Enforcement of IP rights through Ukrainian customs register: Common mistakes and life hacks

Due to its geographic location, with access to the BlackSea and proximity to the EU and Russia, Ukraine oftenserves as an entry point in the supply chain of counterfeitproduct. Fake products are frequently imported intoUkraine and re-sold in other jurisdictions. The CustomsRegister Of Intellectual Property Objects (CustomsRegister) was introduced in Ukraine in 2001 as a means toprotect brand owners from counterfeiting. While a dearthof trademarks have been recorded to date, the CustomsRegister appears to be an effective tool for curbing theflow of counterfeits. Indeed, in 2018 alone, Ukrainiancustoms stopped imports 4,200 times due to suspectedinfringements.

Some pointers for rights holders importing their goodsinto Ukraine are summarized below.

1. Registering your trademarks with theCustoms Register

Though customs officials have the ex officio right tosuspend the customs clearance process for goodssuspected of IP infringement, in practice they rarely do so.In most cases, the customs clearance process is stoppedwhere a trademark is registered with the Customs Registeror where officials have contact information for the rightsholder’s representative. Thus, registering and recordingtrademarks with customs is a must.

2. Enter your trademark into the CustomsRegister for all categories of registered goods

When recording a trademark with the Customs Register,brand owners must list the types of goods imported underthe trademark by providing Combined Nomenclature(CN) codes. Rights holders, however, often indicate some,but not all, CN codes. If counterfeit goods identify a CNcode not covered in the Customs Register for a trademark,the customs clearance process will not be suspended.Thus, brand owners should include all relevant CN codeswhen recording the trademark in the Customs register.

3. Improving customs protection via extendingtrademark registration

Counterfeiters in Ukraine often present goods forcustoms clearance by indicating the incorrect CN codes.For instance, when importing t-shirts, infringers mayindicate CN codes for fabric, or for the boxes/packagingof the goods. To further increase the chances of detectingcounterfeits, brand owners should record not only goodsthemselves, but also production and packaging materials.