Significant, but not Sufficient
“Despite some achievements in the sphere of intellectual property rights protection, there are still lots of problem areas to be tackled both from legal and practical viewpoints. These are, in particular, border measures, copyright protection, destruction of counterfeit goods, problems of intellectual property rights protection in court as well as sectoral problems of IPR protection faced by producers of agrochemical and pharmaceutical products,” states the latest report of the European Business Association entitled “Overcoming Obstacles to Business Success”.
Doubinsky & Osharova patent and law agency, a recognized IP boutique, is one of the most respected players in the country. The outgoing year of 2009 was marked by advising one of the Diageo Company’s brands — Captain Morgan rum — as well as representing the interests of the Gervais Danon Company. The team consisted of Michael Doubinsky, Victoria Sopilnyak, Anton Koval and Yaroslav Ognevyuk. In the case of an application made by Ukrainian singer Svetlana Loboda of her own name, the agency realized a protection of IP rights on behalf of the singer. Michael Doubinsky continues to enjoy an excellent reputation.
The practice of highly reputable in IP Konnov & Sozanovsky attorneys at law in 2009 covered representing Soremartec S.A. on a matter related to unfair competition, defending a ruling issued by the Antimonopoly Committee in court; advising Hugo Boss on various issues related to franchising activities; advising Film UA on issues related to registering trademarks in the European Community. The professional team includes Tatiana Glukhovskaya, Julia Semeniy and Maria Fomichenko-Zakoutskaya.
Famous for its strong IP practice, in 2009 Pakharenko & Partners attended to the sphere of fighting counterfeit goods and cases of protecting the rights for patents in the pharmaceuticals and agricultural chemicals sectors. Antonina Pakharenko-Anderson and Alexander Pakharenko are the firms’ leading specialists.
Fedorova & Partners is recognized as an IP boutique and consulted the following clients in 2009: Shell, Chrysler, General Motors Corporation, SUN InBev Ukraine, Merck & Co., Wyeth, REWE Group, Tikkurila, AT&T and Western Union. The core of the team consists of Irina Fedorova, Sergey Grenchuk, Ross Fedorov and Maria Grenchuk. The firm was involved in a case of discharge of breach of rights for patents on the cheese of “plait” form, and successfully represented the interests of Barza Neagra SIA in a dispute with AROMA.
Broad experience of Vasil Kisil & Partners includes representation of clients in both prosecution and litigation matters, with the latter being especially extensive. Du Pont, Eurosport, Google, Red Bull, New Channel and Ukrainian Media Holding can be mentioned as clients in the IP field in 2009. Partner Oleksiy Filatov and senior associate Olexandår Mamunya are experienced due to their comprehensive and practical advice and efficient representation of clients in IP matters.
Baker & McKenzie in Kiev concentrated its IP experience predominantly in the litigation field. The team of Ruslan Drobyazko, Yuliya Kolchenko and Ihor Siusel represented R&A Bailey & Co, a leading interntional pharmaceutical company and 3M Company in a dispute concerning IP matters with local companies; acted for Nissan in a number of trademark prosecution, clearance and trademark opposition cases.
Spenser & Kauffmann supported entering Savik Shuster Studio with the TRK Ukrayina TV channel relating to the creation of the Shuster Live TV Program. Ruslan Shevchuk managed the project.
In 2009 DLA Piper in Ukraine with Natalia Pakhomovska assisted in drafting a range of licensing agreements for one of the world’s largest glass producers and provided profound advice on infringement protection issues for the client’s IP rights in Ukraine. The team also advised Inditex S.A., a global fashion retailer which consists of brands like Zara, on its activities in Ukraine, including IPR; conducted due diligence of the concern’s IP portfolio which included trademarks, industrial property objects (such as utility models, inventions, industrial designs), innovation proposals, software, domain names of more than twenty company-members of a major Ukrainian chemicals producer. OBI, a major worldwide network of construction DIY stores, is another client, which received advice on issues regarding setting up the company’s business in Ukraine.
Arzinger, which is strong in dispute resolution, represented a leading world manufacturer and exporter of spice mixtures for the food industry in a patent litigation case as well as Lysoform Desinfektion AG in a trademark litigation case and advised a major Ukrainian bank and pharmaceutical marketing company on a series of IP issues. The firm also focused on representing NORDFOLIEN GmbH in the national part of the PCT in Ukraine. The IP team contained 5 members: Oleksiy Yasinsky, Sergiy Shklyar, Andriy Kiyashko, Iryna Lishchuk and Pavlo Barbul.
