Recordal of intellectual property rights objects in the Customs Register

Registration of a trademark, industrial design, invention, or other intellectual property object is an important step in protecting a business. However, registration alone is often not sufficient for full control over the use of a brand or another IP object.

If goods are moved across the customs border of Ukraine, an effective additional protection tool is the recordal of the intellectual property object in the customs register. This procedure enables customs authorities to identify goods suspected of infringing intellectual property rights and to apply the measures provided by law.

VINCO’S Legal Company supports right holders, importers, exporters, and manufacturers in the procedure for recording trademarks and other IP objects in the customs register.

The customs register helps the right holder strengthen control over the movement of goods across the customs border of Ukraine and reduce the risk of import or export of counterfeit products.

After an IP object is recorded in the customs register, information about it is made available to customs authorities through the information systems of the State Customs Service. This enables customs officers to use the data provided by the right holder to identify goods that may infringe intellectual property rights.

For business, this is particularly important where the brand is actively used on the market, has recognition and commercial value, or is exposed to risks from unfair competitors.

Recordal of a trademark or another IP object in the customs register may be advisable in the following cases:

• you are the right holder of a trademark and want to protect the brand from counterfeit products;
• you are the exclusive importer of certain goods;
• you are the exclusive exporter of certain goods;
• you are a manufacturer and independently import or export products;
• you have granted rights to use the trademark to partners, distributors, or licensees and want to control the movement of goods;
• your product or brand is being copied by unfair competitors;
• there is a risk of goods being blocked due to actions of another person who recorded an IP object in the customs register or claims rights to a similar object.

The customs register may include intellectual property objects protected by law, in particular:

• trademarks;
• industrial designs;
• inventions;
• copyright and related rights objects;
• geographical indications;
• plant varieties;
• layout designs of semiconductor products.

After an IP object is recorded in the customs register, customs authorities may apply measures to facilitate the protection of intellectual property rights based on the data in the register.

In particular, if goods suspected of infringing intellectual property rights are detected, customs clearance may be suspended. The right holder then has the opportunity to provide a conclusion on the presence or absence of infringement and take further steps to protect its rights.

This mechanism is important for combating counterfeiting, parallel or illegal supplies, and unauthorized use of trademarks, industrial designs, or other IP objects in foreign trade.

The following documents and materials are usually prepared for recording an IP object in the customs register:

• application for assistance in protecting proprietary rights to an intellectual property object;
• copy of the protection document or a document confirming legal protection in Ukraine;
• power of attorney or a duly certified copy if the application is filed by a representative;
• description of the IP object;
• description and photographic images of original goods;
• information enabling customs authorities to identify the goods;
• description of the characteristic features of original products;
• photos of goods suspected of infringement, counterfeit or pirated goods, if available;
• where necessary, samples of original goods or goods suspected of infringing rights.

The support procedure for recording a trademark or another IP object in the customs register usually includes the following stages:

• initial consultation and analysis of the client’s situation;
• verification of rights to the IP object;
• assessment of the feasibility of customs recordal;
• preparation of the list of documents and materials;
• preparation of the description of the IP object and original goods;
• preparation of the application and supporting documents;
• obtaining or preparing necessary extracts and confirmations;
• filing documents with the State Customs Service;
• communication with the authority in case of requests or comments;
• receipt of notification on registration of the IP object in the customs register.

The application for recording an IP object in the customs register is reviewed by the State Customs Service within the period established by law. As a general rule, the registration of an IP object in the customs register or the refusal to register it is made within no more than 30 business days from the date of registration of the application or automatic registration of the electronic application.

The term of registration of an IP object in the customs register is determined based on the term specified in the application, but it may not exceed 1 year from the date of registration. If necessary, this term may be extended by filing the relevant application.

The State Customs Service may refuse to register an IP object in the customs register, in particular, if:

• the applicant has no proper legal grounds to file the application;
• the application does not comply with the prescribed form;
• the submitted information is incomplete, inaccurate, or contradictory;
• the required documents are not attached to the application;
• customs authorities cannot identify the presence of the IP object in the goods using the methods proposed by the applicant;
• characteristic features of original goods are absent;
• the goods for which the trademark application is filed do not correspond to the Nice Classification classes specified in the protection document;
• unreimbursed expenses exist in relation to the IP object due to storage of goods whose customs clearance was suspended.

Filing an application without proper preparation may lead to delays or refusal to record the IP object in the customs register.

The most common issues arise from an incomplete document package, an unclear description of the IP object, insufficient description of original goods, lack of identification criteria, inaccuracies in Nice Classification classes, absence of proper authority of the representative, or incorrect preparation of electronic copies of documents.

For customs recordal, it is important not only to confirm ownership of the trademark but also to provide information that allows customs authorities to practically identify original and potentially counterfeit goods.

VINCO’S Legal Company provides comprehensive support in recording trademarks and other intellectual property objects in the customs register.

We assist with legal analysis, preparation of the application, formation of the evidentiary and identification part, collection of documents, filing with the State Customs Service, communication with the authority, and support until receipt of the notification on registration of the IP object in the customs register.

If you want to protect your brand against counterfeiting, illegal import, or unauthorized use during the movement of goods across the customs border of Ukraine, the VINCO’S team will help prepare the documents and complete the customs recordal procedure.