In the recent years, academic efforts have been focused on studying the intrinsic role of the Court of Justice of the European Union in constructing the European intellectual property law. Although active in all areas of intellectual property rights, the CJEU’s impact has been most notable in cases related to the liability of online service providers for copyrighted content. But it is the Court’s influence on shaping the IP regimes of third countries, not falling within its jurisdiction and not having the candidate status, that remained unacknowledged. Notably, the EU/Ukraine free trade agreement, in Annex XVII to Title IV, obliges Ukraine to interpret provisions of the Agreement, identical to that of the Directive 2000/31/EC, in conformity with the relevant rulings of the Court of Justice of the European Union, both in their implementation into Ukrainian legal order and in their application. No similar obligation is included in the Agreement for other areas of intellectual property law. The provisions on CJEU-conform application and interpretation extend the Court’s jurisdiction to a non-EU legal order and pose issues of transfer of sovereignty and of constitutionality for Ukraine. Additional issues arise, such as the accessibility of Court’s judgments to non-EU judges and the eligibility of judgments, based on more than just the E-Commerce Directive. In her presentation, the speaker will address these and other issues, resulting from the role, attributed to the CJEU in IP-related provisions of the EU/Ukraine free trade agreement.

1. CJEU: exporting IP case-law to
third countries
Anastasiia Kyrylenko
University of Alicante
University of Strasbourg
April 20, 2021
5th Annual WIPS, Szeged

3. Exporting EU IP law
• Since the EC’s 2004 Strategy for the enforcement of IPR: EU
trade agreements become a classical route for the EU to
export its IP law.
• Provisions from EU IP Directives and Regulations are copy-
pasted into the trade agreements with slight adaptations.
• Within the obligation to implement the trade agreements,
third countries are still allowed some policy space to
interpreted vaguely-worded notions, derived from EU IP law
(“FTA flexibilities”)
• ¿But is CJEU case-law exported?

4. Judicial activism in the CJEU’s
IP decisions
Communication to the
public
(Art. 3(1) D 2001/29/EC)
Evocation
(Art.13.1(b) R (EU)
1151/2012)
Individual character
(Art. 6 R (EC) 6/2002)
Graphic representation
requirement (“Sieckmann
critetia”)
(Art. 4 R (EC) 207/2009)
Liability of ISPs
(Arts. 12-14 D
2000/31/EC)
Digital Single Market
Directive?

5. Voluntary harmonisation
• Plenum of the Supreme Court of the Republic of Moldova:
• “On the application of certain provisions of copyright and
related rights law” (No 1 from 25.04.2016): communication
to the public (C-306/05, C-403/08 and C-429/08, C-607/11,
C-135/10, C-393/09), exceptions and limitations (C-5/08);
• “On the application of certain provisions of trade mark law”
(No 1 from 06/02/2017): distinctiveness of slogans (C-
517/99), similarity of marks (C-251/95), scope of rights (C-
236/08), exhaustion of trade marks (C-324/09, C-59/08, C-
337/95), licensee (C-46/10, C-400/09 and C-207/10).
• Ukrainian Design Law (as amended by Law 815-IX).

6. Mandatory harmonisation
Article 6 Interpretation
Insofar as the provisions of this Annex [including those based on
2000/31/EC Directive] and the applicable provisions specified in
the Appendices are identical in substance to corresponding rules
of the Treaty on the Functioning of the European Union and to
acts adopted pursuant thereto, those provisions shall, in their
implementation and application, be interpreted in conformity
with the relevant rulings of the Court of Justice of the European
Union.
(Art. 6, Annex XVII to Chapter 6 of Title IV of the EU/Ukraine
Association Agreement)

7. EEA Agreement vs. EU/Ukraine AA
Concept EEA Agreement EU/Ukraine AA
Homogeneity
pre-signature
Mandatory (Art. 6) Mandatory (Art. 6 to Annex XVII)
Homogeneity
post-signature
Voluntary (Art. 105) Mandatory (Art. 6 to Annex XVII)
Legislative
homogeneity
Semi-mandatory (Art. 102) Voluntary (Art. 463(3))
Decision-
shaping
Yes (Arts. 99-101) No
Finalité
EU’s internal market is extended
to EFTA states
Freedom of establishment and
freedom to provide services for
selected areas

8. ¿Future questions?
• Constitutionality?
• Implementation and application?
• Access to CJEU case-law?
• Eligible case-law, if based on more than one EU act?
• No national case-law so far (but EU/Ukraine AA is
directly effective in Ukraine)?
• Other EU trade agreements?

9. Anastasiia Kyrylenko
University of Alicante
University of Strasbourg
anastasiia.kyr@gmail.com
http://www.eipin-innovationsociety.org/
¡Thank you for your attention!