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Placement of IP rights in the customs register

One of the most effective tools for the protection of intellectual property rights (OIP) is their entry into customs registers. It allows you to prevent the movement of goods across state borders without the permission of the copyright holder. For a certain period, you can add a TM, a promotional sample and other protected objects. If illegal transportation of the introduced names is found, the customs office will suspend their registration until all the circumstances of a possible violation of rights are clarified.

The procedure is regulated by the current Customs Code of Ukraine (TCU). The document was supplemented with amendments (June 2020), thanks to which the registration is simplified for the owners of titles of protection. In our experience, the method really works. It perfectly protects the commercial interests of companies that own IPOs.

SION specialists will place IP objects in the Ukrainian customs database. We have been dealing with these tasks since 2011. And we have real cases when such placement helped to detain, receive compensation for violation of rights, and in some cases destroy consignments that violated the rights when crossing the customs border.

List of intellectual property objects

Only certain IPOs may be entered into the Customs Register of Intellectual Property Rights. Clause 46 of Article 4 of the TCU provides a decoding of what exactly is meant. It:

items of copyright and related rights (computer programs, etc.);

  • inventions;
  • industrial designs;
  • trade marks, trade marks;
  • geographical indications of origin;
  • plant varieties;
  • layout of semiconductor products.

Most often, information about TM and industrial samples is entered into the registers. On the other hand, utility models, which could also have been introduced before 2019, have now been excluded from the list of IPOs available for insertion. Another innovation that has added to the list since 2019 is semiconductor layouts.

Customs register of intellectual property objects in Ukraine

We have a unified register of customs authorities in our country. The information resource is called the Unified Automated Information System. In electronic form, it contains information about the IPO (name, type, date, registration period) and its legal owner (representative), possible violators and licensees. The introduction is intended to guarantee the protection of the interests of the IP owner.

The resource was created to prevent illegal import / export of counterfeit and pirated goods across the Ukrainian borders. The entry of data takes place only at the initiative of the copyright holder or his authorized representative on the basis of an application.

Since June 2020, an online electronic data entry system has been in operation. It allows you to post information faster without spending the traditional 30 days on registration. And also more efficiently exchange data between customs and legal owners, if an offense is detected.

Inclusion in the customs register of intellectual property objects

The first requirement is that the rights to the IPO must be officially registered in accordance with Ukrainian legislation. That is, first you need to register your rights at the State Department (aka NIPO – National Intellectual Property Authority) and obtain a title of protection.

Inclusion in the customs database in accordance with Art. TKU 398 is produced free of charge. For its implementation, an application is submitted to the State Fiscal Service (SFS) from the copyright holder or his representative. It is accompanied by a package of such documents:

  • description of the object and the goods containing it (it is necessary that customs officers can carry out identification);
  • description of methods and methods of recognition in products (applies to all objects, but especially inventions);
  • photos of goods and packaging;
  • UKT FEA codes;
  • a list of authorized importers and / or licensees (so that they are not prevented from registering at customs);
  • the constituent documents of the applicant;
  • power of attorney to represent interests;
  • available information about violators.

If you do not provide information about the violators, the customs will not refuse to accept the application. But the absence of this information will slow down the stopping of possible violations. It is better to work out the question in order to provide the customs officers with the most complete list. We recommend that you entrust the task to specialists. SION has a service for monitoring violators of rights at the customs border and identifying the geography of violations. After we identify them, we enter into the application for the application of further legal stopping actions.

The state body considers the application (10 working days are allocated for this) and makes a decision. After that, the rightholder is given information about the assignment of the registration number and the period for which the registration was performed. This is how the protection of the OIC at customs begins.

ZION specialists will help prevent the movement of counterfeit goods across the border. On behalf of the client, we will prepare and submit documents to the State Fiscal Service, we will receive confirmation of registration. In total, from start to finish, registration takes up to 1 month.

Registration of a trademark in the customs register

Most often it is carried out to prevent the import of counterfeit products into the territory of Ukraine. As a rule, this service is ordered from us by importers acting under a license agreement, or official distributors of foreign companies. It allows you to:

  • stop unfair competition (parallel imports);
  • do not allow products labeled in the same way as those of the official importer across borders;
  • preserve the company’s business reputation due to the fact that goods under a protected badge, but of a lower quality, will not enter Ukraine. Usually counterfeit is worse than the original.

Before submitting documents to the civil service, our patent attorneys and patent specialists will advise the client. They will determine the possibility of including a trademark in the electronic database, select the appropriate UKT FEA codes, prepare and submit documents, and fully conduct paperwork.

Protection of intellectual property by customs authorities

In the process of registration of goods or cargo, a broker or inspectors check the customs register of objects of IP rights for the presence of entered objects for the declared goods for possible violations of rights. If the latter are found, customs protection is activated. Usually it involves a series of actions on the part of the copyright holder after he receives a signal about the violation.

The initiator of the signal is the customs if it detects counterfeit or begins to suspect it. According to the latest changes to the TCU from June 2020, the controlling service has expanded powers. It can stop consignments of goods if there are suspicions of illegal transportation across the border, with subsequent mandatory notification of the copyright holder. Such a stop is made exclusively by letter from the copyright holder or his representative.

The responsible authority gained more control and room to maneuver. He can even independently decide on the destruction of small consignments of counterfeit goods, which are transported in dispatches, parcels and international shipments.

Mechanism for the protection of intellectual property rights by customs authorities

Protective measures are connected as follows:

  • The customs office suspends registration of illegal consignments for 10 working days, and for perishable goods – for 3 days. Immediately after the suspension, the SFS informs the copyright holder or his representative about the counterfeit.
  • A negotiation process begins with the violator. The task is to persuade the latter to pay compensation for the violation of rights and sign a pledge that he will no longer engage in illegal import or export.
  • If the violator does not agree, then you can sue or ask the SFS to extend the suspension of registration. Or write a statement to the police for an administrative or criminal violation if the cost of the goods is high. The copyright holder has 10 days for this after receiving information from the SFS.
  • If an expert examination confirms the violation of rights, the customs can initiate a criminal case. After the suspension of registration, the goods are subject to seizure and sent for storage to a customs warehouse.

Customs has the right to suspend counterfeiting on its own initiative, without involving the copyright holder. This is done even if the IPO is not listed in the database, but there are clear signs of transportation in violation of IP rights. If a violation is detected, the copyright holder is notified, then everything goes according to the scenario described above.

Term of protection of rights to objects of intellectual property

Registration is carried out for a period of 6 or 12 months. After that, it is allowed to extend the required (unlimited) number of times for the same period. But not longer than the protection of property rights to the IPO lasts.

The introduction of a TM, industrial design or other IP object should be of a preventive nature. Otherwise, it becomes meaningless as a means of identifying and suppressing offenses. And the submitted documents must comply with the requirements of the law. Therefore, it is important to attract competent specialists for work. These are the employees of SION.

We have an impressive experience in this area with various IPOs. SION is the first company in Ukraine to enter an internationally registered industrial design into the customs register. Now the copyright holder receives compensation every time the violators begin to declare the goods through customs. Our experience is in the best interests of the right holders. The latter have effective levers of pressure thanks to a defense mechanism that actually works.

SION specialists help copyright holders protect their interests, reputation, and avoid financial losses. To start cooperation on entering IP into the customs database, please write to us by mail: info@sion.ua or dial +38 (095) 629-66-63.