In today’s global trade environment, brand protection goes far beyond trademark registration. Counterfeit goods, grey imports, and infringing products may enter the market already at the border stage. For this reason, Ukraine has implemented a specific enforcement tool, the Customs Register of Intellectual Property Rights, which enables rights holders to involve customs authorities in the protection of their IP assets.
Consider the following scenario. An entity becomes the exclusive distributor of the Italian confectionery brand "D" in Ukraine. Several months later, multiple instances were identified where the same products were marketed in Ukraine outside the authorized distribution channel. How can such situations be effectively controlled in practice?
If the trademark "D" is registered in Ukraine for these confectionery products, it may be recorded in the Customs Register of Intellectual Property Rights, indicating the exclusive distributor as the sole authorized importer. In such a case, if any third party attempts to import these goods into Ukraine, customs authorities will contact the trademark owner and request consent for the importation.
What is the Customs Register of Intellectual Property Rights?
The Customs Register of Intellectual Property Rights is an official database maintained by the State Customs Service of Ukraine. It allows rights holders to record their intellectual property objects for the purpose of preventing the movement of counterfeit and infringing goods across the Ukrainian customs border.
In simple terms, this mechanism enables customs authorities to suspend suspicious goods already at the border if they may infringe intellectual property rights.
Who is this register relevant for?
It is particularly relevant for foreign companies whose goods are imported into Ukraine.
A right holder who has grounds to believe that, during the movement of goods across the customs border of Ukraine, its intellectual property rights are or may be infringed has the right, within the scope of the rights granted by law or by contract, to submit free of charge to the central executive authority implementing state customs policy an application for facilitation of the protection of its rights to an intellectual property object for the purpose of registering such object in the Customs Register of Intellectual Property Rights.
What advantages does the Customs Register of Intellectual Property Rights offer to rights holders?
Once an intellectual property object is recorded in the register, customs authorities automatically compare goods presented for customs clearance with the registered data. If there is a suspicion of infringement of the rights holder’s intellectual property rights, customs clearance may be suspended, allowing the rights holder time to take appropriate enforcement measures.
What is required to obtain protection under the Customs Register of Intellectual Property Rights?
First and foremost, a proper "basis" must be in place. In order to be recorded in the Customs Register, an intellectual property object must be validly registered in Ukraine.
The Customs Register may include the following types of intellectual property objects: copyright and related rights, inventions, designs, trademarks, geographical indications, plant varieties, and layouts of semiconductor products.
Based on practical experience, the most commonly recorded IP object is a trademark.
It is essential to verify that the trademark is registered in Ukraine in the exact form in which it is used on the goods crossing the customs border. This verification is crucial for a simple reason. If a trademark is registered for an outdated logo, while the brand uses a different or updated version, such a trademark will not be suitable for recordal in the Customs Register. During the recordal process, detailed information on the goods and their appearance must be provided, and the registered trademark must be clearly displayed on the goods themselves.
To record an intellectual property object in the Customs Register, an application must be completed and filed with the customs authorities. In practice, the registration procedure usually takes one to two months. If the Customs Service raises any questions or requests clarifications, an official request is issued, allowing the applicant to remedy deficiencies and submit an updated application.
What information do we request from clients for filing an application to record IP rights in the Customs Register?
Our primary objective is to enable customs authorities to clearly identify the goods crossing the Ukrainian border, the relevant border crossing points, and the entities involved in import and export operations. For this reason, we request detailed and accurate information necessary for the recordal, including the following:
- product name and commodity code under the Ukrainian Classification of Goods for Foreign Economic Activity (UKTZED);
- product description, including technical parameters and materials;
- type of packaging and the number of goods per package;
- images of the goods;
- border crossing points across the customs border of Ukraine through which original goods are moved, and the customs authorities carrying out customs clearance of such goods;
- countries of dispatch of the original goods, modes of transportation (road, air, sea, rail, etc.), and transportation routes;
- places of storage of the original goods, places of their dispatch, unloading, warehousing, and similar locations;
- information on the existence of counterfeit goods.
The clearer and more detailed the information provided, the easier it is for a customs officer at a particular border crossing point to identify the goods. For this reason, we aim to facilitate this process to the greatest extent possible.
Following the registration of an intellectual property object in the Customs Register, an official decision is issued. At the time of registration, the applicant selects the period for which the object is to be recorded. The maximum registration period is one year. The registration in the Customs Register may be extended for an additional year. An application for extension must be filed and registered no later than 30 working days before the expiration of the registration period of the relevant intellectual property object in the Customs Register. Our team provides timely reminders regarding the need to renew the registration.
Based on our practical experience, companies that record their intellectual property objects in the Customs Register in advance encounter significantly fewer issues related to parallel imports, counterfeit goods, and unauthorized importation of goods.
Accordingly, where a brand imports or exports products, holds exclusive distribution rights, or is entering the Ukrainian market, the Customs Register should form part of the overall intellectual property protection strategy.