- Interviews New
- Editor's Preface
- Ukrainian Legal Market
Practice Areas and Industries Review
- Advertising & Marketing
- Aircraft Finance
- Alternative Dispute Resolution
- Anti-Money Laundering
- Anti-Raiding Law
- Banking & Finance
- Banking Disputes
- Business Crime
- Business Protection
- Capital Markets
- Commercial Law
- Commodities Arbitration
- Competition Investigations
- Complex International Transactions
- Contract Law
- Corporate Disputes
- Corporate Governance
- Counterfeiting and Piracy
- Criminal Process
- Cross-Border Debt Recovery
- Cross-Border Debt Restructuring
- Data Protection
- Domain Names
- Due Diligence
- Energy Efficiency
- Enforcement of Foreign Awards
- Enforcement Proceedings
- Family Law
- Fees and Duties
- Financial Services
- Free Trade Agreements
- Government Relations
- Insolvency Disputes
- International Arbitration
- International Civil Procedure
- International Finance
- International Tax
- Jurisdiction Issues in Commercial Procedure
- Labor & Employment
- Marine Insurance
- Maritime law
- Medicine & Healthcare
- Mergers & Acquisitions
- Natural Resources
- Political Prosecution
- Ports and Marine Terminals
- Private Clients / Wealth Management
- Private Equity
- Procedural Actions
- Procurement Disputes
- Project Finance
- Property Rights
- Public-Private Partnerships
- R&D Offices
- Real Estate
- Renewable Energy
- Role of Experts in International Arbitration
- Show Business
- State Aid
- Tax Controversy
- Trade Remedies
- Transfer Pricing
- Unfair Competition
Who Is Who
- Antitrust and Competition
- Banking & Finance, Capital Markets, Debt Restructuring
- Corporate and M&A
- Criminal Law/White-Collar Crime
- Energy & Natural Resources
- Intellectual Property
- International Arbitration
- International Trade: Trade Remedies/WTO, Commodities, Commercial Contracts
- IT/ Telecommunications & Media
- Labor & Employment
- Pharmaceuticals/Medicine & Healthcare
- Private Clients/Wealth Management
- Real Estate, Construction, Land
- Tax and Transfer Pricing
- Transport: Aviation, Maritime, Shipping
- Law Firms Profiles
- Lawyers Profiles
Last year the Ukrainian IP services market grew only slightly. Notably, this was the first year of growth in quite a few years of falls. Market researchers report that IP practices make up about 5% of the volume of the top 50 law firms market, which in revenue terms is about USD 12-13 million. About 80% of IP practice revenue is earned by about 20% of market players, which is the Pareto principle in action.
The most influential group of players on the Ukrainian IP services market consists of a number of reputable IP boutiques and a few multi-practice law firms having a significant IP practice group within the firm. A less influential part of the market consists of a significant number of a smaller boutiques, private practitioners, patent and trademark attorneys, and common practice law firms that actually do not have a specialist IP team and only handle IP matters once in a while.
The types of IP work demanded most by clients have remained unchanged for many years. These include: IP enforcement, including litigation, trademark and patent prosecution, anti-counterfeiting and transactions.
External IP professionals are greatly demanded by clients who require assistance in IP. This is due to a number of reasons, and inter alia, because IP services require a complex specific knowledge in law and various technical areas, which is rarely possessed by in-house staff; IP assets are of no value if the respective IP rights are not enforced.
In 2018-2019 there was a number of notable moves by top lawyers and even partners along with teams from leading IP boutiques to general practice law firms. This evidently demonstrates that the Ukrainian IP market is being transformed and law firms, using their competitive advantages, are gradually gaining more market power.
It is expected that a specialized IP court, being created, and pending draft laws in IP would also significantly affect the market in the near future, at least those should facilitate an increase in the IP market in Ukraine.
