On 30 June 2020, two orders of the Ministry of Finance came into force:
“On approval of measures procedural application to promote the protection of intellectual property rights and customs authority’s interaction with right holders, declarants and other stakeholders and Amendments to certain regulations of the Ministry of Finance of Ukraine” № 281 from 09.06.2020 (hereinafter – Order № 281);
“On Amendments for Registration procedure in the Customs Register of Intellectual Property Rights Protected in Accordance with the Law” №282 of 09.06.2020 (hereinafter – Order № 282).
Order № 281 introduces a unified approach and procedure for customs authorities to apply measures to goods suspected of infringing intellectual property rights (hereinafter – IPR), as well as standardized forms of interaction with right holders and declarants.
In accordance with paragraph 12 of the application procedure of measures to promote the protection of intellectual property rights and interaction of customs authorities with right holders, declarants and other interested persons (hereinafter – the Procedure), customs authorities identify the presented goods as original, and measures to promote such goods do not apply if:
1) their movement across the customs border of Ukraine is carried out by a person designated by the right holder as a participant in foreign economic activity, which carries out operations with original goods, in accordance with the data of customs register;
2) information entered in the customs register or the right holder has notified the customs authority in writing that the goods planned to be moved or are being moved across the customs border of Ukraine are original goods, and such information allows the customs authority to identify such goods during customs control and customs design.
If the presented goods are not identified as original, the customs authorities shall identify such goods as goods suspected of infringing IPR, if, according to the customs register:
1) their movement across the customs border of Ukraine is carried out by a person designated by the right holder as a participant in foreign economic activity who carries out operations with goods suspected of violating IPR, or
2) the producer of such goods is determined by the right holder as a producer of goods suspected of infringing IPR, or
3) their characteristic (typical) features and / or their packaging correspond to the data of the customs register on characteristic (typical) features and / or packaging of goods suspected of infringement of IPR, or
4) the producer of such goods is not designated by the right holder as the producer of original goods, or
5) their characteristic (typical) features and / or their packaging do not correspond to the data of the customs register regarding characteristic (typical) features and / or packaging of original goods.
The procedure approved by Order № 281 details Section XVI of the Customs Code of Ukraine “Promotion of protection of intellectual property rights during the movement of goods across the customs border of Ukraine”.
– the procedure for registration of intellectual property rights in the customs register has been improved;
– application forms used in EU countries have been introduced;
– an electronic form of communication between right holders and the State Customs Service was introduced.
The right holder, who has grounds to believe that during the movement of goods across the customs border of Ukraine his rights to the IPR object are violated or may be violated, has the right to submit a free application to the State Customs Service for registration of IPR object in the customs register. An application for registration of an IPR object in the customs register may be submitted for the purpose of registration in the customs register of such IPR objects as objects of copyright and related rights, inventions, industrial designs, trademarks, geographical indications, plant varieties, semiconductor arrangements. products.
1) approved a new application form to promote the property rights protection belonging to the IPR right holder and the procedure for filling in the column of the registration application of the IPR in the customs register, application for extension of registration of the IPR in the customs register;
2) the procedure for registration of intellectual property rights in the customs register has been improved, in particular:
– the list of documents submitted the State Customs Service together with the application for registration of an IPR object in the customs register has been expanded;
– it is allowed to submit one application for registration of an IPR object in the customs register for registration of two or more IPR objects in the customs register;
– a mechanism was introduced to suspend consideration of the application and clarify / request information from the right holder if the documents and application do not meet the requirements of Order №282 (previously, in this case, the State Customs Service refused without providing time to eliminate deficiencies);
– the list of grounds for suspension by the State Customs Service of consideration of the application consideration for registration of an IPR object in the customs register, as well as the grounds for refusal of registration were expanded;
– registration of IPR objects in the customs register is carried out with the use of a new software and information complex “Customs register of intellectual property rights” of the Unified automated information system of the State Customs Service.
3) the procedure for extending the term of registration of an IPR object in the customs register has been changed, in particular:
– approved the application form for extension of the term of registration of the object of intellectual property rights in the customs register of objects of intellectual property rights, which are protected in accordance with the law;
– the terms of application with the application for extension of the term of registration of the object of intellectual property rights in the customs register have been changed. Such application shall be submitted no later than 30 working days before the expiration of the term of registration of such IPR object in the customs register (earlier than 10 working days) (item 37 of Section II of the Procedure).
4) the list of grounds for exclusion from the customs register has been expanded.
From now on, the object of IPR is excluded from the customs register also in the case (paragraph 37 of Section II of the Procedure):
– partial or full transfer to another person of rights to the IPR object registered in the customs register, which affects the legal grounds for registration of the IPR object in the customs register, including the availability of the necessary amount of rights to perform actions related to protection of property rights on such object of IPR;
– early termination of the term of legal protection of the IPR object registered in the customs register;
– in case of detection of inaccurate and / or incomplete information and / or inconsistency of information entered into the customs register on the basis of information and / or documents provided by the applicant in the application for registration of IPR in the customs register, documents attached to it, including information and / or documents provided in response to the request of the State Customs Service JV, as well as provided by making changes and / or additions to the information on the registered IPR object and / or application for extension of the IPR object registration in the customs register;
– in case of systematic (three or more times during the year) failure to provide the JV of the State Customs Service with information and / or documents in accordance with paragraph 32 of Section IV of the Procedure №282;
– in case of systematic (three or more times during the year) failure to respond to notifications of customs authorities sent in accordance with part three of Article 399 and / or part seven of Article 401-1 of the Code;
– in case the right holder uses the information received from the customs authorities for purposes not related to the application of assistance measures.
5) an electronic form of communication between right holders and the State Customs Service has been introduced.
6) the list of information on registered IPR objects in the customs register, which the State Customs Service of Ukraine must publish on its official website, has been changed.
Among other things, the following information is subject to disclosure (paragraph 1 and paragraph 2 of Section IV of the Procedure №282):
type (types) of goods that contain the object of IPR;
last name, first name of the authorized person by the right holder to cooperate with the customs authorities on issues related to the protection of property rights protection of the IPR object, his contact telephone number and e-mail address.
We also draw your attention to the fact that after the IPR object registration in the customs register, the applicant is obliged to notify the State Customs Service JV not only of any changes and / or additions to information on the registered IPR object with the statement of entered documents in the customs register, but also about addition to the information of the customs register concerning signs of original goods which submission is provided by columns 10, 11, 12 and 15 of the application for registration of object of IPR object in the customs register and which are absent in the customs register. of the registered object of IPR, including if after suspension of customs clearance of goods, the right holder has declared that considers such goods original, and has given the consent to renewal of their customs clearance (item 32 of Section II of the Order №282).
With regard to IPR objects registered in the customs register of IPR objects, which are protected in accordance with the law, until the entry into force of Order №282, then:
Orders of the Ministry of Finance № 281 and № 282 of 09.06.2020 detail the procedure for applying measures to promote intellectual property rights protection and cooperation between custom authorities, right holders and declarants; and the procedure for registration of intellectual property rights in the customs register was supplemented.