Download Journal № 4 (126) 2022

Kodynets А. Principles of legal protection of intellectual property in the conditions of martial law in Ukraine. Intellectual property is the basis of the development of the modern economy of every state, and the realization of the individual’s right to the free development of his personality, which is expressed in the embodiment of the uniqueness of the inner world in the results of creativity, is a fundamental, basic human right. Ensuring freedom of creativity and reliably guaranteeing and protecting the rights to the results of intellectual and creative activity is one of the fundamental tasks of the state.

The Constitution of Ukraine recognizes and guarantees freedom of literary, artistic, scientific and technical creativity, protection of intellectual property, copyright, moral and material interests arising in connection with various types of intellectual activity. The designation dictates the need to create a modern system of normative regulation of relations in the sphere of protection of the results of intellectual, creative activity, which would ensure reliable protection of the rights of their subjects, recognition of creative results and their protection from offences.

Over the past few years, thorough work has been carried out to update special legislation in the field of intellectual property, to consolidate European approaches to the regulation of relations for the protection of the results of creative activity, and significant infrastructural changes have been made in this direction.

The introduction of martial law on the territory of Ukraine suspended these processes. At the same time, in these difficult conditions, problems arose in the implementation and protection of the rights of subjects in the field of intellectual property, the result of which was the adoption of the Law of Ukraine on April 1, 2022 «On the Protection of the Interests of Individuals in the Field of Intellectual Property during the Martial Law Introduced in connection with the armed aggression of the Russian Federation against Ukraine».

The article is devoted to the consideration of changes in the normative and legal array of the regulation of intellectual property relations under the conditions of martial law in Ukraine. Within the scope of the research subject, the changes in the legislation in the field of intellectual property under the conditions of the introduction of martial law are emphasized, the positive features are analysed and certain shortcomings of such changes are noted, and ways to solve them are proposed.

Keywords: intellectual property, normative regulation, martial law, results of intellectual activity, legislation

Kompanets Ye. Certain aspects of allocation of obligation and burden of proof in criminal proceedings on infringement of intellectual property rights. Different approaches of national and foreign scientists and judges to the meaning of the concepts of «obligation» and «burden» of proof and allocation thereof between parties to criminal proceedings have been analysed. The basic features for distinguishing the concepts of «obligation» and «burden» (compulsion and material interest) and property (dynamism) have been given. It has been noted that in the legislation of some European countries, despite the existence of the presumption of innocence, in certain categories of criminal proceedings, the obligation of proving innocence is placed on the defence. The global trends of shifting the obligations of proof, simplifying the criminal procedure in certain categories of cases, and expanding the rights of participants in the criminal proceedings have been observed. The provisions of the Federal Rules of Criminal Procedure of the USA and the Criminal Procedure Code of Ukraine regarding the mechanism of demanding evidence by the prosecution from the defence have been compared. The norms of Clause 6, Part 2, Art. 242 of the Criminal Procedure Code of Ukraine, which shifted the obligation of proving material damage (damages) from the prosecution to the victim, have been analysed. Based on this norm, it is expected to increase the procedural activity of the victim regarding establishing and proving this circumstance during the pre-trial investigation and the trial. Based on the decisions of the European Court of Human Rights, it has been proven that silence can be, although not the only, basis for issuing a guilty verdict. It is proposed to define and consolidate in the judicial practice of the Supreme Court the presumptions typical for cases of infringement of intellectual property rights: events of criminal offence and guilt.

Keywords: criminal procedure proving, obligation of proof, burden of proof, allocation of proof, reverse burden of proof

Drobyazko V. Protection of the rights of performers in accordance with German law. The article examines the protection of performers’ rights in Germany, introduced by the Act amending copyright regulations of 24 June 1985. The Copyright Act includes Part 2 «Neighboring Rights», section 3 of which deals with the protection of performers’ rights, and the law itself is called the «German Copyright and Neighboring Rights Act». The German Law of 10 September 2003 on the regulation of copyright in the information society completely amends §§ 73−83 of the Copyright and Related Rights Act, which governs the protection of performers’ rights under the WPPT.

The provisions of § 73 «Performer» are extended to the performance of works of folk art. Paragraphs 74−76 are devoted to the protection of moral rights, which were indicated fragmentarily by previous legislation. In the corrected form, moral rights take precedence over rights of use, which confirms the special adherence of German law to them. Whereas under previous legislation so-called “consent rights” were granted to performers, the updated paragraphs grants the present rights of use: recording, reproduction and distribution, communication to the public, rights of use, the right of the performer to demand payment of remuneration, the sharing of several performances.

