Intellectual Property

Anton KOVAL,
Doubinsky & Osharova

Litigation in intellectual property cases continues playing an important role in effective protection of IP rights during 2015-2016 years in Ukraine. As in previous years, cases on protection of trademark rights are prevailing over market trends related not only to cancellations of trademark certificates for confusingly similar marks and pre-term terminations of trademarks for non-use, but also to trademark infringement actions, where available remedies are: (i) prohibition to use similar trademarks, (ii) removal of marks in questions from goods or services, (iii) destructions, and (iv) recovery of damages. A separate type of court cases is recognition of trademarks as well-known marks leading to cancellation of similar marks on the basis of well-known status as well as to challenging domain names, in which well-known marks or similar designations are used. We anticipate the increase in the number of cases with respect to domain name disputes, where cyber squatters deliberately use trademarks of other persons with the purpose of further sale or re-sale of domain names to true trademark owners. It is positive that instead of paying unreasonably high compensations trademark owners usually decide to protect rights in courts, whose practice has been substantially developed by a lot of successful precedents in recent times. The court practice has also greatly developed with respect to inventions and utility models. Recent trend is invalidation of not only patents, but also of any and all changes made to patents’ claims.

Pakharenko & Partners, one of the largest Ukrainian IP practices, is the top player on the market. The team is widely known forhandling the full spectrum of IP matters, including litigation, anti-counterfeiting and anti-piracy measures, acquisition and commercialization of IP rights. In 2015 the firm supported a number of criminal cases related to violation of trademarks belonging to companies like Chanel SARL, Guccio Gucci SPA, Burberry Limited, Hugo Boss Trade Mark Management GmbH & Co. KG, Hugo Boss Trade Mark Management GmbH & Co. KG, Tommy Hilfiger Licensing LLC, Giorgio Armani S.p.A., NIKE Innovate C.V., SOCIETE BIC S.A., Syngenta, Procter & Gamble Company, Reckitt Benckiser N.V. and more than 20 other world famous brands. The team continued to advise its regular client, WD-40 Manufacturing Company, in the case on recognizing two marks as well known in Ukraine; represented the interests of ANDREAS STIHL AG & Co.KG. in cases regarding protection of IP rights to the STIHL TM. The firm has also developed strategies and protected interests of world-renowned companies in cases of termination of the infringement of IP rights on the Internet and in domain names for commercial purposes. Antonina Pakharenko-Anderson, managing partner, is regularly noted as among the most respected individuals in the IP community. Alexander Pakharenko is traditionally admired for his anti-counterfeiting and anti-piracy proceedings.

The Ukrainian IP heavyweight Doubinsky & Osharova advises prestigious clients on a full IP spectrum. During the reporting period the boutique had a successful and multi-faceted practice: the fight against counterfeiting and piracy; trademark invalidation; invalidation of IP rights; obtaining well-known status for the trademark; forced re-delegation of domain names; conduct of criminal proceedings; litigation and mediation; claim settlements; IP audits. The agency recently successfully represented The Coca-Cola Company in numerous processes on recognition of the “Coca-Cola”, “Fanta”, “Sprite” trademarks as well-known in Ukraine; defended the IP rights of a well-known online company in the sphere of trade with fashion, cosmetics and accessories on recognition of the “ASOS” trademark as a well-known trademark in Ukraine; defended IP rights of the largest oil and gas corporation in the world, namely Exxon Mobil Corporation, in a cancellation action against a trademark confusingly similar to the trademark “PEGASUS”. Michael Doubinsky, managing partneris known for impressive experience in all IP matters. Yaroslav Ognevyuk, partner, is praised for his strong litigation skills. Partners Victoria Sopilnyak and Anton Koval are among the key practitioners.