Pakharenko & Partners is a reputable and one of the oldest patent and law agencies in Ukraine, and has a recognized international standing. The team commands a full circle IP practice, including the acquisition and protection of rights to patents, utility models, industrial designs, trademarks, plant varieties and other objects of IP rights. The firm is a port of choice by mainly well-known international companies. This past year was marked by the maintenance of a portfolio of IP rights (obtaining protection for trademarks and subsequent protection of interests in administrative and judicial procedures) of regular customers Chanel SARL, Pernod Ricard S.A., NIKE Innovate C.V., Syngenta, Apple Inc. and more than 30 other world-renowned companies. The firm accompanies the portfolio of IP rights to more than 70 varieties of berries in Ukraine, acting for its permanent client Driscoll’s Inc. The team is especially noted for unrivalled experience in anti-counterfeiting and anti-piracy cases. The benchmark case is support of the portfolio of IP rights of the Procter & Gamble Company, when in cooperation with the police, the activities of an organized criminal group in the online store and the underground production of falsified household chemicals were liquidated. Managing partner Antonina Pakharenko Anderson is a recognized authority with extensive experience in the field of IP. Alexander Pakharenko has many years of experience in counterfeiting and judicial enforcement of IP rights. Evgeniy Kompanets and Vyacheslav Syklitenko are visible in enforcement matters. Olena Shamrina, Volodymyr Sysiuk, Anastasia Mindrul and Andrey Voikov make up the core of the sizeable team.
Patent and law agency Doubinsky & Osharova is a notable IP boutique with an exceptional market reputation and strong following of international and domestic prestigious brand names. The agency possesses a full range of intellectual property services, being in demand for obtaining IP rights, enforcement and high-profile litigation. The firm has been referred for its strong track record of recognition of trademarks as a well-known, complex patent litigation, fight against counterfeiting and piracy. The agency was the exclusive legal partner of UEFA in completing a set of projects related to the holding of the final football matches of the UEFA Champions League and the UEFA Champions League among women of 2017/2018 season in Kyiv. The landmark complex collaboration involved a huge amount of work: analysis and recommendations on contracts between UEFA, the host organization (Football Federation of Ukraine) and the host city Kyiv; harmonization of drafting agreements, amendments to treaties; identification of violations of UEFA’s IP rights; introduction of UEFA IP objects into the customs register, support of import-export operations; identification and elimination of parasitic marketing and spontaneous trade; countering the counterfeit trade, illegal sale of tickets. The team has been actively involved in such projects as drafting and amending IP related legislation, and support creation of the Higher IP Court in Ukraine. The team of IP professionals is headed by a reputable lawyer, well-known in Ukraine and abroad, managing partner Michael Doubinsky. Tatyana Shpakovich, senior partner, head of patent and trademark departments, has been mentioned during the poll for long-standing market presence. The key and well-known partners guiding sophisticated cases were Victoria Sopilnyak, Anton Koval and Yaroslav Ognevyuk1.
The highly-experienced IP team of AEQUO provides advice across the wide range of contentious and non-contentious matters. In addition to trademark and patent prosecution, copyrights, day-to-day advisory and transactional IP work, the market admits strength of its standalone IP litigation team focused on high-profile disputes. The recent caseload includes complicated patent and copyright disputes, trademark infringement on the Internet, unfair competition matters, recognition of trademarks as well-known in Ukraine. Throughout the past year the firm was especially active in expanding its industrial scope while representing clients from agrichemicals, IT, telecommunications and media, pharmaceuticals, and FMCG. As an example of its good standing in the pharmaceutical sector, the team represents Darnitsa in a trademark infringement action regarding illegal use of its widely known trademark on copied packaging of pharmaceutical preparations of the competitor. The team advises its long-standing client Dr. Reddy’s Laboratories Limited on patent clearance regarding its products to be launched on the Ukrainian market. The law firm has already attracted major new clients of the stature of Altia, Sandoz, Bayer, Bosca. In response to increasing inflow of instructions, the firm has made new important hires. Ganna Prokhorova joined the team as a senior associate from Pakharenko & Partners, as well as a group of dedicated associates from other leading law firms. Oleksandr Mamunya, partner, is one of the most recognizable IP lawyers with a strong reputation abroad. Nataliya Dryuk, senior associate, is one of the key members of the team. Another important IP practitioner, Andrey Nikolayenko, who was present across a bench of projects and spent many years with the team, moved in-house as a head of legal of the international aviation company.