In Germany, the rights of the organizer of performances are protected. If the performance of the performer is organized by a company, then the rights to use belong, in addition to the performer, also to the owner of the company.

According to §83, the provisions of Section 6 «Copyright Restrictions» of Part I «Copyright» of the Copyright and Related Rights Act apply respectively to the restriction of the rights of the performer and the organizer of the performance.

The protection of performers in Germany is in accordance with the provisions of the Rome Convention, the WPPT, the relevant EU directives.

With further improvement of the protection of the rights of performers in Ukraine, it would be useful to use the experience of Germany regarding the protection of the rights of the organizer of a performance and determining the term for the protection of rights to performances recorded on a phonogram.

Keywords: rights of the performer, moral rights, rights to use, communication to the public, the right of the performer to demand payment of remuneration, the validity period of the rights to use

Ulitina O., Yakusha Ye. Visual works according to the Ukrainain, USA and EU legislation. Works of fine art play an important role in many aspects of human life, which makes them one of the most common objects of copyright. However, there is no single approach to the generalizing concept of the definition of such works in Ukraine and the world.

Works of visual art are created or used in almost every field that belongs to the creative industries. For some industries, works of fine art are fundamental.

New approaches to the use of images lead to the need to rethink the entire system of copyright protection for visual works. Controversial issues also arise at the intersection of the application of copyright norms and the exercise of human rights.

The article is devoted to the issues of legal definition of works of fine art in Ukraine, the USA and the EU. Authors also highlight the role of these works for creative industries. International norms, the USA and the EU legislations are analyzed regarding to the issues of the definition of artistic works. Authors made the research in the legislation of Ukraine regarding the consolidation of the concept of a visual work was carried out. This analysis allowed to develop a number of recommendations to improve the legislation of Ukraine in this area, in particular regarding the use of the concept of visual work. Authors suggest to replace the term «industrial design» as it is fixed in Ukrainian legislation with a term «work of design», which should be protected due to the norms of Ukrainian copyright.

In the article, the authors consider the issue of determining the impact of works of fine art on the development of creative industries in Ukraine. Attention is also paid to the issue of the use of visual works during the war in Ukraine.

The full-scale invasion of the rf into Ukraine showed how important creativity is for a human, but it also led to the emergence of a large number of copyright violations in this area. This situation shows the need to increase the level of awareness about intellectual property rights among the people of Ukraine.

Keywords: works of visual art, copyright, intellectual property law, creative industries, objects of copyright

Butnik-Siverskyi O. Methodological principles of the new paradigm of the development of the theory of national intellectual security. The article examines the theory and methodology of the construction and functioning of the national security system based on the principles of property rights of intellectual property, which are in the field of constant scientific discussions, since a holistic scientific approach to the solution of the specified problem has not been formed.

The article substantiates the methodology of the new paradigm for the development of the theory of intellectual security according to five relevant features: the first feature refers to the unity with the means of achieving the paradigm based on innovative development, taking into account the formation and development of intellectual security as a special component of the state security of Ukraine, the effectiveness of its implementation and the expected positive consequences; to the second — unity with the means of achieving the paradigm with the methodology of scientific research, the disclosure of the inner nature of intellectual capital through the prism of systemic-structural and axiological approaches, which absorbs the methodology of research; to the third — the creation of a single legal field with the means of achieving a paradigm in a complex that unites the state security of Ukraine, national interests and national security in relation to its integral elements; to the fourth — diversity of influences, directions of manifestation and effectiveness according to the target purpose, when the innovative-intellectual sphere of activity organically penetrates and combines with the elements of national security and the national system of intellectual property according to the principle of diffusion of innovations and acts as an intellectual catalyst taking into account the peculiarities of the strategy and the implementation of intellectual property rights ownership of the effectiveness of the national security system and its elements at the appropriate stage of development; to the fifth — the formation and implementation of the national security strategy in relation to its integral elements as a complex and multi-stage process that combines the formation of a strategy to support the economic, scientific-technological and investment security of the state and the management of intellectual property rights.

