• Anton KOVAL | Doubinsky & Osharova

    The IP practice has been intensively developed in many directions. The entrance into legal force of the Association Agreement between Ukraine and the EU has a direct impact on the whole IP market, related, first and foremost, to the rise of commercialization of innovative products and establishing of some new rules. From here the growing commercialization of IP objects may be highlighted as a recent market trend. As such the role of the legal counsel should be led not only towards effective protection of IP rights, but also towards positive business effects. For example, if the recognition of a trademark as well-known allows the trademark owner to reach certain business goals then, no doubt, it should be done! Among other trends is deep specialization of IP lawyers as litigators, prosecutors, patents, trademarks, copyright, appraisers etc., which certainly corresponds to international practice and aims to provide only high quality IP services. Moreover, the monopoly of advocates in courts already excludes all other IP lawyers from this work. We are also welcoming step-by-step automatizations of the work of IP-practitioners, including many databases and new tools. The recent needs of clients are quite common issues. For example, fighting counterfeiting, protection against unfair competition, stopping IP rights infringements, cancellation and nullity actions, obtaining a well-known status for trademarks, protection of IP rights at customs, domain names disputes, due diligence of IP rights, etc. The prospects of practice development may be recognized as follows:

    1) Passing a decision to establish a national intellectual property state body should improve the entire state system of IP rights protection;

    2) Judicial reform, including the work of the Supreme Court and the High Intellectual Property Court, together with the important recent changes made in all procedural codes and advocates’ monopoly in courts, must significantly improve judicial protection of IP rights;

    3) The adoption of pending drafts laws, including amendments to some laws with respect to: Securing Publicity and Exclusion of Abuse of Rights in the Sphere of Registration and Turnover of Trademarks as Well as Protection and Creating Means for the Exercising of Rights by Trademark Owners, No. 5419, Adaptation of National Legislation in the Sphere of Protection of Rights for Inventions and Utility Models According to International Standards, No. 1765, Improvement of Protection of Intellectual (Industrial) Property, No. 5699 must resolve many gaps and IP issues.

    The main unresolved IP issues are the reimbursement of damages for IP infringements and the costs incurred for the services of advocates. This will hopefully be resolved by the High Intellectual Property Court.

    Therefore, it is with great optimism that we are consistently moving towards improvements of the entire IP rights protection system, which are very necessary for the market and must certainly happen.

The widely recognized in IP law firm of Pakharenko & Partners is an eminent, top player on the Ukrainian market. The firm is well-known for handling the full spectrum of IP matters, especially anti-counterfeiting and anti-piracy measures, complicated IP infringement matters, trademark and patent cases. The team successfully defended the interests of L’Oreal, Intel Corporation, TOTAL SA by stopping the violation of the rights of customers through the illegal use of their trademarks on the Internet (domain names, name of online store, websites). The team continuously acts in the interests of regular clients. For example, the Pernod Ricard S.A. group, HUGO BOSS, SACCO having achieved the termination of disputed trademark registrations, suppression of misuse and distribution of products with violation of the rights to clients’ trademarks, involving judicial proceedings. The firm is especially known for proficient expertise in anti-counterfeiting programs. The firm has accompanied a number of criminal cases related to the violation of rights to trademarks owned by Chanel SARL, Gucci Gucci SPA, Burberry Limited, Hugo Boss Trade Mark Management GmbH & Co. KG. KG, Tommy Hilfiger Licensing B.V., Giorgio Armani S.P.A., NIKE Innovate C.V., Syngenta, Procter & Gamble Company, Reckitt Benckiser N.V., Moncler S.P.A., WD-40 Manufacturing Company, Lacoste SA, Gianni Versace SpA, Apple Inc. and about 30 other world-famous brands, suppressing the sale, manufacture and/or distribution of counterfeit goods with the misuse of trademarks owned by these companies. The excellent Antonina Pakharenko-Anderson, managing partner, is noted as a key figure in the market. Alexander Pakharenko is traditionally acknowledged for his anti-counterfeiting and anti-piracy proceedings. Elena Shamrina, Evgeniy Kompanets, Volodymyr Sysiuk, Olga Kotsyubalska, Anastasia Mindrul are other core team members.

Patent and law agency Doubinsky & Osharova is one of the most respected Ukrainian IP law firms to enjoy long-term IP market recognition. As a full-service IP dedicated force, the agency is especially proficient in oppositions, litigations and anti-counterfeiting. The multi-faceted practice utilizes protection of IP at customs; management of administrative cases; conducting criminal proceedings; litigation and mediation; consultation in the field of IP; claim settlements; management of out-of-court cases in recognition of well-known trademarks; IP audits; fight against counterfeiting and piracy; analysis of the risks associated with the use of plant varieties and germplasm; forced re-delegation of domain names. The team successfully defended the rights of Oschadbank in a case against Sberbank (Ukraine) and Sberbank (Russia) regarding the invalidation of the defendant’s trademarks, re-delegation of domain name sberbank.ua and the ban on use of the SBERBANK trademark. It also defended the rights of the world-famous owner of the Jack Daniel’s brand in a case regarding the infringement of the rights to the Jack Daniel’s trademark and patent invalidation for the Black Jack industrial design. The sizeable team is supervised by outstanding luminary Michael Doubinsky, managing partner, and includes the deeply involved in practice partners Yaroslav Ognevyuk, Tatyana Shpakovich, Anton Koval, Victoria Sopilnyak.

