Guest post: The new IP Court in Ukraine: is there any room for improvement?

As a result of comprehensive judicial reform, Ukraine has set out to establish a new specialised intellectual property court (the IP Court). The UK has provided technical assistance to Ukraine on the establishment and functioning of the new IP Court. This DFID/FCO funded project was implemented by the Centre for Commercial Law Studies (QMUL) and led by Dr Noam Shemtov and Prof Ioannis Kokkoris. It was guided by the International Advisory Board, chaired by Lord Neuberger (former President of the UK Supreme Court) and comprising eminent international and Ukrainian IP judges and practitioners. The administration of the project was managed by Maria Tymofienko. In her role as project Research Coordinator, Dr Olga Gurgula, Lecturer in IP Law at Brunel University London, led the research team that prepared the final report and recommendations. In a previous guest post, patent expert Dr Olga Gurgula provided updates from Ukraine as well as highlighting important next steps for the Ukrainian Patent Office. In this post, she talks about the new IP Court in Ukraine and highlights some findings and recommendations prepared by the project. Over to you, Olga.

 

In Ukraine, IP disputes were traditionally considered by three different types of courts: commercial, civil and administrative. While providing several options for resolving IP disputes, the system had a significant disadvantage: it routinely generated confusion as to the jurisdiction of those courts in such disputes. It also frequently resulted in lengthy judicial processes and different court practices when considering similar IP issues. In addition, different courts and procedures, as well as uneven levels of expertise of judges, have often generated unpredictable and inconsistent outcomes in IP disputes. Therefore, it has long been argued by the Ukrainian legal community that the creation of IP specialisation is necessary to overcome these problems. 

Over the last decade, the discussion on how to improve the quality of IP adjudication can be resolved into two main choices: the establishment of a separate IP court or the introduction of IP chambers within the first and appellate courts. Eventually, the first option was endorsed. On 2 June 2016, the Parliament of Ukraine adopted the Law ‘On the Judicial System and the Status of Judges’, which has brought about a major transformation to Ukraine’s judiciary, including created the new specialised IP Court. The Court was to be established within 12 months of the date when the Law came into force, i.e. September 2017. Although the IP Court has been formally created, it is not yet operational.

The new IP Court will operate as the Court of the first and appellate instances and will be located in Kyiv. The first instance will comprise 21 judges, and the Appellate Chamber, nine judges. IP disputes in the first instance will be considered by a panel of three judges. The Court will have exclusive jurisdiction in relation to a wide scope of IP disputes, including disputes related to the rights on patents, utility models, registered designs, trade marks, commercial names and authors’ rights. It will also have jurisdiction over disputes regarding registration, invalidity and revocation of patents and other certificates, disputes concerning IP-related agreements and unfair competition. In addition, it will have the power to recognise a trade mark as well-known.

Syoma is still waiting for
the new IP court in Ukraine

While the creation of the IP Court may be considered as highly desirable, the project’s analysis of Ukrainian Law on the establishment of the IP Court, and the procedural law that will be applied by this Court, identified certain issues that may impinge on the effective functioning of the newly established IP Court. Based on best practices in a number of mature IP jurisdictions, namely the UK, the US, Germany, France and the Netherlands, the project has developed recommendations on possible ways to improve the Ukrainian legal framework related to the establishment and functioning of the Court. 

These include, for example, considering additional safeguards to ensure that the process of reviewing the decisions of the first instance by the appellate IP judges complies with the highest standards of the principles of judicial independence and impartiality. To improve litigants’ access to justice, it is advised to develop the videoconferencing system and introduce additional regional divisions to support the IP Court in Kyiv. Concerning the rules of procedure before the IP Court, it is recommended that, as a general rule, the IP disputes may be dealt with by a single judge, rather than a panel of three judges; the latter would only be engaged in more complex cases. This will facilitate a more effective consideration of IP disputes by the IP Court and will allow the Court to address the relevant caseload more effectively. In addition, it is recommended to clarify the exclusive jurisdiction of the IP Court by removing the potential overlap between the jurisdictions of the IP Court, the administrative courts and other state authorities, for example, by extending the jurisdiction of the Court to customs and tax disputes involving an IP element. The recommendations concerning preliminary injunctive reliefs, cross-undertakings and security for costs list some new approaches for the granting of such measures, which will provide clarity into proceedings conducted before the IP Court and bring them closer to best practices identified in the selected jurisdictions. Finally, to address the problem of the quality of judgements in IP cases, it is recommended to reduce the monetary threshold for cassation in small-value IP disputes. 

The establishment and effective operation of an IP court is a policy-driven decision which aims at encouraging innovation, facilitating investment and guaranteeing the protection of the IPRs holders’ interests. In Ukraine, the creation of a specialised IP court is an important element of the current judicial reform that is aimed at improving the operation of its judicial system. It is believed that the new Court will improve IP enforcement by decreasing the duration of court proceedings and simultaneously increasing the quality of decisions in IP cases. This, it is hoped, will be achieved, inter alia, by selecting and training skilled judges within specific areas of IP, as well as by developing a uniform and consistent judicial practice. We hope that the successful introduction of the recommendations developed by the project as part of the UK technical assistance to Ukraine will contribute to the efficient functioning of the new IP Court, as well as the Ukrainian IP enforcement system in general. The ball is now in the Ukrainian government’s court.