Under the Criminal Code, an Intellectual Property (IP) rights infringement constitutes a crime if it has caused considerable damage. Criminal proceedings can be initiated where a specific threshold of damages is met. The amount of damage (considerable, extensive or particularly extensive) determines the penalties imposed on infringers.

Law enforcement agencies involved in enforcement of IP rights include the following.

Economic Security Bureau of Ukraine

On 24 November 2021, the Economic Security Bureau of Ukraine (ESBU) was launched.

The main objectives of the ESBU are to detect, stop, and investigate criminal offences that infringe on the functioning of the state economy and offences related to the receipt and use of international technical assistance.

The law enforcement function is carried out by detective units established and operating within the structure of the Central Office and Territorial Departments of the ESBU.

Detectives of the ESB are authorised within the competence defined by the Law of Ukraine “On operational and investigative activity” and the Criminal Procedure Code of Ukraine to conduct operational and investigative activities and the pre-trial investigation of criminal offences referred by law to the jurisdiction of the Economic Security Bureau of Ukraine.

Under Article 216 of the Criminal Procedure Code of Ukraine, detectives of the Economic Security Bureau of Ukraine conduct pre-trial investigations of criminal offences under Article 229 of the Criminal Code of Ukraine “Unlawful use of a trademark, trade name, qualified indication of the origin of goods”.

National Police of Ukraine

The objectives of the National Police of Ukraine (NPU) include: 

1) ensuring public safety and order;

2) protection of human rights and freedoms, as well as public and state interests; 

3) combating crimes; and

4) provision, within the limits defined by law, of assistance services to persons who, for personal, economic, social reasons or as a result of emergency situations, need such assistance.

In the framework of combating crimes, the NPU continues investigating criminal offences in the area of economic activity under Article 229 of the Criminal Code “Illegal use of a mark for goods and services, a company name, a qualified indication of the origin of goods”.

The system of prosecutor’s offices under the leadership of the Prosecutor General’s Office

In accordance with Article 131-1 of the Constitution of Ukraine (as amended by Law of Ukraine No. 1401-VIII dated 2 June 2016), there is a prosecutor’s office in Ukraine, whose responsibilities cover:

1) supporting public prosecution in court;

2) organisation and procedural guidance of pre-trial investigations, resolution of other issues in accordance with the law during criminal proceedings, supervision of covert and other investigative and search actions carried out by law enforcement agencies; and

3) representation of the state’s interests in court in exceptional cases and in the manner specified by law.

The system of prosecutor’s offices provides procedural guidance for the investigation of criminal cases related to IPR infringements by the NP and ESB. In particular, the ESB or NP applies to the prosecutor’s office for issuance of a resolution on determining jurisdiction in certain proceedings.

Under the Criminal Procedure Code, IP rights infringement cases qualify as private prosecutions and can be initiated only based on an application from a rights holder or its legal representative in Ukraine that has information on the criminal offence, or by the victim of a crime committed via the infringing activities.

Investigators of the National Police of Ukraine and detectives of the Economic Security Bureau of Ukraine cannot act ex officio in cases involving trademark infringement. However, the police can carry out raids based on the rights holder’s complaint and documents collected during the pre-trial investigation. In order to conduct a raid or specific investigative action, an order must be issued by the court. 

Thus, evidence can be secured only through the NPU and the ESBU. A criminal prosecution involves the following steps:

• The rights holder files an application for trademark infringement with the NPU or the ESBU to register the case in the Unified Register of Pre-trial Investigations (the Criminal Procedure Code provides that such a registration must take place within 24 hours of submission of an application) in order to initiate criminal proceedings and a pre-trial investigation.
• The NPU or the ESBU interview the rights holder’s representative to ensure that it provides relevant information on the infringement.
• Detectives of the ESBU or police officers make repeat (controlled) purchases in order to establish the facts of the sales. Further (or simultaneous) action is taken to locate manufacturing facilities, warehouses and offices, which may then be searched by the police.
• The ESBU or police secure a court order in order to search the relevant premises and seize counterfeit goods, materials, equipment and relevant financial and other documents.
• Once the relevant evidence (including information about the quantity of counterfeits) has been secured, the rights holder files an application with an investigator for trademark infringement, including a damages calculation.
• The court orders an expert to establish the amount of damages and unauthorised trademark use.
• The rights holder submits a civil claim for damages (based on the expert’s report).
• The NPU or the ESBU interview witnesses and other parties related to the criminal proceedings.
• The NPU or the ESBU issue a notice of suspicion and an indictment.
• The criminal records are disclosed by an investigator to the parties, which then familiarise themselves with the materials of the finalised pre-trial investigation and sign the respective procedural document.
• The case is transferred to the court and the trial takes place.
•  The verdict is issued and executed (e.g. payment of a fine to the state revenue, destruction of counterfeit goods, compensation for damages).

