The Unified Customs Register of Intellectual Property Objects is an effective way to block counterfeit goods on the borders in Ukraine.

In November 2019, the new norms of the Customs Code of Ukraine regarding the protection of intellectual property rights when moving products across the customs border of Ukraine came into force, which improved the procedure for identifying and stopping the customs clearance of counterfeit goods.

However, to seize the opportunity to suppress the import/export of counterfeit goods, the IP rights owner must enter the data into the customs register of intellectual property.

Before this, properly register their rights to a trademark, invention, industrial design, plant variety, geographical indication, or copyright.

It should be noted that information about utility models cannot be entered into Customs Register of IP objects in Ukraine.

Even though the Customs Code and the Procedure for Applying Measures Relating to the Protection of Intellectual Property Rights (which directly regulates the actions of Customs officers in the identification and enforcement against counterfeit goods), there are norms that a customs officer can independently find information on features of the original product (for example, on the Internet) and on this basis to choose actions with the product. In practice, everything is different.

There is almost no chance that the customs service will independently conduct investigations if the rights owner, or representative in Ukraine, did not take care of recording information about their products in the Customs intellectual property register.

According to the Service itself, 95% of all measures of the protection of intellectual property rights are based on information from the Customs Register.

Accordingly, after registration of rights to their intellectual property, a prerequisite is the inclusion of data in the register of intellectual property of the Customs service.

It is possible to enter data into the register by submitting an application for customs action to a specialized department of the Customs Service of Ukraine.

To get Customs recordal the application should include:

– confirmation of rights to an IP object (for example, a copy of a certificate or patent);

– description of the object and features of how to distinguish the original product from a fake – the more detailed and clear the information is, the higher probability that a customs officer will be able to correctly identify the goods;

– samples or images of original goods and examples of counterfeit goods;

– power of attorney, if the interests of the right owner are represented by another person.

There are no official fees or obligatory security deposit for registering IP with customs in Ukraine.

Customs has 30 working days for consideration and decision after receiving properly executed documents.

Customs recordal is valid for six months or one year (determined at the request of the right owner) with the ability to extend this period an unlimited number of times.

In addition to record registered intellectual property with Customs, it is also recommended to organize training sessions for customs officers. The agency has a positive attitude towards such business initiatives and promotes special seminars at which employees can personally see examples of original and counterfeit goods.

Data from the register will be used for goods came at customs clearance, as well as small consignments of goods (up to three units, or weighing up to two kilograms), which are transported by international mail and express deliveries. Accordingly, control measures on the subject of originality cannot be applied to personal items when passing through customs.

During the inspection at the control point, the customs officer will check the accompanying documents for the goods, information about the manufacturer, importer/exporter, the presence of features of the original goods of the product itself and packaging.

If there are suspicions regarding the originality of the goods, a request will be sent to the rights owner or representative in Ukraine.

Customs clearance cannot be suspended for more than 10 days, and 3 days for perishable products.

According to the results of the response of the rights owner, the goods can be destroyed, their labeling changed, or permission is given for further clearance of the goods. In addition, the owner may initiate court proceedings.

Customs clearance will be processed automatically with no owner’s response.

The new legislation provides a clear definition that the customs service cannot deny the clearance of original goods – it is enough for the cargo owner to provide evidence that the goods were produced by an original manufacturer, with the consent of the rights owner, or by a person duly authorized to manufacture a certain quantity of products.

For small batches of goods, the procedure looks different. Customs does not inform the right owner about suspicious goods, but requests proof of originality from the owner of the cargo. If evidence is not provided, or there is no answer, the goods are destroyed.

Thus, Ukraine provides a mechanism to combat the movement of counterfeit goods across the border in the form of Customs register of intellectual property rights objects. But it does not work automatically, but requires the participation of the rights owner.

If you have any additional questions as to Customs enforcement of intellectual property rights in Ukraine, Customs register of intellectual property rights objects please contact us or +380 44 3 55555 7.