EU-funded Twinning Project continues the trainings of general jurisdiction judges

A training for representatives of the general jurisdiction courts of Ukraine was held from 2th to 4th of March of 2016 at the premises of the State Enterprise “Ukrainian Intellectual Property Institute” (Ukrpatent). The event was organized in the framework of the EU-funded Twinning Project “Strengthening the protection and enforcement of intellectual property rights in Ukraine”.

Participants from the High specialized court of Ukraine for civil and criminal cases, Appellate court of Kyiv, Kyiv district courts, Appellate courts from different regions of Ukraine took part is the training.

The welcome speech was made by the Resident Twinning Adviser, Mr. Pablo Rodenas. He informed the participants about the content of three-day advanced training: theoretical and practical components were expended by including issues that were not covered during the first basic training, delivered at Ukrpatent on 6th and 7th of October 2015.

The main content of the training was delivered by the judges of the Provincial Court of Madrid, Mr. Enrique Garcia, and of the Provincial Court of Murcia, Mr. Rafael Fuentes. Mr. Enrique Garcia noted that the main objective of the training is to provide Ukrainian judges with the EU experience of hearing IPR-related cases. According to the short term expert, the situation in Ukraine reminds him of the one faced in Spain 15-20 years ago. Back at that time IPR cases were representing only a small percentage of overall cases, that is why legal graduates were not oriented at working with IPR. Nevertheless, changes happened and for the last 12 years judges, who were speaking at the training in Ukrpatent, are dealing exclusively with IPR cases. Those IPR-related changes led to a modernization in approached used by the Spanish judiciary. Ukrainian judiciary will face the same challenges, taking into account the current integration with the European Union.

According to Mr. Garcia, the main difference of intellectual property rights from other rights is that it is an intangible asset that needs a specific approach in view of the efficient managements of intellectual resources. At the same time, additional expenses related with IPR management bring significant revenues to the business. According to the results of recent OHIM and EPO studies, where 2.3 mln of small and medium enterprises, the core of EU economy, were analyzed, around 39% of EU companies are IPR-intensive, while more than half of the industries of the economy are actively using the IPR, with a general revenue of 4.7 trln euro per year. Those companies have higher revenues, create more jobs. The wages in IPR-industries are 40% higher than in those companies that do not pay necessary attention to intellectual property. For instance, 90% of the EU export is made by those IPR-intensive industries.

During the training representatives of the general jurisdiction courts had an opportunity to familiarize themselves with the general notions on industrial property; better understand its role as a company’s asset; study different ways of IPR enforcement: discover the main principles of harmonization in the work of EU judiciary. The presentations were related to issues arising with trademarks’ enforcement: conflicts between signs, obligations of rightholder, cancelation and revocation of rights. The judgments in the following cases were provided as practical examples: LEVI’S, Specsavers, Chocoladefabriken Lindt/Franz Hauswirth, Malaysia/Ankenaevnet. An additional module covered the issues of TM rights in the Internet: conflicts with domain names (speculative registering, blocking), e-commerce services, social networks, usage of TM in ancors in order to promote goods and services, in meta-tages and in commercial announcements of Google AdWords.

In the Patent Law module the main provisions of the TRIPS Agreement and Directive 2004/48/EU in the field of IPR enforcement were discussed. Those provisions were presented from the point of view of their application by the judiciary. The lawsuits on cancellation and exhaustion, as well as redhibitory actions were analyzed. Several ECJ judgments were commented upon by the Spanish judges: Huawei Technologies Co. Ltd vs. ZTE Corp.; Neurim Pharmaceuticals (1991) Ltd vs. Comptroller General of Patents and Daiichi Sankyo Co. Ltd; Sanofi-Aventis Deutschland GmbH vs. DEMO Anonymos Viomichaniki kai Emporiki Etairia Farmakon.

During the following module short-term experts paid a special attention to enforcement of related rights. The presentation covered several aspects of related rights enforcement for performer, phonogram producers, producers of audiovisual works, broadcasting organizations etc. The subject of orphan works was as well discussed (works, the protection term of which is still effective, but there is no opportunity to localize the rightholder). An important part of the presentation was devoted to the enforcement of sui generis rights to databases, with provisions of the relevant EU Directive and ECJ case law examples: Wegener Mediaventions BV vs. Innoweb BV; Ryanair LTD vs. PR Aviation BV; Freistaat Bayern vs. Verlag Esterbauer.

A separate module "Intellectual property and Internet" was devoted to enforcement issues faced by the rightholders and judiciary. According to the IFPI report, 20% of the Internet users worldwide are using music resources that infringe copyright. Within the module, the international and European legislation was presented concerning content providers and service providers in the information society, the relevant provisions of EU Directives were analyzed, together with the licenses “Creative Commons”; the specificity of file exchange through peer-to-peer was explained. As for the case law, the following ECJ judgments were used: Promusicae vs. Telefónica de España (file exchange "KaZaA"); Louis Vuitton et al. vs. Google; L´Oreal et al. vs. eBay; SABAM (Belgian CMO) vs. Scarlet (service provider); TELE 5 vs. YouTube.

All the participants received attendance certificates on behalf of the Twinning Project. Mr. Pablo Rodenas thanked the speakers for the opportunity to familiarize with the practical experience from IPR case law of the European courts.

You may inform yourself about the training materials by downloading the presentations below (in Ukrainian).