There are no specialised courts. Cases are heard by courts of general jurisdiction.

Infringers may be liable under civil laws regardless of whether criminal or administrative penalties have been imposed on them. The general limitation period for a civil action is three years from the date on which the rights holder became aware or should have become aware of the infringement of its IP rights.

Securing the claims is possible both prior to filing the claim, and at any stage of the court proceedings, if the failure to take such measures may significantly complicate or make impossible the execution of the court decision or the effective enforcement or restoration of a plaintiff’s infringed or disputed rights or interests, for the enforcement of which he applied or intends to apply to the court, as well as on other grounds determined by law.

Measures for securing the claim, inter alia, include:

• imposing a seizure on property and (or) money belonging to or subject to transfer or payment to a defendant and held by him or other persons;
• prohibiting the defendant from performing certain actions;
• prohibiting other persons from taking actions with regard to the subject of the dispute or making payments, or transferring property to a defendant or fulfilling other obligations in relation to him or her;
• stopping the sale of arrested property, if a lawsuit has been filed to recognise the ownership of this property and to remove the arrest from it; and
• stopping the customs clearance of goods or items.

The court may apply several types of measures for securing the claims.

If the court takes measures to secure a money recovery claim or a property claim on infringement of IP rights, a defendant (another person) may, on his or her own initiative, secure the claim by depositing into the court’s deposit account the funds in the amount equivalent to the plaintiff’s claims or providing a bank guarantee for such an amount. 

In addition, per reasoned request of a party to the case, the court may issue a ruling to demand evidence in the form of information on the origin and distribution networks of goods or services that infringe intellectual property rights or for which there are sufficient grounds to believe that the distribution of such goods or the rendering of such services is infringing IP rights:

1) from a person regarding whom there are sufficient grounds to believe that such a person is infringing intellectual property rights; and/or

2) from any other person, regarding whom there are sufficient grounds to believe that such a person offered, received, owned and/or used goods or rendered services that infringe intellectual property rights, for commercial purposes; or

3) from any other person who was identified by the person specified in clause 2 as being involved in the production, manufacture or distribution of goods or rendering services that infringe intellectual property rights.

The specified request to call evidence must refer exclusively to information that is necessary to establish the origin and distribution network of goods or rendering services that infringe intellectual property rights or for which there are sufficient grounds to believe that the distribution of such goods or rendering such services infringes intellectual property rights. 

The specified information must contain:

1) full name (for legal entities) or a name (surname, first name, patronymic name — for natural persons) and address of persons with respect to whom there are sufficient grounds to believe that they are manufacturers, distributors or in other manner were prior owners of such goods or providers of such services, including persons involved in wholesale or retail trade in such goods or provision of such services; and

2) information on the quantity and value of manufactured, delivered, supplied, received or ordered goods or services rendered.

The court may also require evidence before a lawsuit is filed, as a measure to secure evidence.

The procedural laws provide for court expertise in cases that require special knowledge. Most IP cases fall under this category. Thus, a court expert is an integral part of every type of legal proceeding, whether administrative, civil or criminal.

If the infringer requests the appointment of an expert, it bears all expenses arising from this. Expenses arising from court proceedings are borne by the losing party.