Asters IP practice combines both functions — it fully covers IP matters arising from other practices, including M&A, tax structuring, other corporate and finance transactions, and acts as standalone team, representing clients in a variety of IP disputes. The firm is constantly chosen for representation in unfair competition matters. Since October 2018, upon merger with the IP practice of EPAP Ukraine, it increased capacity and reputation by amalgamating with counsel Taras Kyslyy and his team. He became the practice co-head together with IP partner Julia Semeniy. The firm is now particularly strong in enforcement and prosecution of IP rights with deep knowledge in wide range of industries including pharmaceuticals, media, automotive, FMCG, agriculture and fashion. Abbott Laboratories, AbbVie, Amadeus, Biosphere Corporation, Ferrero, Millennium & Copthorne, Nickelodeon, Paramount Pictures, Teva Pharmaceutical Industries, Valentino — this is a selected list of disclosable clients of this big IP practice. The team of Taras Kyslyy successfully defended interests of Teva Pharmaceutical Industries in a dispute with the State Intellectual Property Service of Ukraine and Synthon B.V. on extension of the patent term for medical products for additional 3 years over the standard term of 20 years. The firm has extensive advisory on copyright and trademark issues: advises Paramount Pictures on the enforcement of copyright and halting multiple sales of counterfeit products, infringing copyright for the film the Godfather; advises Valentino on trademark rights exhaustion and further development of strategies and termination of unauthorized sales of client’s products in Ukraine.
The Kyiv office of international law firm Baker McKenzie has historically strongly attracted international brands seeking protection, management and enforcement of IP rights in Ukraine. The team is instructed for representation of big names at customs in border protection, and is present in the most sophisticated trademark litigation. For example, the team represents a bank in a series of trademark disputes with another Ukrainian bank. In addition, the team advises the client on the registration of copyright and related rights, structuring a franchising and distribution relationship with partners. The office constantly acts for worldwide known brands preserving their reputation, acting on enforcement matters and against counterfeit products distributed in Ukraine and parallel importation. Baker McKenzie advises Columbia Sportswear Company in trademark infringement matters, including criminal proceedings against counterfeiters in Ukraine. The firm represents 3M Company in an educational campaign against the use of the SCOTCH trademark in Ukraine as a generic term for adhesive tape, and acts for a client in a number of trademark prosecution and opposition cases in Ukraine. Ruslan Drobyazko, partner and Kyiv IP head, has extensive experience in providing comprehensive IP advice. Its recently promoted counsel Oleksiy Stolyarenko, a key member of the team, represents clients before courts, and is praised for strong experience in the IT sector. Another important IP practitioner, senior associate Julia Kolchenko, left the firm in December 2018 to begin a solo practice.
Arzinger IP practice specializes in a wide range of legal services, including transactional IP matters, contractual relations and IP dispute resolution. The firm’s formidable portfolio throughout the research period included support of clients in anti-counterfeiting, managing brand-portfolio, licensing, domain dispute resolution under UDRP procedure, IP prosecution and enforcement matters, patent disputes. In particular, Arzinger represented the interests of a Swedish manufacturer of own developed and patented cladding systems before Ukrainian courts in a series of interrelated patent disputes. The team provided Johnson & Johnson Ukraine with a complex legal service regarding its partnership with show business representative Nastya Kamenskyh in terms of promoting a trademark advertising campaign in Ukraine; handles representation of RIGO Trading S.A., the leading international confectionary company on brand management issues in Ukraine and EMEA/CIS region. Major clients come from pharmaceutical, food and beverages, retail, automotive, TMT and electronics, e-commerce, agriculture, banking and finance and infrastructure. In 2018 practice head Kateryna Oliinyk was promoted to partner. She enjoyed extensive market feedback for deep domain name expertise. The arrival in April 2018 of Mykola Rekhlytskyi, legal advisor from Samsung Electronics Ukraine Company, strengthened the team.