Keywords: methodology of construction and operation, paradigms of development of intellectual security, signs of a new paradigm of development of the theory of intellectual security, state innovation policy

Herasymchuk Y. Analysis of the Experience of EU and USA in the Context of Improvement of the Ukrainian Legislation on Protection Against Unfair Competition in the Sphere of Intellectual Property. Currently, violations of intellectual property rights are widespread through the prism of distortion of economic competition in the market. Objects of intellectual property, such as trademarks and trade secrets, are a tool for some business entities to obtain illegal profits at the expense of the reputation of other business entities. Precisely for this reason business entities pay attention to monitoring and preventing possible violations of their intellectual property rights on the market, and this, in turn, requires the use of effective ways of protection. That it is important to improve the legislation of Ukraine on protection against unfair competition and development of new means of combating such violations.

Having analysed the system of EU legislation, it can be concluded that the regulation of protection against unfair competition at the level of the EU is still more of a framework, and requires clarifying, as well as the provision of specific liability measures and institutional mechanisms of ensuring and control at the level of legislation of specific EU member states.

In the USA on the federal level there is no special legislative act on unfair competition, but the relevant rules are part of the general antitrust legislation. From this point of view, the respective legislation of Ukraine significantly differs by availability of the special Law. However, in Ukraine the rules on unfair competition are also to some extent subordinated to the general rules of economic competition protection in general. Unlike Ukrainian legislation, US legislation determines an exhaustive list of actions that constitute unfair competition and distinguishes them into unfair actions and unfair practices depending on their recurrence.

Keywords: legislation, legal regulation, unfair competition, intellectual property, remedies, European Union

Chomakhashvili О. Commercial names in the pharmaceutical industry. The article focuses on a comprehensive study of the functioning of commercial designations in the pharmaceutical industry. The notion of commercial designations in the system of intellectual property objects is considered, and the ones relevant for the pharmaceutical industry are outlined. The purpose of the article is to outline the legal basis for the regulation of commercial designations in the pharmaceutical field and to determine the specifics of the exercise of rights to such designations.

Drug companies in the process of creating the name of a new drug must first remember that the main functions of the trademark (trade name) of the drug is to protect consumers from misleading, as well as to prevent medical workers from making a medical error that carries a significant risk to the life and health of patients.

The original name of a medicinal product may receive legal protection as a mark for goods and services (trademark). Such a trademark must meet the requirements of the legislation on the protection of designations. The trademark must not mislead consumers, be commonly used, must not contradict the principles of humanity and morality. At the same time, in the field of medicines, there are special requirements for their name.

In this case, dishonesty may be manifested both in the actions of the holder of the certificate on the trademark and in the actions of the person who registered the medicinal product. For example, a company that has received a licence to manufacture and/or sell a medicinal product is deprived of the right to manufacture and sell the medicinal product under the name specified in the registration certificate of the drug without the consent of another person holding a certificate for the goods and services.

Likewise, It is possible that the manufacturer registers the name of the original medicinal product in the form of a trademark to protect its rights, and the unscrupulous competitor at the same time registers the generic medicinal product and, in order to mislead consumers, gives it a name similar to the trademark-name of the original drug.

It is emphasized that the manufacturer must pay special attention to the choice of the name of the drug at the stage of creating the latter, and in order to ensure the uniqueness and originality of the chosen name, the latter can be registered as a trademark. The conclusion about the importance of legal regulation of this sphere, carrying out of information and legal policy is made. The legal relations in the field of pharmaceutical branch for the purpose of revealing of stages where legal regulation of commercial designations is especially important are described.

Keywords: commercial designations, pharmacy, pharmaceutical sphere, acquisition of rights, trademark

Stefan O. Judicial protection of trademarks in Italy. The article analyses the system of judicial protection of trademark rights on the example of Italy. The main focus is on the judicial procedures provided for by the Italian civil procedural law in the event of an appeal to the court for the protection of the rights of interested persons. Jurisdiction for consideration of cases related to the protection of trademark rights, as well as cases related to unfair competition, is defined. The examination is also carried out by specialized chambers of intellectual property in general courts that consider civil and criminal cases (first and second instance). The legislation distinguishes between two types of legal grounds for lawsuits: violation of the rights of the plaintiff (owner of the trademark certificate) and recognition of the trademark certificate as invalid. The types of decisions that can be made by the court are analysed. First, the court can decide on «descrizione», according to which the plaintiff, with the participation of a bailiff and an expert, can examine and draw up a detailed description of the goods and/or production methods that infringe his rights. The purpose of this procedure is to officially record the violation of the plaintiff’s rights. Secondly, the court can may decide to impose a sequestration on the defendant’s property. Sequestration is carried out by a bailiff. In some cases, the plaintiff may participate in order to correctly identify the goods subject to seizure. The court may decide on the application of sequestration in the presence of a real threat and the possibility of causing irreversible damage to the plaintiff.

