Project: Scientific monographs
Editors: Yuriy Kapitsa
Year: 2017
Pages: 664
ISBN: 978-966-360-343-8
Publication Language: Ukrainian
Publisher: PH “Akademperiodyka”
Place Published: Kyiv

European Union Intellectual Property Law: formation, institutes, directions of development. The monograph considers: specific features of formation of the EU Intellectual Property Law; harmonization of national legislation of the EU Member States on protection of inventions, trademarks, industrial designs, geographical indications, topographies of semiconductor products, trade secrets, copyright and related rights; civil and customs enforcement of intellectual property rights. Practice of implementation of the EU acts. Evaluation of the effectiveness of legislation; . results of comparative analysis of the IPR legislation of Ukraine and the EU; peculiarities and problems of approximation of Ukrainian legislation to the EU legislation in accordance with Association Agreement, as well as approximation of the CIS countries IPR legislation to the legislation of the EU.

Significant difference being shown in the application of the European Union instruments for harmonization and unification of legislation for various areas of intellectual property protection, determined primarily by the political and economic factors, as well as by the influence of European regional agreements and WIPO and UPOV agreements. The role of the Council of Europe activity in unification of the national legislation of European countries on protection of inventions and copyright is considered. The main stages of development of the EU legislation on protection of industrial property and copyright and related rights are being highlighted. The non-harmonized legislation of the EU member states and prospects for its harmonization are being analyzed. It is pointed out the importance of incorporating into the legislation of third countries experience of the EU member states in regulation of conclusion of agreements on transfer of IPR rights and granting of licenses; protection of utility models; trade names, etc. Effectiveness of the EU acts on intellectual property protection and their enforcement is studied , taking into account the problem of determination of value of specific norms of these acts, considering their possible use for third countries for approximation of legislation. The limitations of the directive as an instrument of harmonization, the application of which in some cases does not allow effective approximation of legislation, but leads to deharmonisation of legislation, is noted.

Based on the analysis of implementation of the Partnership and Cooperation Agreements between the EU and CIS countries , there’s shown the failure to comply with the requirements of the agreements on ensuring the level of protection of intellectual property rights at the EU level within stipulated terms. The reasons are being analized — connected with the lack of specific EU recommendations on approximation for CIS countries, that do not foresee EU membership or foresee it in a long term perspective – unlike the countries of Central and Eastern Europe, for which the White Paper in Preparation of the Associated Countries of Central and Eastern Europe for Integration into the Internal Market of the Union (1995) was prepared; lack of the EU-targeted technical assistance, aimed at legislation changes; as well as different political priorities of the CIS  countries, of integration with the EU.

Analysis of the Association Agreements between the EU and Ukraine, Moldova and Georgia, sighed in 2014, shows that, with the formal reflection in the agreements of many norms of the EU  IPR acts in general, these agreements contain lower standard of approximation of legislation, thanthe Partnership and Cooperation Agreements. The drawbacks of such Association Agreements include the lack of obligations of countries to provide approximation to the future EU acts; indication in the text of the Agreements only of certain but not all of the important provisions of the EU acts; the lack of requirements for approximation of countries’ legislation to the existing EU acts in the intellectual property sphere; outdated provisions of the Association Agreements in connection with the adoption of the new EU acts and changes to the provisions of the acts; the lack of mechanism of taking into account decisions of the EU Court for the interpretation of EU acts, etc.

The study proposes creation of the sustainable mechanism for approximating legislation of Ukraine, Moldova and Georgia to the EU legislation through adoption by the Association Councils of these countries of the documents on the scope and mechanisms of approximation of intellectual property legislation; stipulation of the mechanism for taking into account decisions of the EU Court, interpreting provisions of the EU acts; establishing an effective mechanism for approximating of legislation, similar to that one, existing in the EFTA and European Economic Area countries. There is substantiated and used to prepare amendments to the legislation of Ukraine – the concept of approximation of legislation of third countries to the EU one, which do not envisage accession to the EU, or envisage such accession in a long-term perspective. The indicated Conceptincludes: consideration of both EU harmonized legislation and non-harmonized IPR legislation of the EU members states; . reviewing preparation of the EU acts with clarification of content of the EU directives and regulations as a sort of compromise between Member States and EU bodies; an assessment of the conformity of the EU acts with provisions of international treaties, concluded by third countries, EU, the Member States, and decisions of the international organizations; taking into account decisions of the EU Court interpreting EU acts as well as jurisprudence of application of the EU legislation at Member State level; studying shortcomings of the EU IPR acts; analysing EU acts application practices and effectiveness of the application as well as future expected changes to the acts; determining which institutional framework and organizational measures needed to implement the EU acts in third countries; the extent to which the provisions of acquis should be considered in the legislation of third countries, etc.

The purpose of such a study is to prepare amendments to national legislation, taking into account implementation of those provisions of the EU acts, that have proved their effectiveness; to take into account practice of the EU acts application and the decisions of the EU Court interpreting the provisions of the EU acts, as well as prospects for revision of the EU acts. The analysis of differences between the EU legislation and Ukrainian legislation in the IPR sphere is carried out. Attention is paid to the urgency of introducing amendments to the legislation of Ukraine concerning the protection of copyright and related rights in the digital environment; formation of the modern model of activity of collective management organizations; to adopt amendments to the legislation on the protection of trademarks and unification of procedure for processing of trademark applications; improvement of legislation on the protection of geographical indications, industrial designs, trade secrets, etc. It is relevant to take into account the practice of implementation in the EU Member States of the Directive 2004/48/EC on the enforcement of intellectual property rights and Regulation (EU) № 608/2013 concerning customs enforcement of intellectual property rights. The importance of adopting political decision in Ukraine regarding Ukraine’s accession to the European Patent Convention and making appropriate amendments to the legislation of Ukraine in accordance with the Convention is noted.

It is noted, that the practice of protecting of utility models and industrial designs in Ukraine shows complications in law enforcement concerning abuses in IPR customs measures and circumvention of patents for inventions, which is due to the lack of qualification examination for utility models and industrial designs applications, as well as low standards of utility models patentability. This indicates the importance of introducing mechanisms, in particular those existingin Germany and Austria regarding protection of utility models, envisaging higher standards for the protection of utility models.