Remedies

Under Ukrainian civil laws, the rights holder can also seek the following special remedies set out in the Civil Code:

• application of immediate remedy to prevent infringement of intellectual property rights and preserve relevant evidence;
• stopping the passage across the customs border of Ukraine of goods imported or exported in violation of intellectual property rights;
• withdrawal from civil circulation of goods manufactured or brought into civil circulation in violation of intellectual property rights, and destruction of such goods at the expense of the person who committed the violation;
• removal from civil circulation of materials and equipment used mainly to manufacture goods in violation of intellectual property rights, or seizure and destruction of such materials and equipment at the expense of the person who committed the violation;
• application of a single monetary penalty instead of the IPR enforcement remedies set forth in the previous two clauses. A single monetary penalty shall be applied at a defendant’s request, provided that the intellectual property right has been infringed by a defendant unintentionally and without negligence and that the use of the IPR enforcement remedies set forth in the previous two clauses is disproportionate to the damage caused to the plaintiff. The amount of a single monetary penalty shall be determined by the court as the amount of remuneration that would have been paid for the plaintiff’s granting of permission to use the disputed intellectual property right, and shall reasonably satisfy the plaintiff; 
• application of compensation instead of indemnification of damages for improper use of an IPR item. The amount of compensation shall be determined in accordance with the law, taking into consideration the guilt of a person and other circumstances of significant importance; and
• publication at the plaintiff’s request in the mass media or making public in any other manner determined by court of information about violation of intellectual property rights and the contents of the court judgment regarding such violation at the expense of the person who committed the offence.

Customs measures aimed at promoting the protection of intellectual property rights do not apply to genuine goods and in such cases do not depend on the identity of the importer.

Based on our experience, to achieve greater positive change in the fight against counterfeiting, the following measures should be taken:

• a focus on the full range of counterfeit goods, since absolutely all industries are at risk (healthcare, fashion, electronics, sports, home appliances, toys and games, beauty and personal care, agrochemicals);
• maintenance of close cooperation with rights holders by organising training seminars;
• an increase in specialisation and training of investigators/detectives investigating criminal cases involving IPR infringements; and
• active involvement of representatives of rights holders in pre-trial investigations; in particular, in participation in court hearings regarding seizure of confiscated products and complaints on cancellation of seizure or return of property. Such participation can be the source of weightier arguments than the participation of an investigator/detective/prosecutor in cases of this category, which is often a mere formality.

We are not aware of any new or improved methods being used by counterfeiters in Ukraine. 

Currently, fakes are available in all types of marketplaces; however, since e-commerce generally prevails in the Ukrainian market, more fakes are available in online marketplaces. In small cities, counterfeit branded goods are sold at brick-and-mortar markets.

We are not aware of an increase in live shopping and products being promoted and sold through live video streams. Nor are we aware of whether rights holders have found it difficult to track and enforce IP rights on particular types of platforms.

In addition, we are not aware of whether “dupe culture” and “knockoff culture” have contributed to the rise in counterfeit goods being sold online and/or in physical retail locations.

No new legislation has been proposed or implemented to shift the responsibility to marketplaces (online) to ensure they are more vigilant in vetting sellers and removing counterfeit and infringing items.

There have not been any changes or progress made for rights holders who want to take a more financially focused approach against domestic counterfeit sellers and networks.

The following websites are proving to be problematic: OLX, Rozetka, ALLO and Prom.

In the case of trademark infringement through a domain name, it is, in most cases, impossible to rely on WHO’s records to determine the actual holder of a domain in Ukraine, in view of the Law on the Protection of Personal Data. 

In practice, if the actual domain name holder is unknown, the rights holder will contact the registrar with a request to send the infringer a warning letter.

Fraudulent domain name registrations can be revoked by the courts. In cases of fraudulently registered “.ua” top-level domain names (which are registered only on the basis of a trademark valid in Ukraine), along with the revocation of such registration, cancellation of the respective trademark registration should also be considered. 

Warning letters may be used as a form of pre-court dispute resolution.

In the course of internet monitoring, once the rights holder has established who is operating relevant websites and has analysed the relevant information (for example, metadata, internet history and domain information) to detect the location of the counterfeiter’s operations, it is possible to make a trap purchase to:

• determine the return address; and 
• obtain payment receipts, which may then be used as evidence in court. 

Once evidence has been collected, rights holders can choose between administrative, civil or criminal actions (with the involvement of the law enforcement agencies in the latter case). 

Under existing law, an internet service provider cannot be held liable for contributory infringement.