Baker & McKenzie has a 5-lawyer IP group in Kiev. The team provides a full spectrum of services to establish and protect the IP rights of international companies and local companies. The group focuses on structuring IP-related transactions, pharmaceuticals and IT, securing IP rights, with a focus on trademarks and patents, and protecting clients against unfair business practices. The firm stands out for its unique offering of a technology platform that gives clients real-time access to their global trademark and patent portfolios, an online monitoring system covering IP customs procedures in 55 countries. The IP clients portfolio of the firm include 3M Company, NISSAN, BATMark Limited, Bombardier Inc., Columbia Sportswear Company, Grindex AS, Starbucks Corporation, Alticor Incorporated, Mattel, Inc. and others. Partner Ruslan Drobyazko, an established market fixture, leads the practice. Yuliya Kolchenko and Oleksiy Stolyarenko are the key practitioners.

Sayenko Kharenko continues boosting its IP practice on the market, extending its IP offering to patent litigations and handling some high-profile IP-related transactions. Over the last year, the firm won the lead advisory role for The Coca-Cola Company with respect to patent litigation matters, and also became the lead adviser for two Italian wine consortiums with respect to protection of well-known Italian wine brands against unfair business practices. The team defended the interests of famous Croatian food company PODRAVKA in trademark infringement and design patent invalidation litigation. The firm successfully enforced IP rights of an international gaming company in online games. IP-related transactional work covered thorough IP advice for Vodafone on conclusion of Ukraine-related branding agreement with MTS Ukraine. Partners Oleksandr Padalka and Nazar Chernyavsky are theprimary IP contacts of the firm. Oleg Klymchuk, senior associate, is another important figure of the practice.

AEQUO showcased an impressive series of IP projects last year. The firm advised MTS on Ukrainian law matters relating to IP in relation to expansion of cooperation and strategic partnership with Vodafone in Ukraine; represented Samsung Electronics in a copyright levy dispute against a Ukrainian copyright and rights management society. The team continues to represent Pioneer Hi-Bred International in criminal proceedings relating to trademark infringements before law-enforcement bodies and acts for DuPont, a world-known international manufacturer of chemical products, in a number of complicated criminal matters regarding patent/trademark infringements. Bright Oleksandr Mamunya, practice lead, is regularly noted as being among best IP-practitioners in Ukraine. Hesplits his time between IP and dispute resolution. Yulia Chyzhova and Andrey Nikolayenko are other important IP practitioners.

The IP practice at Asters, a full-service Ukrainian law firm, performs protection of trademark, copyright, inventions and industrial designs; registration of IP rights; licensing and sale of IP rights. In 2015 the team advised FORMOSA SAINT JOSE CORP in connection with patent application and maintenance of patent in Ukraine; and represented Millennium & Copthorne, the owner of a worldwide hotel network, in trademark registration matters. Julia Semeniy, long-standing IP market resident, is the lead partner.

The client base of the IP and technology group of DLA Piper in Ukraine takes in companies from various business sectors where IP is a key asset, including e-commerce, IT and technology, advertising, FMCG. The firm has strong relationships with global companies like Bacardi Limited, Nike, Inc., Nu Mark, Vocera Communications, Inc., Norwegian Seafood Council, Conair Corporation, MIH. The team is heavily involved in various non-contentious IP work (trademarks and patents searches, filings, including multijurisdictional, advise on filing strategies) and some of it is contentious (pre-court procedures, negotiations, cease and desist letters, development of IP protection strategies). One of the strongest sides is assisting clients in more complex projects such as IP structuring and IP audit, with subsequent advice and clean-up as a part of preparation on the part of companies for potential sales or acquisition of business, IPO, group restructuring, as well as supporting clients in the process of evaluating IP assets. Experienced partner Natalia Pakhomovska heads the team.

