently from non IP-related conduct). However, in general, recommending resale prices for licensees is not considered illegal.

26 Exclusive dealing, tying and leveraging

Can the exercise, licensing, or transfer of IP rights create liability under statutes or case law relating to exclusive dealing, tying and leveraging?

Exclusive dealing, tying and leveraging may be considered monopolistic activities under the Act on PEC (either for IP rights or not). It is common business practice in Ukraine to enter into the exclusive distributorship agreement and to authorise the distributor not only to deal exclusively, but also to use the manufacturer’s trademark under the exclusive licence. At present, there are no legal requirements or general approaches of the courts regarding the extent to which a firm can use its IP rights in order to prevent or compel the use of other products.

27 Abuse of dominance 

Can the exercise, licensing, or transfer of IP rights create liability under statutes or case law relating to monopolisation or abuse of dominance?

In some situations the exercise of exclusive rights in specific circumstances may constitute an abuse prohibited by the competition law. As a general rule, abuse of dominance is defined as actions or inactivity of a legal entity that occupies a monopolistic (dominant) position in the market, which lead to or can result in non-admission, removal or limitation of competition or restriction of interests of other legal entities or consumers, which would be impossible within the terms of the existence of considerable competition at the market. As for abuse of dominance by an IP right holder, a right holder’s refusal to license may be recognised as an abuse of a dominant position when the refusal relates to the subject of an IP right that is indispensable to the exercise of a particular activity in a relevant market and there is no objective justification for the refusal and the right holder is a business entity that may act independently of competitors or contracting parties to a significant degree.

There are no separate regulations for IP and non-IP related conduct.

28 Refusal to deal and essential facilities 

Can the exercise, licensing, or transfer of IP rights create liability under statutes or case law relating to refusal to deal and refusal to grant access to essential facilities?

A refusal to license IP rights may be recognised as an infringement of competition law when a dominant business entity has access to an essential facility (the subject of an IP right that is indispensable to the exercise of a particular activity in a relevant market) and exercises the right exclusively without objective justification for the refusal to grant access to the essential facility. As well as this, Ukraine is a party to the Paris Convention of 1883, so the mandatory licence may be provided to the licensee by the court’s decision.

There is no direct analogue of essential facilities doctrine in Ukrainian competition legislation, and, therefore, non-IP-related matters should be considered separately in each case, as far as such behaviour could be treated as abuse of dominance with respective consequences.

Remedies

29 Remedies for violations of competition law involving IP

What sanctions or remedies can the competition authorities or courts impose for violations of competition law involving IP?

See question 4 for a summary of applicable remedies available against a violation of IP rights.
As a general rule, breach of the substantive law (concerted practice) can be subject to penalties of up to 10 per cent, calculated on the basis of the group’s worldwide proceeds from sales for the preceding fiscal year. If the unlawfully received profit from the restrictive practice exceeds 10 per cent of the aggregate profit from such sales, the fine applied must not exceed triple the amount of the unlawfully received profit. The same penalty is imposed for failure to observe the AMC decision prohibiting certain concerted agreements or practices.

On 15 September 2015 the AMC approved official recommendations providing, in particular for principles of precise fines determination and the following two-step methodology of setting fines was introduced. The AMC determines the basic amount of the fine for each undertaking; and that basic amount can be adjusted upwards or downwards with regard to mitigating or aggravating circumstances. The basic amount of fine will be set by reference to:

  • the amount of proceeds received from the infringement in Ukraine;
  • expenses of the buyer for purchasing goods in connection with a breach of law;
  • the gravity of the infringement; and
  • the necessity of the restraining effect.

The infringements of competition legislation are ranked by the degree of gravity, namely:

  • hard-core (eg, concerted practices leading to fixing of prices, limitation of production, markets, technological development etc);
  • significant (eg, abuse of dominant position and other anticompetitive concerted practices);
  • moderate (eg, failure to receive merger clearance and unfair competition); and low (eg, submission of incorrect or incomplete information to the AMC).

Therefore it is now easier to determine the possible amount of a fine in the case of a breach of Ukrainian competition legislation. At present, there is no personal responsibility (excluding administrative sanctions that

appear to be a rather weak remedy) for implementing prohibited restrictive agreements or practices established by law, unless forcing others into anti-competitive concerted practice by using violence or material damage, which constitutes a criminal offence, is proved. 