Most counterfeiting issues are settled at the pre-court stage. Having received complaints from rights holders, most infringers try to resolve the matter amicably or meet the claimed demands. However, in some cases, infringers remain unresponsive or oppose the rights holder’s actions and continue their trade in counterfeits. In particular, infringers may re-launch a closed website at a new address. To secure unhampered operation of the website, infringers may also transfer the hosting of the website or transfer the website to a jurisdiction where enforcement is more difficult. 

In relation to domain name disputes, in 2019, UA domain operator Hostmaster adopted the .UA Domain-Name Dispute-Resolution Policy (UA-DRP), a domain dispute resolution mechanism similar to the Uniform Domain-Name Dispute-Resolution Policy (UDRP), but with certain differences. The UA-DRP came into force on 19 March 2019.

On 19 March 2019, it came into force for private second-level domain names in the .UA domain.

On 19 December 2019, it came into force for private third-level domain names in the COM.UA domain.

On 6 May 2021, it came into force for private third-level domain names in the following domains: kyiv.ua, kiev.ua, ivano-frankivsk.ua, if.ua, poltava.ua, pl.ua, uzhgorod.ua, uz.ua.

Since 1 July 2023, Hostmaster’s decision on peculiarities of the application of the Dispute Resolution Policy regarding domain names in the .UA domain and the Rules of the Dispute Resolution Policy regarding domain names in the .UA domain under the martial law regime came into effect, which restored the effect of the Dispute Resolution Policy regarding of domain names in the .UA domain with specific peculiarities of its application under the conditions of martial law, which are provided for by this Decision. The provisions of this Decision shall be effective during the legal regime of martial law and the subsequent 90 days upon its termination or cancellation. Since 1 July 2023, the WIPO Center has resumed administrative proceedings on cases, the consideration of which was suspended due to the introduction of the legal regime of martial law in Ukraine. It is able to notify decisions to the parties in those administrative proceedings in which a decision was rendered but not notified due to the suspension of the Dispute Resolution Policy regarding domain names in the .UA domain. 

Since 1 February 2024, the UA-DRP came into effect for private third level domain names in the following domains: cn.ua, chernihiv.ua, chernigov.ua, cv.ua, chernivtsi.ua, chernovtsy.ua, kr.ua, kropyvnytskyi.ua, kirovograd.ua, lt.ua, lutsk.ua, volyn.ua, te.ua, ternopil.ua, uzhhorod.ua, zakarpattia.ua, vn.ua, vinnytsia.ua, vinnica.ua, zt.ua, zhytomyr.ua, zhitomir.ua.

For a complaint to be successful, the following must be proven:

• the complainant’s trademark is identical or confusingly similar to the domain name;
• the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
• the domain name is registered or used in bad faith.

The remedies available to the complainant are the domain name cancellation or its transfer to the complainant.

In terms of recent trends with regard to domain names, we have not noticed an increase in counterfeit/fraudulent websites.

Social media continues to be a critical tool for bad actors in Ukraine.

In our current practice, we are mostly working with the Instagram and Facebook social networks to stop trademark infringements involving the offering of counterfeit goods via user profiles. Upon revealing an infringement and collecting the evidence base, we submit a complaint to the support service of these social networks. After the complaint is reviewed, either the entire profile is blocked, or the relevant links are deleted, if their number does not exceed three.

The implementation of AI legislation is still at the concept and planning stage in Ukraine. The Cabinet of Ministers of Ukraine, by its Order of 2 December 2020, No. 1556-р (with amendments), approved the Concept of the Development of Artificial Intelligence in Ukraine. AI is planned to be introduced in various spheres of public life — from education to justice.

The government has placed a special emphasis on the introduction of AI into the sphere of public governance, setting the task of referring those administrative services and decisions in which human participation may not be necessary, to AI.

In 2021, the Cabinet of Ministers of Ukraine (CMU) approved the Action Plan for the implementation of AI up until 2024. Also, in October 2023, the Ministry of Digital Transformation published a road map of AI regulation in Ukraine, consisting of two three-year stages, the ultimate goal of which is the implementation of the European Union Artificial Intelligence Act (AI Act), which in turn promotes attempts to harmonise Ukrainian legislation with EU laws. In particular, according to the Recommendations on the responsible use of artificial intelligence in the field of media, which are sectoral recommendations and one of the components of the road map for AI regulation in Ukraine, in terms of confidentiality and data protection, it is important to ensure the prevention of leakage of personal data or other confidential information through the AI systems used. 