Vasil Kisil & Partners remains a prominent market player. The firm advises on traditional issues such as trademarks protection and handles unique cases. In particular the team represents the State Enterprise National Art and Culture Museum Complex Mystetskyi Arsenal in a pending copyright dispute involving mural art. The case is unique as it relates to the destruction of a mural. Managing partner Andriy Stelmashchuk acts on the dispute front. In 2015 Vladyslav Podolyak was promoted to counsel and head of IP, while Andriy Kovalyov (previously — head of legal department of Samsung Electronics Ukraine) joined the firm as a counsel.

The renowned IP boutique Mikhailyuk, Sorokolat & Partners demonstrates dynamic growth, and opened offices in Tashkent, Uzbekistan. In Ukraine it operates in Kiev and Kharkov, being one of the largest companies to provide all types of legal and other services for the registration and subsequent legal protection of IP. A recent example of a case concerns the registration of a trademark which is concurrently the family name, the company name of the applicant as well as the geographical name. Leading partners Anna Mikhailyuk and Vadim Mikhailyuk are well-known IP practitioners. Valentin Mikhailyuk,managing partner and founder of the firm, is another recognized name in the IP community.

During the research period, the IP team of Egorov Puginsky Afanasiev & Partners Ukraine provided comprehensive legal advice related to registration, transfer, and use of intellectual property rights, including trademarks, inventions, copyright, domain names. In particular, the firm advised Pixafy on the transfer of IP rights; UniCarriers Corporation on registering of series of trademarks; Viacom on the enforcement of IP rights and cease of sales of counterfeited products; global pharmaceutical company on pharma patent disputes, FTO opinions and data exclusivity issues; 2XU on dispute with the Patent Office over refusals for trademark registration. The dispute resolution team acted for a Benelux investor in an IP dispute with a team of Ukrainian software developers and successfully negotiated an out-of-court settlement. Standing IP market figure counsel Taras Kyslyy leads the IP/TMT practice.

Arzinger ensures comprehensive support of IP turnover and advises on a wide range of commercial arrangements and transactions with IP objects, including taxation. The firm traditionally provides IP advice to companies in pharmaceuticals, construction and development, electronics, telecommunications, energy, retail. In the past year the firm supported trademark registration of the largest manufacturer of coffee products in Ukraine; consulted on granting a non-exclusive license to use images of the heroes of a famous cartoon in the advertising of a client company that is an international manufacturer of packaging materials. Kateryna Oliinyk, patent attorney, joined in October 2015 as senior associate and head of IP. The practice is supervised by Timur Bondaryev, managing partner.

Ilyashev & Partners is primarily known for contentious performance, in particular, trademark disputes. Pharma, cosmetics and manufacturing are part of the team’s industrial focus. The firm represented Feron in protecting IP rights to the trademark “Viferon”; OmniFarm regarding the protection of IP rights to the well-known in Ukraine trademark “White Coal”. Notably, the firm acted as legal advisor to Honda on IP rights protection in the process of launching the Honda App Centre in Ukraine. Irina Kirichenko, patent attorney, is known primarily for successfully advising pharmaceutical companies.

AstapovLawyers* international law group advises on the creation, exploitation and enforcement of IP rights. These range from complex patent actions to all forms of disputes relating to trademarks, domain names, passing-off, copyright, database rights and breach of confidence claims. Among the ongoing IP workload is representing the STB Channel on trademark registration and copyrights; PromSIZ on protection of rights to a trade name and business reputation; CORUM Group in protecting rights on patents in court and advising on matters of registration and protection of IP objects. Ilarion Tomarov heads the practice.

The reputable IP-team of Konnov & Sozanovsky retains the position of an attractive IP counsel for Ukrainian and foreign companies. In 2015 the firm represented the interests of one of the largest post-production studios in Ukraine in the Appeals Chamber of the State Intellectual Property Service of Ukraine, advising in respect of trademark protection. Sergei Konnov, senior partner, heads the practice. The core IP practitioners are Alexandra Odinets and Irina Melika.