Thirdly, the court may issue a decision imposing a ban on the infringer’s activities related to the production, distribution, marketing, promotion and sale of counterfeit goods. When deciding on the above-mentioned grounds, the court can provide for the collection of a certain monetary fine from the defendant.

The conclusion is formulated that the system of judicial protection of the rights of trademark owners in Italy is characterized by a balance of interests between the owners of trademark certificates, state and public interests. The court that examines this category of cases takes a fairly balanced approach to the application of certain sanctions, considering all the specifics of intellectual property rights, the interests of business entities and the damage caused by violations.

Keywords: trademark, civil litigation, judicial examination, judicial expert, court order, legal proceedings, piracy, counterfeiting

Myronenko N. Some peculiarities of legal protection of trademarks in EU countries in the context of European integration processes in Ukraine. The article notes that Ukraine’s further preparation for EU membership involves the completion of a comprehensive transformation of all spheres. One of the vectors of such a transformation concerns trademarks as a necessary element of the free exchange of goods and services. Legal protection of trademarks in EU countries covers three levels: international, regional and national. It is noted that the formation of European standards for the protection and protection of trademarks in the EU was determined by the processes of globalization and integration. The legal model for the regulation of TM relations at the regional level contributed to the convergence of the national legislation of the EU countries. Instead, there are numerous provisions of a dispositive nature, according to which EU countries individually decide on the issue of their reflection in national legislation, which does not create contradictions, but gives peculiarities to the legal regime of TM protection in each specific country. The article reveals some of these features. Attention is drawn to the possibility of registration of warranty and certification marks as TM, which was implemented by Germany, Italy, and France. The identical approach of the EU countries to the registration of «Sound” trademarks — in the form of an audio file — has been revealed. Based on judicial practice, the weaknesses of the registration of a smell as a trademark in the form of a graphic description are considered. Designations that cannot be registered as trademarks and features of registration as such of portraits of people and personal names are defined. The requirements for applicants when registering trademarks and the legal consequences of not using trademarks are determined, as well as the role of using a trademark in overcoming the refusal of registration. The article reveals the meaning and purpose of the «opposition period» and the specifics of its application in individual countries, using the example of Poland, Italy, France, and Germany. Special attention is paid to the protection of territorial brands, national brands and their correlation with well-known brands.

Keywords: trademark, EU countries, territorial marks, national brands, trademark protection

Androshchuk G., Doroshenko O. Codification of industrial property law of Poland: analysis of the main provisions of the new draft law. The article examines the state and trends of legal regulation in the field of intellectual property (IP), forms of systematization of legislation in the field of IP in international treaties, EU regulations, and national legislation. The models of legal regulation of IP are highlighted, the classification of their objects is given. The structure and content of the main provisions of the new draft law Industrial Property Law are analysed (on the example of Poland). The bill comprehensively regulates all objects of industrial property. The changes are mainly aimed at streamlining, speeding up and reducing the costs of obtaining protection of industrial property objects, especially inventions, utility models, industrial designs, trademarks and geographical indications. System changes are shown: the institution of preliminary notice of invention, the registration system for the protection of utility models, a deposit containing technical and technological information that constitutes a commercial secret, conciliation procedures for disputes, IP COMBO — discounts when calculating the amount of state duty in the case of simultaneous presentation of three different objects of industrial property. As a result of the changes made, the attractiveness of the national system of industrial property protection will increase, and the established fees will be an incentive for applicants to obtain legal protection for as many innovative solutions as possible. Possible ways of systematizing legislation in the field of industrial property in Ukraine are proposed. It is concluded that one of the most effective ways to solve the problem of codification is the development and adoption of the Industrial Property Code (following the example of Poland), which would combine and consolidate the main norms regarding the legal protection of industrial property rights.

Keywords: intellectual property, industrial property, codification of legislation, innovation, inventor, amount of fee, law, patent, EU law

Borko Y. Accounting features of intellectual property rights in museums. Attitude to cultural values, their transmission to future generations, effective use in public life promotes self-identification of the nation, has a socially significant function of maintaining stability and sustainable social and economic development, is an indicator of the level of development, spiritual maturity of its citizens.