The Cabinet of Ministers of Ukraine by its order No. 320 of 13 April 2024 approved the Concept of the state-targeted scientific and technical programme for the use of AI technologies in priority sectors of the economy for the period until 2026. The Ministry for Strategic Industries was determined as the state customer of the programme.

The Ministry for Strategic Industries, together with other interested central bodies of the executive power, within a period of six months must develop and submit to the Cabinet of Ministers a draft of the State targeted scientific and technical programme for the use of artificial intelligence technologies in priority sectors of the economy for the period up to 2026.

The priority sectors of the economy include: machine-building industry; chemical and petrochemical industry; coal industry; defence industry; nuclear industry; scientific and scientific-technical activity; agriculture; and healthcare. 

At the AI Safety Summit 2023 in the United Kingdom, in which 29 governments took part, including the United States, Australia and the EU, Ukraine signed the Bletchley Declaration on the Safety of Artificial Intelligence (The Bletchley Declaration by Countries Attending the AI Safety Summit, 1-2 November 2023). The document provides for cooperation between governments in AI security research.

The CMU also decided to launch a so-called regulatory sandbox for AI developers (a sandbox is a controlled environment in which development companies will be able to develop their product from the very initial stage, from design, so that it takes into account the requirements of the European Union Artificial Intelligence Act).

An issue of copyright for works generated by a computer program, including AI, was first regulated in the new Law of Ukraine “On Copyright and Related Rights” of 2023. Since the criterion of “originality” depends on the creative contribution of a person, works created entirely by AI are considered unoriginal and, according to the law, are protected by a sui generis right. Subjects of a sui generis right can be persons who own property rights or who have licensing powers (authors who created the AI program, their heirs or legitimate users of a program). The conditions for ownership of sui generis rights to works generated by AI can also be defined in a contract. Since such works do not contain a creative contribution and are generated without human participation, sui generis subjects only acquire personal property rights to a work.

In our practice, we have not directly dealt with deepfakes, but we are aware of this issue, involving the spread of false information for the purpose of tarnishing reputation or manipulating financial markets. In practice, this means encountering fraudulent messages from trusted sources or dealing with false negative advertisements (for companies). It is important to be proactive, and to develop a culture of verifying incoming information flow in the workplace, where employees double-check unusual requests or unsolicited messages, especially those related to financial transactions. If an e-mail seems to be untypical for the sender, its legitimacy should be verified. In addition, to prevent deepfakes, digital identification tools should be implemented into the business workflow (multi-factor authentication and digital signatures).

In September 2021, the Verkhovna Rada of Ukraine adopted the Law “On Virtual Assets”. It was expected to enter into force after the relevant amendments to the Tax Code. In June 2023, an updated version was presented, which takes into account the European Markets in Crypto-Assets Regulation (MiCA) project. Neither of these versions has worked in practice. On 22 March 2024, the International Monetary Fund published the Updated Programme for Ukraine as a part of the Extended Fund Facility arrangement, in which the IMF also provided for changes in the legislation on virtual assets. In particular, according to the IMF, the current legal framework for virtual assets may create risks for price stability and the effectiveness of monetary transmission. Therefore, by the end of December 2024, it is envisaged that the National Bank of Ukraine and the National Commission for Securities and the Stock Market, with the technical assistance of the IMF and after consultations with its employees, should jointly prepare an updated version of the legislation on the regulation of the virtual assets market in order to bring it into compliance with international best practices. The proposed draft law should take into account economic development goals and ensure the mitigation of risks for the purpose of ensuring price and financial stability of Ukraine. This means that the existing Law will definitely be revised, and we should expect the President of Ukraine to sign the updated version, according to the most optimistic forecasts, no earlier than the beginning of 2026.

In December 2023, the government of Ukraine presented the National Revenue Strategy for 2024–2030. It included the development of a law on taxation of cryptocurrencies, emphasising the importance of their regulation. The lack of regulation slows down and complicates the conduct of business in Ukraine and the launch of blockchain initiatives in any sphere of life.