The IP team of Integrites historically puts its focus on IP due diligence, drafting various types of agreements (e.g. copyright, license) on IP rights. Last year the team became advisors to a number of new clients, including: Kühne+Nagel International AG, International Air Transport Association, Avis, Master & Dynamic, Inkermanskiy Plant of Vintage Wines, Modern Expo, Aspen Pharmaceuticals, Avon, Brightway Capital, Palma Group. The firm continues advising its long-standing clients. In 2015 Integrites acted as legal advisor to Fornetti Holding Kft on the purchase of a trademarks portfolio and respective registration; advised Rockwool Ukraine on protection of its IP right objects against unfair competitors. Oleksandr Aleksyeyenko, partner, is a key contact.

The Kiev office of CMS Cameron McKenna advises on Ukrainian IP-related issues in the IT, hi-tech and banking sectors. A recent significant project was representing Polish mBank S.A in a trademark dispute against Bank Mykhailivsky, one of the biggest Ukrainian banks. The court upheld that rendering bank services in Ukraine through the use of bank cards issued in Poland satisfies the “use of trademarks” test under Ukrainian law. Olexander Martinenko, Olga Belyakova and Nataliya Nakonechna are engaged in IP work.

IPStyle Patent Law Company continues to extend the practice of patent services specializing in patenting in Ukraine as well as abroad, including USA and EU patenting. In 2015 the firm enhanced the development of its IP litigation department, which is a specialist in representation in courts, government authorities and customs. The 9-lawyer team is headed by Mariya Ortynska, patent and trademark attorney. She is known for her expertise in IP protection strategy developing as well as on trade dress matters in Ukraine.

IPExperts intellectual property agency deals with a broad scope of IP assignments, including IP litigation, intelligence, due diligence, FTO research and market releases. The firm acted for Novyi Channel in a precedential case — a dispute against the 1+1 Channel on protection of the author’s right to the “Revizor” TV-format. Tatyana Sardelli and Mariya Shvetsova are the key contacts, while Natalia Meshchriakova, the firm’s most recognized specialist, serves in the Phantom special unit.

The well-diversified IP practice of Dentons predominantly advises foreign corporations on IP litigation, involving copyrights, patents, trademarks, industrial designs, computer software, and unfair competition. The Kiev office covers areas as diverse as trade secrets and confidentiality, production licenses and IP-related commercial advice and production licenses. The firm is particularly active in the field of new technologies, including computer, Internet and multimedia law. The practice is led by Oleg Batyuk, managing partner.

The well-known IP practice of Jurimex Law Firm is customarily present in the media, entertainment and telecommunications sectors. The firm acted for MSL in different IP matters: trademarks registration and protection, license agreement for the use of trademarks drafting; provided registration to nearly 20 TM to Evolot Limited. Yuriy Krainiak, head of media law, and Oksana Iefimchuk, head of IP, are the key practitioners.

Over the past year Attorney Association PwC Legal has successfully advised on IP rights protection, assisted transactions involving the creation, license and transfer of IP objects, represented interests in the State IP Service, customs authorities, assisted in national and international registration of IP rights. In 2015 the team supported more than 30 cases related to IP matters, including review of the Cognianceintragroup IP/IT agreements and advising on the transfer of IP rights. Client portfolio includes Oracle, Danfoss, Jysk and others. The team is led by Zhanna Brazhnyk.

IP boutique Gorodissky & Partners works on various IP protection issues, with the main focus on trademark and patent protection. Oleg Zhukhevych is noted for his experience in IP litigation work.

Patent Law Agency Synergy acted as legal advisor to Planettoys store in numerous cases regarding protection of IP rights, appeal against fines for violation of advertising laws, purchase of planettoys.com domain name through the domain auction sedo.com. The team recently supported Rozetka.ua in trademark rights violation cases; protected the interests of the owner of the Oliva chain of restaurants in respect of trademark rights and copyrights to corporate identity. Partner Anna Kravchuk is extremely active in the field of domain names, internet projects and IT sector.

