22 OCT 2016

INTA Policy Dialogue on Anticounterfeiting on the Internet in Ukraine was held

On 20 October Kiev welcomed the International Trademark Association (INTA) round table dedicated to the Protection of IP Rights and Anti-counterfeiting on the Internet. The event was supported by the State Service of Intellectual Property of Ukraine.

Mariya Ortynska, CEO at IPStyle Patent Law Company, a member at INTA Anticounterfeiting Committee (ACC), moderated the event. “Using the Internet is the easiest way to distribute counterfeit goods, and therefore, we should discuss this problem and find solutions for implementing anti-counterfeiting measures as soon as possible, Ms.Ortynska pointed out.

Antonina Malysh, acting chief of the State Service of Intellectual Property of Ukraine, and Bogdan Paduchak, deputy director of Innovation Department at the Ministry of Economic Development and Trade of Ukraine, gave their welcoming speeches. “The State Service of IP doesn’t directly ensure the protection of IP rights. However, being responsible for the legal protection of IP objects, we are ready to become a platform where we can discuss the problems of IP rights protection and find how to deal with them,” said Antonina Malysh. Bogdan Paduchak shared up-to-date information regarding the development of IP regulation in Ukraine. Once the bill is signed into law not all will be fully satisfied with the proposed new provisions, particularly concerning the protection of IP rights on the Internet. For one thing, this is due to the fact that the bill doesn’t contain any restrictions regarding trademarks. However, signing the bill into law is only the first step, and once it comes into force, its provisions may be amended, including those concerning trademarks,” said Bogdan Paduchak.

During the event a special attention was given to the most controversial and widely discussed issues, i.e. identification of infringers on the Internet and limited access to registrants’ databases. The participants discussed the disclosure of information about private persons by registrators and their involvement in cases as defendants. “The disclosure of information about private persons is an infringement of the Constitution of Ukraine,” pointed out Olena Skazko, corporate lawyer of Internet Invest Group. Another opinion was passed by Yaroslav Ognevuyk, attorney-at-law at Doubinsky & Osharova Patent and Law Agency. “Regulation of the Internet’s legal framework is insufficient in Ukraine. If lawmakers manage to supplement the domain name regulations with provisions envisaging automatic website blocking once the claim has been filed with the court, and introduce the mandatory enforcement of the court ruling, there will be no need to involve registrars as respondents in court proceedings”, pointed out Mr. Ognevuyk.

Kostyantyn Zerov, expert of the Intellectual Property Research Institute of the National Academy of Law Sciences of Ukraine, stated that in Ukraine, unlike in EU countries, website blocking injunctions against Internet providers are not envisaged. In addition, we lack an efficient mechanism of charging the end users who turn out to be infringers in most cases. Experts also discussed the need to introduce legislation that will not only make Internet Invest Group disclosure of Internet Invest Group possible, but also will restrict its acquisition with a view to protect IP rights.

Once the Advocacy Act comes into force stipulating that attorneys are can have verified access and acquire information from databases in the best interests of their clients, such act will become an efficient anti-counterfeit tool. “Cooperation with e-commerce operators, execution of memorandums on banning the turnover of counterfeit goods can help to deal with this issue. The problem should be handled not only by implementing the regulation, but also with the help of efficient communication with market players,” Kateryna Oliinyk, senior associate at Arzinger, pointed out.

The admissibility and protection of evidence in cases involving counterfeiting on the Internet were also under debate. The participants discussed how recording of web pages should look like: whether it would be enough to make a simple screenshot, whether the record of examination of a webpage by a notary public could be used to prove credibility of the evidence provided, and whether such legal regulations should be implemented in Ukraine. It was pointed out that the problem might be dealt with through establishing of an expert institution that would record the evidence responsively. Oksana Blazhivska, judge of the Economic Court of Kiev, emphasized that the prompt response is of the essence, when it comes to anti-conterfeiting on the Internet.

In addition, the participants spoke about criminal sanctions for IP rights infringements. They’ve arrived at the conclusion that one of the major problems of the Ukrainian criminal law is that it doesn’t contain any provisions that envisage severe consequences for infringers. According to Sergiy Lebedev, CEO at Intellect Group Ukraine, this is not only about commercial expenses, since the distribution of counterfeit goods puts lives at risk.

Oleksiy Gashytskyi, chief of IP Rights Protection and Export Control Department at the State Fiscal Service of Ukraine, and Maria Protsyshen, authorised government official of the Antimonopoly Committee of Ukraine, also spoke about anti-counterfeiting. Maria Protsyshen talked about the resources used by the Antimonopoly Commitee for IP rights protection in cases involving unfair competition, while Oleksiy Gashytskyi came out with complications one might face while proving that counterfeit goods had been used for commercial purposes.

In the course of discussion, the participants have concluded that counterfeiting on the Internet is not only the regulatory problem, since it also involves communication with market participants and the consciousness of every user. The only efficient algorithm for dealing with this problem is to raise the consciousness of users and improve the cultural awareness with regard to execution of IP rights.

According to the Ukrainian Journal of Business Law (link to the original material)