In 2017, amendments were made to the Law of Ukraine “On Copyright and Related Rights” (with subsequent amendments in 2023): it was from this time that a rights holder was able to contact a website owner and/or hosting provider with a complaint on the illegal distribution over the internet of copyrighted items under the relevant procedure. The procedure requires both the website owner and the hosting provider to stop copyright infringement within 78 hours. In practice, streaming websites and/or hyperlinks to them are mostly shut down/blocked as demanded by the rights holder or cyber police, and to a lesser extent torrent trackers are blocked.

Substantial changes have also been made to administrative legislation in terms of the liability of both website owners and hosting providers. Criminal legislation has also undergone changes: offences such as camcording and cardsharing are now subject to criminal liability.

QR phishing is a new form of phishing where criminals try to steal personal data or passwords using QR codes that lead to phishing sites or download malicious content to a user’s device. QR phishing is getting more frequent: in Autumn 2023, there was a 50% increase in the number of such attacks. They were mainly aimed at top managers of companies, who were receiving such letters 42 times more often than ordinary employees. The main motive of cyber fraudsters is to steal the credentials of C-level employees, who usually have access to the company’s finances and confidential information.

On 14 November 2019, amendments were made to the Customs Code of Ukraine. First, the definitions of counterfeit goods and intellectual property right (IPR) objects were amended. “Counterfeit goods” means: 

• goods which are the subject of infringement of an IPR to a trademark in Ukraine and which bear, without authorisation, a sign, which is identical to the trademark (TM) validly registered in Ukraine in respect of the same type of goods or which is misleadingly similar to such a TM;
• goods which are the subject of infringement of an IPR to a geographical indication (GI) in Ukraine and bear, or are described by, a name or term protected by that GI; or
• any packaging, label, sticker, brochure, operating instructions, warranty document or other similar item, even if presented separately, which is the subject of infringement of IPR to a TM or a GI, which includes a sign, name or term which is identical to a validly registered TM or protected GI, or which is misleadingly similar to such a TM or GI, and which can be used for the same type of goods.

IPR objects now include the objects of copyright and related rights, inventions, industrial designs, geographical indications, plant varieties and semiconductor products. 

The following new terms have been introduced: pirated goods; measures for facilitation of enforcement of IPR; goods suspected of infringement of IPR; genuine goods; perishable goods; and small consignment of goods.

The following measures are applied to goods suspected of infringement of IPRs:

• suspension of customs clearance of goods on the basis of the data of the Customs Register of IPR objects;
• suspension of customs clearance of goods at the initiative of the state body of revenues and fees;
• destruction of goods, the customs clearance of which is suspended on suspicion of infringement of the IPR;
• suspension of customs clearance and destruction of small consignments of goods, which are transported (dispatched) across the customs border of Ukraine as regular international and express courier mail items; and/or 
• change of labelling on goods and their packaging.

Measures aimed at facilitation of enforcement of IPR shall not be applied to genuine goods.

In order to benefit from the border provisions, a rights holder can file a formal application for customs surveillance in electronic form. Registration with Customs is valid for six months or one year and can be further renewed at the rights holder’s request. Customs also has the right to act ex officio, provided that it has sufficient information on the rights holder and the relevant merchandise.

Measures aimed at facilitation of enforcement of IPR shall not be applied to genuine goods.

In order to benefit from the border provisions, a rights holder can file a formal application for customs surveillance in electronic form. Registration with Customs is valid for six months or one year and can be further renewed at the rights holder’s request. Customs also has the right to act ex officio, provided that it has sufficient information on the rights holder and the relevant merchandise.

The State Customs Service of Ukraine is one of the government agencies involved in preventing infringements of intellectual property rights (IPR) relating to international trade, within the powers defined by the Ukrainian legislation.

The function of the customs authorities is to create a favourable environment for the development of foreign economic activity, to ensure public safety, and to protect the customs interests of Ukraine. Assisting in the enforcement of IP rights, taking measures to prevent the movement of goods in violation of legitimate IP rights across the customs border of Ukraine, and preventing the movement of counterfeit goods across the customs border of Ukraine are main security objectives of customs authorities.

Customs are entitled to apply measures to assist in IPR enforcement either based on the data of the Customs Register, or on their own initiative (ex officio) (if an IPR item is not included in the Customs Register, but is protected in Ukraine). For this purpose, a risk analysis system is used.