The practice group at Asters, as led by partner Oleksandr Padalka and lawyer Borys Snizhko advised Coca-Cola Beverages Ukraine and Nissan on a large variety of IP issues related to the operations of these companies in Ukraine; Sopharma AD on various IP related issues; a global hotel company in connection with trademarks registration in Ukraine; New Line Cinema on obtaining IP rights to translation.
The Kiev office of CMS Cameron McKenna, in the guise of Olexander Martinenko and Oleksandr Molotai, instigated criminal proceedings against a counterfeiter of agricultural seeds; structured the IP component in the acquisition of a supermarket chain in Western Ukraine, which consists of 25 supermarkets; structured the IP side of the transaction related to the construction and launch of the first of a chain of DIY stores in Ukraine and provided advice to a major IT company with respect of works for hire issues of a potential target.
The range of IP activity of Gide Loyrette Nouel consists of various fields of commerce. In 2009 Karl Hepp de Sevelinges and Anastasiya Lemysh gave advice to a pharmaceuticals company on anti-counterfeit litigation regarding one of its products; a global office furniture leader with regard to execution of a distribution agreement and trademark licensing; a luxury goods manufacturer on issues of trademark licensing, advertising, franchise agreements regulation in Ukraine.
Alexandrov & Partners provided registration of trademarks of commercial labels of one of the drugs trade leaders, they are as follows: Collomack, Zitrolex, Androlex, Androlex Plus, Simvalex, Stomatix and Dicalex by IP practitioners Dmytro Slobodyan and Oleksiy Kargin.
Legal Alliance Company carried out trademark registration for the Kniazha Vtikha chain of restaurants, acted in a case with regard to Gedeon Richter against the Ministry of Health of Ukraine for protection of trademark rights. The key contacts are Illya Kostin, Nataliia Lavrenova and Andriy Gorbatenko.
Among the main highlights of the past year of Paritet Law Firm are the Azerbaijani entries in the 2009 Eurovision Song Contest; development and production of a major European TV project; software licensing issues of a major IT outsourcing company, etc. The strong focus on the pharmaceuticals industry covered advice to R&D activity in Ukraine of clients like Pfizer, Merck & Co., Bayer Schering Pharma. Borys Danevych, Igor Kyrylyuk, Svitlana Krakhmalova and Kateryna Halenko are all engaged in the practice.
Dynasty law firm was engaged in copyrights for development of ore mining and a processing enterprise project of mine workings and concentration of Birzulovoe deposit ilmenite sands as well as IP rights protection of films.
Jury Krajnyak from the Jurimex law firm was involved in cases related to the trademarks ICQ, Forbes, Google (admission of the Google sign as a notorious case related to domain name google.ua); registration of rights in music productions by television recording of concerts.
ILF consulted Herbapol S.A. Wrocław with regard to rights protection of the trademark Phitolysin on the territory of Ukraine along with TORPAL on issues of rights protection of its trademark and website. Anton Zinchuk comes highly regarded.
Denis Okhrimchuk and Olga Balan, lawyers with Okhrimchuk Grushyn Khandurin, successfully represented IMG International Holding Company in a dispute with SOCPC Max-Well, a subsidiary of the multinational company MaxWell Biocorporation, on transfer of trademark, rights for goods and service trademarks.
D&D Lawyers team, consisting of Viktor Dovhan, head of department, Sergiy Zheka and Kostyantyn Chekunov, represented a Kiev photography agency and a group of pharmaceuticals companies in trademark registration and preparation of relevant documentation.
Rostislav Molodetskiy and Vladymyr Zubar of the Odessa-based Jurline law firm, protected the rights for the Afisha Odessa trademark in a dispute with KP Media. S & A music Group, which issued a claim to be an owner of the trademark Svetlana Loboda, was presented by the Legal Consulting Centre.
Gvozdiy & Oberkovych law firm is gradually strengthening its expertise in the IP litigation field and trademark issues. In 2009 lawyers Stanislav Kononenko and Maxim Lebedev advised numerous Ukrainian companies and foreign investors operating in IT, energy and agriculture sectors on a large variety of IP law issues, including information protection policy, trademark registration and licensing agreements.
Magisters, Grischenko & Partners, Mikhailyuk, Sorokolat & Partners were named as relevant legal advisors in the poll.