The Kyiv IP practice of global law firm DLA Piper is a port of choice by a robust list of prestigious global brands seeking advice from the international perspective. The team possesses a diversified offering with a vivid focus on non-contentious IP work — trademarks and patents searches, filings, including multijurisdictional, copyright, trade secrets and designs, etc. In 2018, the focus of the team was spread on conducting due diligence of IP objects, privacy and data retention matters, protection against the spread of counterfeit products in the territory of Ukraine, trademark licenses agreements, management of trademark portfolio and development of IP-strategies. The practice is traditionally strong in IP transactional matters, being regularly attracted to cover IP aspects within M&A and IP portfolio transfers. In the last couple of years the office has demonstrated an impressive following in the TMT sector. The IP practice has experience of preparing and filing complaints in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP) for a few domain names. Natalia Pakhomovska is the partner, head of IP and technology practice. Another key team member is legal director Natalia Kirichenko.
In 2018 Gramatskiy & Partners demonstrated its rapidly growing IP practice, with significant activity in IT, hotel and restaurant business. The team has registered more than 50 trademarks; advised Ukrainian manufacturers on the protection of their copyright in industrial design; worked on complex franchising and licensing projects, software development and complex IP-objects. Clients within the research period include PTS UA Services, Skywindgroup, Skywind Tech UA, Playtech Software Limited, Fun Food Family, Pizzeria Olimpiyska, Technology Services, Labs Technology Services, Leadingworld Investments, Morpheus Games, Golden Mandarin Group. Borys Karas is the practice leader. The most complicated projects are headed by its president, Ernest Gramatskiy.
Being well-known for strong IP litigation capacities, Ilyashev & Partners continues to expand its commercial IP expertise encompassing strategic formation and management of IP portfolios, trademark and patent prosecution, enforcement, franchising and licensing. The firm is noted for its vivid activity in the pharmaceutical sector. For example, the team protects the IP interests of several pharmaceutical companies, including Megainpharm GmbH in a legal dispute against the Ministry of Health of Ukraine and other companies on the invalidation of state registration of a medicinal product. The team’s current highlight is rendering legal support to Xiaomi connected to the planned launch in Ukraine of a new technology, advising on trademarks and domain names protection. Other clients include the American Seed Trade Association, state enterprise Antonov, Omnipharma Kyiv, Mars Media Entertainment (Russia), and new clients — Alfa Laval, EBC Eastern Beverage Company Limited, Kraft Heinz. The team is led by Mikhail Ilyashev, managing partner. In December 2018, Dmytro Nikulesko, who previously worked at Doubinsky & Osharova, joined the team as an attorney. Irina Kirichenko is known for representing life science clients. Other important team members are Mariia Koval, Marina Rishtun and Gadzhimurad Akhmedov (lawyer of the Moscow office, who joined from Nevsky IP Law).
IPStyle Patent Law Company, a domestic IP boutique, is well-known for its dedication to the practice, as well as its social activity and increasingly raised international recognition. The team continues to expand its portfolio of “well-known” trademarks. The team also works with trademarks, including the name “Ukraine” — the process of obtaining legal protection for such TM is complicated by national legislation. The team protects IP interests in courts, and also makes extensive use of out-of-court settlement of disputes, and raises its involvement in unfair competition and data protection. The strong competitive advantage of the boutique is technical specialists on board to obtain complex patents. IPStyle is one of a few law firms that provide on-line monitoring services regarding trademark infringement. In the field of copyright, they deal with “classical” works (novels, films, musical compositions, computer programs) and non-standard objects such as choreography and technical documentation. The firm is involved in IP protection of recently developed military objects and products as well as drugs and medical equipment, represent clients from the USA, Mexico, Slovakia, Latvia and Canada. This past year the team helped an agricultural company Eridon to officially recognize its well-known trademark in Ukraine; supported a well-known Israeli cosmetics company with registering its “CHRISTINA cosmetics” brand in Ukraine. The company is headed by Mariya Ortynska, managing partner, who is very active and visible on the IP market. Partner Irina Ortynska is responsible for patenting, conducting patent searches, searching for patent purity. Dmytro Kocherga acted on litigation matters and left the firm in May 2018.