In Ukraine, the Customs Register is an information database of IP rights (trademarks, industrial designs, items subject to copyright and related rights, inventions, geographical indications, plant varieties, topographies of semiconductor products), their owners or representatives in Ukraine, and distinguishing features of protected products The Customs Register is available to rights holders and customs officers. Rights holders can include IPR items in the register, introduce changes, suspend or cancel registrations online.

Also, the information resources of the State Customs Service allow viewing the part of the information of the Customs Register which is open to the public, namely the List of IPR items (cabinet.customs.gov.ua/ipr/reg/overview). This is a list of IPR items entered in the Customs Register. It does not contain closed information and is available to all citizens.

To apply for customs surveillance, the rights holder files a formal application providing Customs with relevant information on:

• the merchandise to which the trademark applies;
• any manufacturers of authentic products;
• details of importers and exporters;
• delivery routes and means of transportation; 
• useful tips on identifying counterfeit goods; and 
• any available information on potential sources of counterfeits. 

The requirements for a formal application appear extensive, but the rights holder need only provide available information. An update may be submitted to Customs at any time during the registration period, at no extra cost.

When Customs detects goods suspected of infringing IPR during their transportation across the customs border, their customs clearance is suspended. Once a decision on suspension has been made, the customs office notifies a rights holder about this, and also informs a declarant of the reasons for suspension and of a rights holder’s name and address. A notification sent to a rights holder shall specify: the customs clearance of which goods have been suspended, their quantity, the reasons and period of suspension, the name and address of an owner of goods, as well as other necessary information. The next actions shall be determined and carried out by a rights holder.

If Customs suspends clearance, the rights holder can initiate one of three proceedings:

• Destruction of counterfeit goods. In the case of suspension of customs clearance of goods suspected of infringement of IPR during their transportation across the customs border of Ukraine, such goods can be destroyed under customs control without the need to establish any IPR infringement. Such destruction is possible under the following conditions: the rights holder informs Customs in writing that the goods have features indicating IPR infringement and that they intend to apply the procedure for destroying such goods; and the declarant submits to Customs the consent of the owner of such goods to their destruction, or that no objection to their destruction has been submitted by the owner of such goods (tacit consent). In the case of the actual destruction of goods, where customs clearance has been suspended based on suspicion of infringement of the IPR, the owner of such goods is released from administrative responsibility.
• Civil proceedings. A civil lawsuit is filed against the owner of the infringing goods. Here, the burden of proof is borne by the rights holder.
• Administrative proceedings. These are initiated by Customs. The burden of proof is borne by Customs and the rights holder. The action is initiated by Customs based on an opinion from a competent expert body confirming that the detained goods infringe IPRs. In this case the detained goods are subject to confiscation. 

All costs associated with the preservation and destruction of counterfeit goods are paid by the rights holder

According to rights holders, effective suspensions of customs clearance of counterfeit goods are those that end up with their destruction, drawing up an administrative protocol or a commercial lawsuit with mandatory destruction of seized counterfeit products.

The Department of Non-Tariff Regulation of the State Customs Service and specialised IPR border enforcement assistance units (or officials) are the relevant units within the State Customs Service that assist right holders in enforcement of their IP rights.

The procedure for detention of counterfeit goods at the customs border with their further destruction, prescribed in the legislation, is effective and is actively regional customs offices.

During the implementation of anti-COVID-19 measures in Ukraine, the State Security Service of Ukraine, in cooperation with the law-enforcement authorities, revealed dozens of violations involving the illegal manufacture and distribution of substandard counterfeit disinfectants on an industrial scale. 

In all cases, counterfeits were produced in non-industrial premises using raw materials of dubious origin, according to unknown recipes without any permits and quality control. The finished products were marketed by infringers in Ukraine under famous domestic and European brand names as well as under fictitious brand names through pharmacies, online stores and social media, and were also sold to hospitals and the Ukrainian military. All seized antiseptics, according to experts from the State Consumer Service, were of poor quality, and their use could be harmful to consumers’ lives and health and, notably, accelerate the spread of viral diseases.

