From 23th to 25th of February of 2016 training for representatives of Administrative Courts of Ukraine was organized at the State Enterprise “Ukrainian Intellectual Property Institute” (Ukrpatent) within the framework of the EU-funded Twinning Project “Strengthening the protection and enforcement of intellectual property rights in Ukraine”.
Representatives of the High Administrative Court of Ukraine, Kyiv Administrative Court, Administrative Courts and Administrative Courts of Appeal from different regions of Ukraine, as well as from the High Economic Court of Ukraine and the High Council of Justice of Ukraine.
The training was opened with a presentation from the Director General of the Spanish Patent and Trademark Office (SPTO), Mrs. Patricia García-Escudero, dedicated to the creation of culture of respect to IPR, based on a long-term experience of the SPTO. According to the head of the Office, the IPR protection and enforcement in Spain has more than 100 years of history: the first printed announcements, warning about the unlawful use of trademarks, date from 1901. Nowadays the massive infringement of intellectual property rights, by producing and distributing counterfeit goods, harms the economy, destroys jobs, brings risks to the health and life of consumers, and extends the influence of organized crime groups. Only in 2014 in Spain counterfeit goods for a total value of 300 mln euro were seized, while the country lost more than 30 000 jobs due to this phenomenon.
The SPTO is actively cooperating with law-enforcement bodies, customs, and judicial branch. The Office organizes comprehensive researches in order to study the issue of counterfeit goods, makes campaigns to increase the level of awareness among the public, holds event in big maritime ports and airports on the World Anti-Countrefeiting Day, rewards government officials who have made a significant contribution to the fight with counterfeiting. The SPTO also holds a Summer School on Intellectual Property at the University of Santander and regional workshop on IP for Judges and Prosecutors of Latin America in cooperation with the World Intellectual Property Organization and the European Patent Office. At the web-site of the SPTO a database of case law is available with court decisions in the field of industrial property, which includes more than 30 judgments.
Mrs. Cristina Fernandez, head of the department for legal cooperation and international relations of the SPTO, continued the programme, presenting the activities of the Intergovernmental Commission for Fighting against IPR Infringement. The body at first had interministerial competences, while its creation was related to an increase of falsification and pirated goods in Spain in 2000, which contributed to the unfair competition and decreased innovations. The Commission defines the sectors of activities, improves the IPR legislation, analyses statistics, organizes relevant campaigns and undertakes international cooperation in the field of IPR. Mrs. Fernández also covered the subject of amendments to the Criminal Code of Spain in the part of penalization for production and distribution of counterfeit good.
The following modules of the training were delivered by Mr. Alberto Arribas, judge of the Provincial Court of Madrid, and Mr. Luis Antonio Soler, judge of the Provincial Court of Alicante. During their presentation the following subjects were covered: intellectual property rights as intangible assets, IPR-intensive companies in the EU; economic importance of copyright and related rights’ protection; main characteristics and limitations of industrial property rights; exceptions, similarities and differences between the industrial property, copyright and unfair competition, their application in the case law. The main characteristics of the legal and judicial system of the EU were presented. The module, dedicated to the trademarks, covered the new types of trademarks, like 3-dimensional trademarks, combination of colors, holograms, slogans, book titles, movie titles, animated images, position, sound and olfactory marks.
While speaking about the absolute grounds for refusal in TM registration, Mr. Luis Antonio Soler referred himself to the ECJ case law, providing concrete examples of refusal to register olfactory signs on the basis of a chemical formula; trademarks consisting of sounds, using a textual description; examples of lack of distinctive character; applications for registration of a 3-dimensional form having a technical function, etc. The criteria to compare simple and complex TM, word and graphic TM, 3-D TM, conceptual and phonetic similarity were analyzed, together with the notion of a family of trademarks.
An important part of the training was dedicated to the patent law. Mr. Alberto Arribas presented the main provisions of acquis communautaire and of international agreements that are used by European judges to consider the IPR cases: Paris Convention for the Protection of Industrial Property, Patent Cooperation Treaty (PCT), Agreement of Trade-Related Aspects on Intellectual Property Rights (TRIPS), Munich Convention, Unitary Patent. For instance, the national regime principle and the priority right were analyzed, the most-favored-nation principles; minimum protection standards to be introduced by the states which signed the agreement; judicial system designed for the Unitary patent. Another presentation was dedicated to the patentability criteria, cancellation of patents, exceptions and exclusions from patentability, related to plant varieties and therapeutic and chirurgical methods of treatment and diagnostics; biotechnological inventions and subjective requirements to patentability. A separate module covered the content of the patent rights, direct and indirect infringement of rights, with examples from case law.
As for the module about industrial designs, two judgments of the ECJ were analyzed, related to the industrial designs of Shenzhen Taiden Industrial Co. Ltd and PepsiCo.
After the ending of the training all the participants received their attendance certificates from the Resident Twinning Adviser of the EU-funded Twinning Project “Strengthening the protection and enforcement of intellectual property rights in Ukraine”, Mr. Pablo Ródenas.
You may download the presentations, delivered during the training, using the links below (in Ukrainian).
"Building the culture of respect to industrial property: experience of the Spanish Patent and Trademark Office" (PDF, 9 MB)
"Enforcement of IPR: Spanish experience. Intergovernmental Commission for Prevention of IPR Infringement" (PDF, 2,9 MB)
"Industrial property: general information" (PDF, 1,9 MB)
"Trademark: notion from the EU perspective" (PDF, 1,2 MB)
"Absolute grounds of refusal. ECJ leading cases" (PDF, 1,2 MB)
"Trademark infringements: classification of possible infringements" (PDF, 0,3 MB)
"Patent Law (I)" (PDF, 1,9 MB)
"Patent Law (II)" (PDF, 1,4 MB)
"Patent Law (III)" (PDF, 0,7 ÌÁ)
"Two industrial design cases. ECJ judgments" (PDF, 9,2 MB)
The training participants may as well download (RAR, 1,35 MB) the Ukrainian translation of the two ECJ judgments in the field of industrial designs, analyzed during the training. The archive also includes additional information about the Bilbao case of copyright infringement.