In addition to the well-established trademark and patents prosecution practice, the IP team of Konnov & Sozanovsky regularly handles representation of clients in patent offices and in courts. The scope spans trademark infringements cases, domain names and copyright issues. The firm’s main clients are leading global patent and IP services firms, international companies operating in Ukraine, Ukrainian industrial companies, agribusiness, Ukrainian media groups. The firm recently defended the rights of a client to a trademark in court in connection with the filing of a claim by a global biopharmaceutical company. The company represented the interests of its long-time client Film.Ua Group. Renowned senior partner Sergei Konnov leads the practice. Anna Filatova, head of its Moscow office, is another key figure.
Marchenko Partners (till August 2018 — Marchenko Danevych) gained experience of complex interdisciplinary cases that require IP, competition, as well as dispute resolution combination. It is noteworthy that the team diversified its client portfolio, expanding involvement in IP transactions and contract work, as well as IP-related disputes. Since 2017 the team has been representing NEXT Retail in litigation on protection of its trademark and copyright against local online and brick and mortar retailers. The team also advised EDANA (the European Disposables and Nonwovens Association) on various aspects of IP rights protection in terms of infringements by a third-party Ukrainian distributor participating in public procurements for nonwovens; represented a Fortune 500 top-20 company on protection of trademark against a local online retailer. Notably, throughout the past year the firm had a steady flow of instructions from leading companies in their industries on illegal parallel imports. Oleksandr Aleksyeyenko, the practice head, combines expertise in IP and competition.
The full-service IP boutique Mikhailyyuk, Sorokolat & Partners possesses a sizeable team to be one of the biggest IP companies in CIS countries. The market recognizes its advantage of geographical reach throughout its network of offices in Ukraine, Russia, Belarus, Georgia, Kazakhstan, Moldova and Uzbekistan with 180+ in-house IP professionals. The firm has experience of handling filing, prosecution, maintenance and protection of all types of IP. The team has an impressive portfolio of registered patents and trademark certificates. In 2018 the team protected clients from unauthorized use of patented methods of manufacturing; acted on a range of cases on infringement of patents, trademarks and design rights. Valentin Mikhailyuk, Vadim Mikhailyuk, Anna Mikhailyuk and Sergey Sorokolat are lead partners.
Redcliffe Partners established its IP and brand protection practice in August 2017 with the arrival of experienced IP practitioner Daria Valyavska as a counsel. The IP practice offering covers developing IP strategies and enforcement; management of IP rights portfolios; IP due diligence and risk assessment; national, international and EU registrations, etс. With a strong track record in M&A, the team often renders transactional IP work. In particular, the firm advised JP Morgan Securities Plc on the revision of IP clauses of an EPC contract in relation to compliance with Ukrainian IP law requirements in a transaction that is one of the largest investments in wind energy facilities in Ukraine; advised an independent Belgian investment group active in the real estate industry, Straco BVBA, in relation to IP due diligence of Ukrainian target entities held within complex due diligence for the acquisition of the Ukrainian subsidiaries of Greenyard NV. The firm advised Next Level Racing, the world’s leading simulation brand, in relation to IP rights infringement; INKAS Group of Companies, a privately-held Canadian company specializing in security, manufacturing and development services, with respect to brand book IP legal protection and registration of an IP trademark portfolio in Ukraine.
In 2018 Sayenko Kharenko had a rapidly growing IP practice that spanned the entire spectrum of IP services, from IP consulting to litigation and anti-counterfeiting. The firm extended its IP offer to patent litigation, carrying out some of the most high-profile IP deals of 2018. The firm acted in a high stake matter, having acted as a Ukrainian legal counsel to Sistema Prosecco with respect to protection of Prosecco DOC appellation of origin — Italian wine brand against unfair competition practiced by a Ukrainian wine producer. Other significant highlights included advising state-owned Ukreximbank on software licensing provisions of the Locomotives Purchase Agreement; rendered comprehensive IP support of SUN InBev in establishing a joint venture with Efes. The firm has an established specialized IP consulting for the IT sector. The key involvement in almost all projects was provided by firm’s counsel Oleg Klymchuk. In May 2018 Dmytro Kocherga joined the IP team as an associate from IPStyle Patent Law Company. Nazar Chernyavsky and Oleksandr Padalka acted as lead partners2.