The effectiveness of combating the sale of counterfeit products/copyright infringements depends entirely on the actions of rights holders (via their representatives).

The results of the measures undertaken by customs over the past three years:

• An increase in the number of cases or incidents of detection of counterfeit goods.
• Only a small number of types of goods are detained and only of a few rights holders.
• Each case of suspension mostly involves a small quantity of products.
• The urgency of simplifying and speeding up the procedures for storing and destroying counterfeit goods, which are subject to payment by a rights holder, is growing.

Possible steps to strengthen enforcement at the customs border:

• Ensuring a real precedence of the safeguarding function of Customs over the fiscal function (ensuring that Customs’ main objective is not collecting customs payments, but performing the function of “cargo police”, as is the case in the EU).
• Updating a risk management system — action on all types of goods and IPR items entered in the customs register and all violators of customs rules.
• Involvement of all working customs offices in the work.
• Total digitalisation and transparency of the operation process of customs authorities, inter alia, through the creation of a software and information complex provided for by the law with the aim of automating the activities of customs authorities (suspensions), and recording their actions when interacting with rights holders, declarants, and owners of goods.
• Detentions of large-scale consignments of counterfeit goods and mandatory legal consequences — counterfeit goods destroyed or a customs offence protocol drawn up.
• In order to reduce storage time and rights holders’ costs, the procedure for destroying counterfeit goods should be defined as a priority measure, and the rules/procedures for destroying counterfeits and storing seized goods should be simplified accordingly.

6.1 What are the first steps for any anti-counterfeiting plan in Ukraine?

We recommend taking the following steps to detect the sale of counterfeit products:

• monitor the internet;
• search for possible production facilities manufacturing counterfeits (factories, manufacturing facilities and warehouses); and
• reveal and record any advertising of counterfeit products.

Following analysis of the results of such activity, initial action to be taken would be to warn the infringers (sending cease and desist letters without the involvement of the law enforcement authorities), and request that they cease the unlawful activity. Work in this direction significantly reduces the terms of participation in the activity aimed at terminating a specific IPR infringement. 

6.2 How does the rights holder initiate and progress criminal proceedings? 

As trademark infringements are subject to private prosecution, it is up to the rights holder to collect information about the offence and initiate criminal proceedings by sending a statement of infringement of the trademark rights to the police. After the police have entered the information with the Unified Register of Pre-trial Investigations, criminal proceedings are initiated, and all necessary investigative actions are taken within this framework. Once counterfeit products are detected, the police conduct a raid (a representative of the rights holder may participate in the raid with the prior consent of the investigator) and such products are seized. As a result of the raid, the range/quantity of counterfeit products is established and the amount of damages incurred by the rights holder is determined. The case files are sent to the court after the investigator has presented their suspicion to the infringer and the indictment has been drawn up. Our team has been actively involved in training seminars for Customs and police on behalf of rights holders.

6.3 At what stage of the criminal proceedings can the rights holder drop the charges?

At any stage of the criminal proceedings, the rights holder can withdraw their private charges by sending a corresponding statement to the law enforcement authority or the court. Forwarding such a statement is the ground for the closure of the criminal proceedings.

There are no other relevant updates in Ukraine relating to the promotion and sale of counterfeit goods and anti-counterfeiting protocols and procedures (civil/criminal).

The Ukraine Alliance Against Counterfeiting and Piracy (UAACP) was established in 2003 with the support of the Global Anti-Counterfeiting Groups (GACG), several brand owners and other brand and content owners’ groups. The mission of the UAACP then, as now, is to increase the effectiveness of co-operation between all stakeholders in the fight against Intellectual Property Rights (IPR) infringements and IP Crime in Ukraine, and in international trade with Ukraine. This mission is carried out by:

• Providing a timely and relevant network of information and advice on best practice for promoting and protecting IPRs.
• Lobbying for more effective legislation in Ukraine.
•  Raising awareness of the value of IPRs and the costs and harmful effects of IP crime.
• Facilitating education and training for law enforcement agents and relevant public officials.
•  Organising conferences and other meetings for brand and content owners.
• Working with stakeholders to ensure Ukrainian compliance with international IP and trade treaty obligations.

The President of UAACP is Antonina Pakharenko-Anderson.

Membership: Brand or content owners.