The modern development of Ukrainian society is aimed at educating people with a humanistic worldview, characterized by openness to social and cultural change, dialogue. Public interest in the formation of creative personality, reassessment of values contribute to increasing attention to the cultural heritage of the past, which is stored in museum exhibitions, collections.

Accounting of the museum fund (museum collection) determines the affiliation of each item to one or another part of the museum funds: the main fund of museum items or the fund of research aids, as well as museum collection items received as objects of intellectual property rights.

Legislatively correct assignment of museum objects to the appropriate group of objects of copyright and related rights will allow in the future to correctly calculate and pay royalties and other remuneration for the use of such objects in the economic activities of museums.

Objects of intellectual property rights for their registration must be completed and certified by relevant documents (patent, certificate, licence, etc.) in the manner prescribed by current legislation of Ukraine.

The reflection of the introduction into economic circulation, use, accounting and disposal of certain acquired (created) objects of intellectual property rights as part of intangible assets, is in compliance with current legislation of Ukraine.

It should be noted that objects of copyright and related rights that contribute to the cultural development of the state can be of significant economic importance both for the authors who created them and for the museum or the state.

Keywords: objects of intellectual property rights, museum objects, accounting, financial and accounting policy, museum, license agreement

Bakalinska О. International transfer of technologies in the conditions of modern challenges. The globalization of international economic and technological cooperation increases the importance of international technology transfer. It is thanks to him that technology spreads as the most important resource of socio-economic development. At the international legal level, the international transfer of technologies is regulated by the norms contained in the provisions of universal, regional and bilateral agreements. Ukraine’s acquisition of the status of a candidate for EU membership necessitated the implementation of the norms of European law into the legal system of Ukraine.

The article examines the main problems of harmonizing the norms of competition law with the norms of legislation on the protection of intellectual property, in particular in the field of technology transfer. Particular attention is paid to the analysis of mergers and acquisitions and other forms of technology transfer, as well as Ukraine’s fulfillment of its obligations under the association agreement between Ukraine and the EU, problems and trends in further improvement of the regulatory regulation of technology transfer issues in the field of public procurement and state aid are identified. It is determined that the technical assistance provided to Ukraine by the partner states requires a review not only of national norms regarding technology transfer, but also the creation of new norms of international technical cooperation in the military, technical and medical spheres. It is noted that access to the latest equipment and technologies can be a significant impetus for the development and restoration of the state, however, this requires working out new mechanisms of cooperation with international partners and support from the state and business, in particular in terms of the creation of new industries and joint scientific research, the results of which can become the basis for the restoration of the state and a long-term strategic partnership.

Keywords: international technology transfer, innovation, European Union, implementation

Glotov S. The high court for intellectual property as an element of the judicial system in Ukraine. CONTRA SENTENTIAM. Based on the analysis of the provisions of the Law of Ukraine «On Judicial System and Status of Judges», provisions of procedural codes, as well as international practices, the author expresses doubts about the expediency of existence in the judicial system of Ukraine of a Higher Intellectual Property Court as a separate judicial institution. The identified procedural and organizational flaws point to the untenability of the position that introducing such a specialized court into the judicial system would increase the effectiveness of intellectual property protection in Ukraine.

There is every reason to assert that the Ukrainian state policy in the matter of the specialized court for this field tends towards ending up with something like a patent court. However, considering the qualification of the candidates for the domestic IP court and the first results of the competition, most likely Ukraine is going to end up with a High Court for Intellectual Property Matters composed of regular judges.

In view of that, the decision to establish a specialized court for intellectual property matters as a separate element of the judicial system appears to be quite questionable, as it defeats the purpose of its creation. And this means, at the very least, budget wasted on the maintenance of an entire judicial institution.

It is also absolutely unclear how the judges of the specialized court will be able to improve the quality of justice in the field of intellectual property law, as they will be effectively unable to bring law enforcement to a new level due to being burdened by the already existing legal positions of the Supreme Court.

The purpose of the article is to demonstrate the importance of the problems that are to be expected as a result of functioning of the Higher IP Court, and to propose an alternative way of ensuring the effectiveness of the protection of exclusive rights.

Keywords: intellectual property law, Higher IP Court, judicial system, legal position, fact in issue

№ 4 (126) 2022