The official representative offices, distributors of foreign companies (goods) try to limit the import of their goods by “grey” or “black” suppliers into the customs territory of Ukraine. Besides the opening of criminal investigations and complaints against sellers in the domestic market, the Ukrainian legislation allows restricting the import of “grey” goods into the customs territory of Ukraine.
In accordance with Article 398 of the Customs Code of Ukraine, the owner of a mark for goods and services (“trademark”) or his/her/its authorized person may apply to the State Customs Service ofUkraine requiring to support the protection of his/her/its intellectual property rights by filing registered trademarks (itens) in the Customs Register of Items of Intellectual Property Rights (“IPR”).
Of course, to submit such an application the owner or his/her/its authorized person must have a certificate of registration of rights to a trademark, and in the case of an authorized person – also the right to use and protect the trademark, executed in the form of a license agreement.
The period for registration of the IPR item in the Customs Register is determined taking into account the period indicated in the application, but such time limit may not exceed 1 year from the date of registration of the IPR item in the Customs Register. The period for registration of the IPR item in the Customs Register is calculated from 00:00 a.m. of the day following the day of completion of registration of the IPR item in the Customs Register. In case of submission of one application for registration of an IPR item in the Customs Register for registration of two or more items of IPR in the Customs Register, one registration term for all items of IPR is determined.
The registration of an IPR item in the Ukrainian customs means that in case the relevant goods arrive at the customs, the IPR owner or his/her/its authorized person (representative office, distributor) will be notified about it and will be able to prevent such goods from entering the Ukrainian market.
The period of registration of an IPR item in the Customs Register can be extended for the period specified in the application for the extension of the registration of an IPR item in the Customs Register, but not more than for 1 year. The period is calculated from 00:00 a.m. of the day following the day of expiry of the registration period of an IPR item in the Customs Register.
The mechanism for implementing the consequences of registration of an IPR item in the Customs Register is as follows:
- The goods arrive at the customs;
- The customs suspends customs clearance of the goods for 10 working days and informs the owner of an IPR item. The customs may extend on its own initiative the suspension of the customs regulations for the same period of time. If within 10 working days from the date of receipt of the notification from the customs, the owner does not provide the controlling authority with information on filing a claim and an application for a security claim, an application for extension of the terms, the customs clearance of goods will not be continued;
- The owner of an IPR item receives a court decision to secure a claim prohibiting certain actions in the case of infringement of intellectual property rights, the customs authority continues to suspend the customs clearance of goods for the period set by the court;
- The suspension of customs clearance shall remain in force until the court withdraws the measures of securing the claim.
In case of suspension of customs clearance of perishable goods, the period of suspension is three working days and cannot be extended. Perishable goods are goods whose shelf life for consumption or use in case of suspension of their customs clearance expires within 20 days from the date of such suspension.
The consequence of IPR infringement may be as follows:
- destruction of goods that reached the customs in accordance with Article 401 of the Customs Code of Ukraine;
- change of marking of the goods in accordance with Article 402 of the Customs Code of Ukraine;
- bringing of guilty persons to administrative or criminal liability;
- court injunction to import the goods (e.g. as in the case of the goods bearing the world-famous “Nike” brand).
Lawyers and attorneys of the Zilver law company may consult you on the IP rights, custom duties, assist with the IPR application to the Customs Register, protect the owner of the Trademark (representatives) in Ukrainian governmental bodies and courts. Our contacts: +380501409560 (Viber, WhatsApp, Telegram), e-mail: info@zilver.com.ua.
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