SDM Partners has developed comprehensive expertise in different aspects of IP matters, being present mostly in non-contentious front. Clients come from a variety of industries, inter alia, light industry, automotive, investment, entertainment, while the firm is notably highly active in the healthcare sector. For example, SDM Partners provided legal support to an international provider of medical and diagnostic services in updating license agreements for the use of trademarks by various supplier companies in Belarus, Ukraine, Russia and the use of its software. Another recent highlight is rendering legal advice to a Belgian healthcare holding on obtaining a patent in Austria for the invention of medical technology for its subsequent use in the production of medications for stopping bleeding. Serhiy Dzis is a lead partner. Senior counsel Anna Kulish is present in many IP assignments.
Synergy IP Law Agency is known as a dynamic IP boutique targeting its practice into IP registration, transactions and litigation. As led by Viktoriia Ostapchuk the IP registration workflow was busy performing equally strongly in Ukraine and other countries. Significant clients encompass ROZETKA.UA (agency accompanied registration more than 60 trademarks), Lavina Mall (regarding the TM LAVINA). Among other clients, including new ones, are NVP AJAX, Skin Tech Pharma Group, Pulsar Expo s.r.o., Budkontsept LLC. Practice of transactions and litigation is guided by Anna Kravchuk. The main tasks faced by the team included copyright transfer of rights, licensing and franchising, copyright and trademark infringements, tax consulting and transactions. Major clients past year are BITRIX24, BKT Solutions (BAKOTECH), Konica Minolta Ukraine affiliated undertaking, Innover Ukraine, Mebli-Kyiv, Charity foundation Kharkiv Pregnancy Assistance Center. The firm is noted for its explicit experience in supporting tax issues of operations with software, drafting and support of subsequent contracts. The agency handles monitoring and termination of infringements of IP rights of Rozetka Limited on the Internet. Both partners are directly involved in practice and gained endorsements from peers.
ADER HABER maintained its contentious and non-contentious IP offering. The team advises the Ukrainian subdivision of a leading international beverages manufacturer on IP and compliance with legal requirements; provided legal support for the protection of IP rights for the company’s commercial name of a large Asian chemical producer. The firm advised on unfair competition and its intersection with IP. In 2018 the team represented a major Ukrainian winery producer, Nyva Winery (TM Tairovo), in four antimonopoly disputes over the identification of Antimonopoly Committee of Ukraine signs of unfair competition in the course of the marketing campaign and marking products of the client. In May 2018 Tatiana Kharebava, counsel, who led IP and IT practices, moved in-house to head the legal department of Sport Labs Group. Aleksandra Fedotova is currently a responsible partner.
Ante Law Firm advises clients primarily on issues related to brands and trademarks, copyrights: domestic and international registration, fair usage, transfer of ownership, taxation, protection of IP rights. The main clients are Technomedex group, Zdravo, Qatar Airways, Avialiga, Altris AI. Recent victories include Sanofi-Aventis Ukraine, Yaskravo. Notably, Ante advises ophthalmology IT startup Altris AI, and analyzed the possibility of usage of persons’ organs photos for scientific purposes; advised a client on fair usage of well-known comic book characters. Qatar Airways instructs the firm to handle protection of its IP rights in Ukraine. The team also rendered pro bono work on copyright protection related to a well-known painting book with views of Kyiv. Senior associate Kateryna Ishchenko leads the practice.
Highly IT-focused team Axon Partners provides IP offering relevant to IT industry. In particular, the firm acts on IP litigation, consulting on open source licenses, international IP structuring, sale of IP assets, as well as act as DMCA agents (abuse-team) for a number of hosting providers and domain names registrants. The firm renders legal support to Hosting Ukraine and responds to requests from rights holders regarding unlawful domain registration and hosting on servers of the provider of information that violates IP rights. Among clients in 2018 were also rabota.ua, Datas/Egar Technologies, Radar-TECh, 908.vc, Klumba, TripMydream and some new clients — GreenPandaGames, Data Intelligence Lab. The team members are Zhenya Gireva, Lidia Klymkiv, Dima Gadomsky, Den Beregovyi and Nazar Polyvka.
