How to stop counterfeit merchandise on Ukrainian border?

If your business suffers from counterfeit merchandise or other means of unfair competition, Ukrainian customs law establishes great opportunity to stop them at the border by inclusion of Trademarks into Customs register of intellectual property rights.

Upon inclusion, if the customs define that the registered goods are imported with infringement of the rights to the trademark i.e. by any legal entity, except owner of the trademark or its authorized representatives (official importers, dealers, distributors, etc.), they shall suspend such merchandise on the border and shall notify the trademark owner or its authorized representatives on such suspension. Imported articles bearing counterfeit trademarks are subject to seizure and forfeiture. Because this legal tool proved to be efficient, it can be of special interest to companies, which possess well-known brands and care about their reputation.

The goods which contain objects of intellectual property - copies of scientific, literary, works of art, including computer programs, databases, soundtracks, trade marks for the goods and services with instructions of their origin, other goods.

The counterfeit goods are objects of the intellectual property which moving through customs border of Ukraine leads to infringement of the rights of owner which are protected according to the legislation and the international contracts of Ukraine.

The goods which contain objects of intellectual property are imported or exported by the Ukrainian and foreign subjects of foreign trade activities irrespective of ownership and the activity, subject to inclusion into the Register of the goods that contain objects of intellectual property (the Register) which is administered by Customs Service.

The Register does not extend on the goods which contain objects of intellectual property, which move through territory of Ukraine in transit or are imported on customs territory of Ukraine or taken out from it by physical persons for own use and not intended for use in commercial objectives, and also sent by international mail and express.

Customs bodies carry out the control over moving of the goods which contain objects of intellectual property, if these goods are in the Register.


Registration of objects of the intellectual property in the register

For the purpose of prevention of infringement of intellectual property rights during import or export of objects of intellectual property owner or its representative has the right to address Customs Serviceу with the petition for monitoring procedure for moving through customs border of Ukraine of objects of intellectual property. For this purpose owner or its representative submits Customs Service the statement for entering object of intellectual property in the register.

Customs Service within 30 calendar days in writing informs the applicant on the decision.

If Customs Service will make the decision on refusal to include object of intellectual property in the register, it specifies the reasons.

Customs Service can refuse inclusion of object of intellectual property in the register in case of absence:
• All necessary documents;
• The basis for protection of intellectual property rights in Ukraine, provided by the legislation;
• Characteristic signs which can be checked by customs bodies during identification of corresponding object of intellectual property at its moving through customs border of Ukraine.

Owner or its representative after receipt of message from Customs Service on inclusion of object of intellectual property in the register should pay the necessary customs duties in ten days.

Owner or its representative should inform in three days Customs Service on change in the data for registration of object of intellectual property.

Customs Service after reception of a copy of the document on payment of the customs duties in ten days completes registration of object of intellectual property by entering corresponding data about it and it owner to computer database of Customs Service, and also gives owner or to its representative the inquiry of the established sample on registration of object of intellectual property.

Registration is made for six months or one year. Term of registration of object of intellectual property can be prolonged for six months or for one year on the basis of a written statement under condition of payment of corresponding fees.


Control of moving of object of intellectual property

In case of decision on absence of the sufficient basis for a suspension of customs clearance of object of intellectual property the customs body in three-day term sends to owner or its representative the message on failure in suspension of customs clearance of object.

In case of recognition of the basis sufficient for a suspension of customs clearance of object of intellectual property for a period of 15 calendar days the head of customs body within 3 days informs in writing owner or its representative.

After reception of the message of customs body about a suspension of customs clearance of object of intellectual property for 15 calendar days Customs Service within three days notifies customs bodies. In the presence of the objective reasons this term can be continued for 15 calendar days under the decision of the head of customs body in which zone of activity customs clearance of object of intellectual property is stopped.

Fact of infringement of the rights of owner or its representative should be proved in the shortest term to customs body in which zone of activity the corresponding object of intellectual property has arrived. The customs body for an establishment of the fact of infringement presumes owner or its representative to survey the detained object of intellectual property and in case of need to send samples of this object for carrying out of inspection or examination by customs laboratory or other competent body.

Owner or its representative during term of a suspension of customs clearance of object of intellectual property can show the statement of claim in court or arbitration about protection of its rights or independently to settle a question of infringement of the rights.

Owner or its representative is obliged in the specified term to show to customs body the decision of court about infringement of right to object of intellectual property.


Liability for infringement of the rights to object of intellectual property

Illegal use of object of intellectual property rights (literary or work of art, their performance, a soundtrack, computer program, a database, a discovery, the invention, useful model, the industrial sample, a sign for the goods and services, topography of an integrated microcircuit, etc), leads to imposing of penalty from ten to two hundred tax-free minimum incomes of citizens with confiscation of illegal production, equipment and materials which are intended for its manufacturing.

Moving through customs border of Ukraine of the goods or the subjects made with infringement of the rights to object of intellectual property which is protected by the law, - leads to imposing penalty on citizens at the rate from one to five hundred minimum wages with confiscation of the goods, and on officials - from ten to thousand two hundred minimum wages with confiscation of the specified goods.