The IP team of Law Offices of OMP, as headed by Denis Maistrenko, handles IP due diligence, registration of copyright and related rights, registration and transfer of websites and domain names, advising on IP portfolio management strategies.

IP-project highlights ofthe Ukrainian law firm NOBLES include advising London-based King Digital Entertainment plc on a potential trademark infringement litigation and trademark registration issues in Ukraine. The team, as led by partner Volodymyr Yakubovskyy, continued its work with Mothercare, a British retailer, on the restructuring of franchise arrangements and protection of IP.

The local IP boutique Borovyk & Partners is known for its patent prosecution and counseling practice. Amongst others the firm advises Collar, a well-known Ukrainian producer of pet goods, InterAtletika, a manufacturer of sport goods, in pursuing intellectual property protection both in US and in Europe. In 2016 the firm started actively developing its IP litigation practice, successfully representing clients in a number of patent and trademark litigation cases. Petro Borovyk, founding partner, is the main contact.

IP is one of the basic practices of the Dnepropetrovsk-based BLISS Law Firm. The team provides support to the state registration process and is also competitive in IP-disputes. A selected representative project is transfer of copyright to technical specifications, as well as the trademark from Trading Group Factor to Minox Technology Trading LLC with the signing of the relevant license agreements.

Legal Alliance Company traditionally provides IP advice to pharmaceutical companies, the industrial niche of the firm. The client list includes Astrolucks Invest, Lekhim, Berlin-Chemie AG, Delta Medical, SMD, Apotex, Jadran — Galenski Laboratorij d.d., Scan Biotech. The 5-lawyer team is competitive in launching new medicinal products on the Ukrainian market and trademark protection. The firm recently acted as legal advisor to Berlin-Chemie AG in court proceedings against FC Health in the partial invalidation of the Ministry of Health’s orders for registration of a new drug. Illya Kostin, partner, and counsel, Nataliia Lavrenova, are the firm’s key IP practitioners.

The Kiev office of Wolf Theiss acts predominantly for foreign business on IP issues in Ukraine. The firm advised Amic Energy Management GmbH on trademark registration related to running petrol stations in Ukraine and prepared a licensing agreement for an unregistered trademark. The firmalso focuses onadvertising matters and IP aspects of M&A. Olena Vardamatska leads the team.

The IP-practice of the International Legal Center EUCON is headed by Yevgen Petrenko,counsel. In a recent highlight, the firm acted for Global Message Services Ukraine on supporting national and international intellectual property rights registration.

In 2015 the Kiev office of Peterka & Partners advised ABRO Industries INC, the leading manufacturer and marketer automotive, industrial, and consumer products, in various intellectual property services in Ukraine. Tatiana Timchenko, partner, director of the Ukrainian office, is the main contact.

Dmitrieva & Partners works with authors, related rights holders, trademark owners, and provides advisory on registration, transfer, IP rights protection. The recent focus centers on advising on the disposal of intellectual property and representation in pre-court and court disputes. ACOUSTIC TRAFFIC LLC is the major client. Anzhelika Vakhnitskaya joined the firm in 2015.

In 2015 GOLAW (previously known as Gvozdiy & Oberkovych) continued its trademarks work. The IP team advised Aviareps AG regarding the possibility of expanding an existing trademark registered in Germany in Ukraine; Syngenta Ukraine LLC on agrochemical trademark protection.

Attorneys’ Association Gestors supported the projects of the Domino company with regard to registration of copyright to audio and video works. In 2015 Marchenko Danevych’s lawyers advised one of the leading European pharmaceutical companies on trademark protection and fair competition aspects of launching a new generic medicinal product in Ukraine. Misechko & Partners advised on the payment of royalties for the use of the parent company’s trademark.

^*In May 2016 AstapovLawyers merged with European Law Firm Baltic Business Group to operate under the new joint brand of Eterna Law.