The following final remedies may be available in Ukraine:

  • a prohibition on performing unfair trade practice (applied by the court in the case of proven infringement);
  • a fine (applied by the court in the case of proven infringement and the amount shall depend on the extent of infringement);
  • compensation damages (applied by the court in the case of proven damages);
  • the seizure of products (applied by the court in the case of proven unauthorised use of a trademark or other designation on such products or unauthorised use of product copies);
  • the public disproving of false information (applied by the court in the case of proven false information dissemination (defamation)); and 
  • a number of other types of remedies provided for by criminal, administrative and civil legislation.

30 Competition law remedies specific to IP

Do special remedies exist under your competition laws that are specific to IP matters?\

There are no special remedies under the Act of Ukraine on Protection against Unfair Competition that are specific to IP matters.

31 Scrutiny of settlement agreements

How would a settlement agreement terminating an IP infringement dispute be scrutinised from a competition perspective? What are the key factors informing such an analysis?

According to Ukrainian law a broad variety of agreements may be subject to AMC analysis. As a result, there is no difference between analysing a settlement agreement terminating an IP infringement dispute and any other agreement regarding IP rights from the perspective of competition law. An agreement whereby one party agrees not to compete in respect of  the patented product may be recognised as infringing the provisions of the Act on PEC.

Economics and application of competition law

32 Economics

What role has competition economics played in the application of competition law in cases involving IP rights?

As there have been relatively few competition law enforcement cases involving IP rights, it is difficult to assess the courts’ approaches to the role of economics in an IP context.

Recent cases and sanctions

33 Recent cases

Have there been any recent high-profile cases dealing with the intersection of competition law and IP rights?

According to publicly available information, the following cases could be identified as high-profile cases dealing with the intersection of competition law and IP rights (Year - Issue - Outcome):

2009 - Unfair competition and illegal use of Nissan and Infiniti trademarks - Fine in the amount of
500,000 hryvna was imposed on the violator;

2010 - Unfair competition and copying the appearance of Ferrero products - Fine in the amount of
300,000 hryvna was imposedon the violator;

2012 - Unfair competition and illegal use of ABSOLUT trademark, and copying the appearance of ABSOLUT products - Fine in the amount of 100,000 hryvna was imposed on the violator and settlement agreement between the trademark holder and the violator, resulting in removal of the infringing goods from trading circulation;

2013 - Unfair competition and illegal use of Erste Bank designation - Fine in the amount of 140,000 hryvna was imposed on the violator;

2014 - Unfair competition and illegal use of Opel trademark - Fine in the amount of 10,000 hryvna
was imposed on the violator.

34 Remedies and sanctions

What competition remedies or sanctions have been imposed in
the IP context?

In most cases upon consideration of IP-related matters the AMC imposes fines (up to 5 per cent of income received during the past financial year) on the violators. The seizure of goods with illegally used trademarks and copies of the products of another legal entity is applied more rarely as a sanction.

Update and trends

The main trend in antirust and IP sectors in Ukraine is the implementation of various kinds of reforms (in particular, in connection with EU association). Introducing the recommendation for determination of fine amounts was the first reform and a significant step forward in improvement of antitrust policy. Further expected legislative changes in this area will be related mainly to merger-control thresholds and rules renewal. 

Approval of the procedure to publish pending trademark applications online, aiming to improve the conditions for any person to oppose trademark applications, is one of the most topical developments in 2015. This service is already fully operational.

Another significant development of transparency in the IP sphere was the decision by SIPS to publish decisions of the SIPS Appeal Chamber. All the decisions of the Appeal Chamber issued after 23 September 2011 shall be published online until 31 December 2015. Some decisions have been already published.

Further potential developments in IP are connected with reforming the sphere by creation of the relevant legislative framework. Core directions of the upcoming reforms initiated by the Ukrainian government are protection of copyright on the internet; collective management societies’ copyright and related rights settlement; a market to administer royalties collection for copyright holders; prevention of patent trolling; improvement and simplification of the IP regulation procedure in the IT and electronic-solution industries; public access to licences; and increasing liability for IP right violations. These changes would bring Ukrainian legislation closer to the standards of the European Union and facilitate the implementation of commitments in the framework of the association agreement with the EU.

In this context a number of draft laws were actively discussed and elaborated by the Ukrainian IP community during the year. 

The accession of Ukraine to the Lisbon Agreement on the Protection of Appellations of Origin and their Registration, and ratification of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled are also expected in the nearest future.