IP is the core practice of Berylstone attorneys at law. The young team is dedicated to registering trademarks, copyrights, utility models, inventions industrial designs in the territory of Ukraine as well as overseas, representation in IP disputes, IP rights transfer. This past year the firm raised its international element to its portfolio. The team advised on entering the American and European markets of one of the Eco Snack brands; defended the interests of the client in a legal dispute on invalidation of a trademark; participated in administrative procedures on IP issues. The team is known for providing full legal support to an ad campaign by Morshynska. The managing partner, Vladislav Belotsky, is the main figure, described as an ambitious and active IP practitioner.
The IP team of CMS which is represented by two offices — CMS Cameron McKenna Nabarro Olswang and CMS Reich-Rohrwig Hainz, had a vibrant year assisting international companies with IP related matters. The Ukrainian team is involved in many sectors where IP rights are crucial for operation of business, including life sciences, automotive, machinery, manufacturing, consumer products, financial services, and technology, media and communications. CMS Reich-Rohrwig Hainz, as led by partner Maria Orlyk, advised on the structuring of contractual arrangements and transfer of intellectual property rights, protection against parallel imports and patent infringing. The team of CMS Cameron McKenna Nabarro Olswang is led by Olexander Martinenko and Olga Belyakova. The office is preferred for complex IP advice as a part of M&A deals, and is substantially well-followed by technological players.
Danevych.Law is fully focused on its life sciences practice. The firm advises clients from pharmaceutical, medical devices and clinical trials industries including on IP issues. Borys Danevych is the team leader.
Dentons IP practice in Ukraine provides domestic and international companies with advice in relation to drafting and negotiation of license and co-existence agreements, trademark registrations, due diligence and the IP elements of transaction documents for licensing trademarks. Being a vivid M&A counsel, the Kyiv office advised a European software company on a range of Ukrainian IP law matters in connection with the sale of shares to a global provider of BSS software products solutions and services. The firm provides ongoing legal support to Bojer Innovativ Ingenior Radgivning (BIIR) on various IP and IT licensing issues in Ukraine; advises BlaBlaCar on intellectual property, e-commerce issues and regulatory requirements. The notable strength of its IP practice lies in the area of licensing contracts, especially in the life sciences sector as well as on data privacy issues. The practice head is Oleg Batyuk, managing partner.
In July 2018 EVRIS Law Firm established its IP practice with the hire of dedicated partner Alexander Molotai. The firm offers intellectual property protection in the patent office of Ukraine and abroad, as well as comprehensive management of the IP portfolio abroad. Presently the firm represents a Polish manufacturer of sports nutrition and nutritional supplements Olimp Laboratories in a case involving infringement of the rights to a client’s trademark in Russia. The client list comprises Kangertech, Glusco Energy Group S.A., Intellex, Agrosepmash, Global Spirits, Olimp Laboatories, Vetropack, Mitsubishi Motors Ukraine.
The IP practice team of INTEGRITES advised on M&A-related IP matters, trademark infringement, copyright, IP rights protection strategies. The team also acts on unfair competition cases requiring the expertise of both IP and competition practitioners. This past year the firm acted as a legal counsel to Panasonic in a case of unauthorized usage of the trademark. Another sound client in 2018 was the pharmaceutical company Farmak, which required protection of its IP rights from competitors. The practice is headed by Dariya Ganzienko.
KM Partners is known for advising clients on issues arising in the re-listing of IP and taxes. The main projects of 2018 were focused on the audit of IP objects and methods of IP rights protection, structuring relations concerning transfer and licensing IP, royalties and customs commodity cost. Alexander Shemiatkin and Elena Bukuyeva are the core figures.
Legal Alliance Company has a vast IP practice, mostly focused in pharmaceuticals and healthcare sectors, which is the firm’s mainstay. This past year the firm saw dynamics in its dedicated IP offering, which, among others, included registration of marks for goods and services, support IP rights transfer, patent searches, trademark, patent and domain disputes, structuring IP aspects of distribution agreements. In a recent highlight the team defended the interests of a client in a case to protect the rights to the TM Espumizan; protected the interests of clients in domain disputes; conducted a patent study of the active ingredient in more than 40 medicines. The strong client following is endorsed by such significant names as Berlin-Chemie, GSK, Lekhim, Yuria-Pharm, Alvogen, Movi-Health, MEDA (Mylan). Partner Illya Kostin heads the practice. Natalia Lavrenova and Vitalii Savchuk are the key team members.
