. /.   WORLD TRADE  
ORGANIZATION  IP/C/W/529 
10 February 2009 
 
 (09-0645) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English 
 
 
 
REVIEW OF LEGISLATION 
 
Responses from Ukraine to questions posed by Canada  
 
 
 By means of a communication from the Delegation of Ukraine, dated 12 January 2009, the Secretariat has received the following responses to  questions posed by Canada, as circulated in 
document IP/C/W/527.  
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CANADA 
 
A. P
ROTECTION OF RIGHTS TO INDICATION OF ORIGIN OF GOODS  
 1. Article 8 addresses the grounds for refusal in granting legal protection for qualified 
indications of origin of goods.  Canada would be grateful if Ukraine could provide further details on whether the law takes into account exis ting trademarks?  For example, if there was an 
existing trademark identical to a qualified indica tion of origin, would the qualified indication of 
origin be registered?  
According to Article 8 of the Law of Ukraine "O n Protection of Rights to Indication of Origin 
of Goods" No. 752-XIV dated 16 June 1999, legal pr otection is not granted for qualified indications 
of origin of goods, which is identical or so simila r that it can be confused with a mark for the goods 
and services, the rights on which are recognized in Ukraine.  Considering reputation, popularity and 
duration of use of this mark, such legal protecti on can lead to confusion of the consumers as of 
identity of the goods.  In other cases the qualifying indi cation of origin of the goods can be registered. 
 
2. Article 8, paragraph 2 states that the law "d oes not grant the legal protection to the 
qualified indication of origin of goods related to a geographical place in a foreign state, if […] 
Ukraine has no relevant treaty with a foreign State on mutual protection of this type of 
indication of origin of goods".  Can Ukraine pl ease explain what is meant by "relevant treaty"? 
 
The corrigendum to the notification IP/N/1/UKR /G/1 concerning Main Dedicated Intellectual 
Property Laws and Regulations No tified under Article 63.2 of the TRIPS Agreement, namely the Law 
of Ukraine "On Protection of Rights to Indication of Origin of Goods" was sent to WTO Secretariat. 
 The correction, introduced afterwards, is as follows:  "Paragraph 2.a of Article 8 of Law of Ukrain e "On Protection of Rights to Indication of 
Origin of Goods" was removed from the text of Law according to Law of Ukraine 316-V, dated 
2 November 2006 "On amendments to  Article 8 of the Law of Ukraine "On Protection of Rights to 
Indication of Origin of Goods""". IP/C/W/529 
Page 2  
 
  B. C
HECKLIST OF ISSUES ON ENFORCEMENT  
 
3. Regarding special requirements related to bo rder measures, Ukraine has indicated that 
"[m]easures relating to suspension of customs clearance in accordance with provisions of the 
Customs Code, shall not be applied by the cu stoms bodies to goods which include objects of 
intellectual property rights, are in transit via th e territory of Ukraine or are brought into the 
customs territory of Ukraine or brought outsid e this territory by natural persons in cases 
specified by […] the Customs Code, for purpo ses of personal use and are not intended for 
production or other entrepreneurial activities, or are being sent as international or express mail".  For goods sent through international or express mail, Canada would be grateful if 
Ukraine could confirm whether or not the excl usion applies to both personal and commercial-
sized shipments? 
 
The exclusions mentioned in the indicated Artic le relate only to pers onal goods of natural 
person (citizens), which are considered to be in tellectual property objects and are being sent by 
international or express mail, for purposes of personal use and are not intended for production or other 
entrepreneurial activities.  
 For the goods of commercial purpose which are being sent by international or express mail 
the provisions of this Article are not applied to. 
 
C. O
THER LAWS AND REGULATIONS  
 
4. Ukraine has indicated that it has made  a number of commitments to amend the 
Procedure for the Payment of Fees for Actions Rela ted to the Protection of Rights to Intellectual 
Property Objects in order to remove "the double scale for the amounts of fees that constituted 
an infringement of WTO principles, and [to] set  equal amounts of fees for all payers of such 
fees, irrespective of their citizenship, place of  residence or location".  These changes were 
scheduled to come into effect on the date of  Ukraine's accession to WTO, which occurred on 
16 May 2008.  Canada would appreciate if Ukra ine could confirm whether these changes have 
taken effect. 
 
The changes have taken effect after acc ession of Ukraine to WTO on 16 May 2008.  
According to the Decree of Cabinet of Minist ers of Ukraine # 1148 dated 19 September 2007 "On 
amendments to the Procedure for the Payment of Fe es for Actions Related to the Protection of Rights 
to Intellectual Property Objects", the doubl e scale for the amounts of fees was removed.  
 
 
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