Peterka & Partners’ work in 2018 was focused on protecting the rights of a trademark owner in relation to counterfeit goods in judicial and enforcement proceedings; extending security documents for clients’ trademarks. In particular, the company provides a full range of services to a regular client, ABRO Industries Inc, with regard to protection of intellectual property rights and the fight against distribution of counterfeit goods. Other clients include Nutreco (SHV Holding) and Regus. The key contact is Taras Utiralov, who was promoted to partner at the Ukrainian office.
Sergii Koziakov & Partners is mostly known as a litigation-focused law firm, centered in the main on contentious IP issues. Major clients in 2018 are ScanRoc LLC, Skandi Ltd, Kaminion Holding, GMSE OPEL. The main contact persons of the firm’s IP practice are partner Andriy Karnaukhov and counsel Olena Hladyuk.
Skliarenko, Sydorenko and Partners renders representation in IP disputes, transfer of IP rights, copyright protection. The team’s representative client pool in 2018 includes a global Croatian IT company, one of top-3 providers of cellular services in Ukraine, Ukrainian construction materials producer, software and computer services provider. Oleksandr Skliarenko and Yulia Stusenko are the key contacts.
In 2018 Suprema Lex was focused on the registration of various IP objects, protection of IP rights in court and out of court settlement. Clients encompass pharmaceutical names, such as Research and Production Association Medicinal Products and Farmlink. Victor Moroz oversees the practice.
The IP practice of Vasil Kisil & Partners keeps track of trademark prosecution assignments, managing brand portfolios, assessed the risks associated with the early termination of the license agreement for trademarks, etc. Recent dispute practice was centered on damage recovery in counterfeit cases. Notable experience includes representing clients in the WIPO Arbitration and Mediation Center in the UDRP procedure and supporting amicable settlement of disputes. The team’s industrial expertise spans pharmaceutical and gaming industries, spare parts, luxury goods and household appliances. Counsel Ilarion Tomarov is a highly recognized name in the IP community.
Wolf Theiss has a combined IP/IT team that is noted mostly for transactional IP work, covering subsequent queries in terms of each M&A transaction supported by the firm. Among other things, the team is regularly enlisted advising on the use and protection of trademarks on the Internet, particularly in domain names. The firm stands out for participation in multinational projects alongside other offices. This past year the firm advised A1 Telekom Austria on IP issues with regard to the contemplated acquisition of a leading Ukrainian telecommunications company. The team consists of Olga Ivlyeva and Olena Kravtsova.
The poll revealed endorsement for quality of service and IP expertise performed by Daniel Benatov, patent and trademark attorney of Benatov & Partners. Bureau of Maryna Kornienko headed by Maryna Kornienko draws on praise for her unique experience of copyright litigation.
1 In February 2019 Yaroslav Ognevyuk joined Sayenko Kharenko as a partner and head of IP practice.
2 In early 2019, the IP team was replenished with the arrival of the group of lawyers from Doubinsky & Osharova.
- Oleksandr Aleksyeyenko (Marchenko Partners)
- Vladislav Belotsky (Berylstone)
- Ruslan Drobyazko (Baker McKenzie)
- Irina Kirichenko (Ilyashev & Partners)
- Oleg Klymchuk (Sayenko Kharenko)
- Evgeniy Kompanets (Pakharenko & Partners)
- Anna Kravchuk (IP Law Agency Synergy)
- Taras Kyslyy (Asters)
- Vadim Mikhailyuk (Mikhailyuk Sorokolat & Partners)
- Alexander Molotai (EVRIS Law Firm)
- Kateryna Oliinyk (Arzinger)
- Mariya Ortynska (IPStyle)
- Viktoriia Ostapchuk (Synergy IP Law Agency)
- Natalia Pakhomovska (DLA Piper Ukraine)
- Julia Semeniy (Asters)
- Tatyana Shpakovich (Doubinsky & Osharova)
- Oleksiy Stolyarenko (Baker McKenzie)
- Ilarion Tomarov (Vasil Kisil & Partners)
- Daria Valyavska (Redcliffe Partners)