AEQUO offers a full service non-contentious IP practice, handling trademark and patent prosecution, copyrights, day-to-day advisory work and transactional support, and prominent litigation capabilities. Its standalone IP disputes team acts regularly on precedent-setting patents, trademark and unfair competition disputes. In particular, the firm represented Dr. Reddy’s Laboratories Limited in a first of a kind patent infringement case involving a biosimilar medicinal product registered in Ukraine and in a patent invalidation litigation matter. The firm represented Pioneer Hi-Bred International, Inc. before law-enforcement bodies in a number of criminal matters with regard to trademark infringements. The team extends its industrial focus, and reaffirms its well-grounded position in agrichemicals, technology, telecommunications and media, pharmaceuticals and FMCG sectors. Partner Oleksandr Mamunya is regarded as one of the strongest IP litigators in Ukraine. Highly vivid in complex projects, senior associate Andrey Nikolayenko gained appreciated visibility in the past 12 months.

The distinguished international law firm of Baker McKenzie has an extensive IP offering, and recognized the strength of its dedicated practice group in Kyiv. The core focus is on comprehensive services in connection with structuring transactions related to IP and IT, securing the intellectual property rights of clients in Ukraine and protecting them against unfair business practices, as well as managing IP portfolios. The team continues to acts for NISSAN in handling its trademark portfolio in Ukraine. The team increased its presence in anti-counterfeiting campaigns being handled for prestigious brands. Among the sound work highlights is advising Columbia Sportswear Company in trademark infringement matters, including criminal proceedings against counterfeiters in Ukraine. The IP practice is often involved in IP disputes, often involving multi-jurisdictional matters, and possesses substantial commercial IP expertise. The universally respected Ruslan Drobyazko,partner and practice head, has a long-standing presence in the market. Seasoned Yuliya Kolchenko, senior associate, is a renowned and experienced key member of the team.

Full-service law firm Asters is equally well-grounded to handle stand-alone IP work and projects arising from other practices, such as M&A, tax structuring, corporate and finance transactions, etc. The firm is often involved in complex IP projects, and is particularly noted for its expertise in trademarks, licensing and assignment, litigation and unfair competition. Recent work highlights include giving advice and assistance to Biosphere Corporation on registration of patents in Ukraine and abroad, with regard to various aspects of its products such as new product functionalities, substances for cosmetic use, etc. Another sound representation was rendered to Ferrero S.p.A. in connection with fighting imitations of well-known Kinder SURPRISE products and unauthorized use of its trademarks as well as with re-trial negotiations and dispute resolution in connection with unauthorized use of the famous brand Raffaello by local confectionary producers. Julia Semeniy, lead partner, is constantly named among very well known IP lawyers in Ukraine.

IP is among the most fast-moving practices at Arzinger, offering expertise in non-contentious and contentious matters. This full-service firm receives IP-backed instruction from its broad client portfolio, inter alia, pharmaceutical, food and beverages, retail, automotive, IT, agriculture, banking and finance and energy companies. The recent IP practice profile is rich in trademark prosecution and opposition, portfolio management, unfair trademark use matter, licensing, assignment of IP rights. In 2017 the team provided extensive support for Centrica plc on the Ukrainian part of the transaction on acquisition of assets in Rokitt Inc. and their proprietary Rokitt Astra Technology, which enables companies to discover meaningful information from their data and data relationships through a unique set of machine learning algorithms. Kateryna Oliinyk, constantly referred as an experienced IP practitioner, was promoted to partner. Other partners Timur Bondaryev and Lana Sinichkina are also involved in project work.

The Kyiv office of DLA Piper has diverse IP practice encompassing patents, trademarks (including advertising and branding issues), copyright, trade secrets and designs. The team is mostly renowned for its contentious IP mandates and established following from blue chip companies, with especially a focus on TMT, life sciences, hospitality and leisure, luxury brands. Anotherstrength is complex projects such as IP structuring and IP audit. The team rendered IP advice to Aristocrat Leisure, one of the largest manufacturers of gaming solutions in the world, within the acquisition of Plarium Global. Another significant area of recent activity is the transfer of IP portfolio. Among selected clients are Bacardi Limited, Nike, Inc., Nu Mark, Norwegian Seafood Council, Conair Corporation, Naspers, Porsche AG, ZeniMax Media Inc., GAP. Partner Natalia Pakhomovska heads IP and technology in Ukraine. Other key team members are Natalia Kirichenko and Olena Vardamatska (joined from Wolf Theiss).

Being especially renowned for contentious IP work, Ilyashev & Partners broadened its commercial IP expertise. Among significant projects are consulting Universal Pictures International under a contract on the transfer of copyrights to dubbed versions of films between the studio and authors; advising the American Seed Trade Association on the protection of intellectual property rights of seed producers in Ukraine. The team is known for its strong following of pharmaceutical clients (e.g., Grindex, Megainpharm GmbH,Omnipharm) which  enlisted it for court protection of numerous trademarks. The team is supervised by Mikhail Ilyashev, managing partner, and include Irina Kirichenko, Maria Koval and Marina Rishtun.

IPStyle Patent Law Company is a full-service IP boutique with a well-established reputation in the local market and international IP community. Over the last couple of years the firm has been constantly extending its client profile with sound national and multinational names. The best known recent highlight was acting for Confectionery giant ROSHEN on the recognition of the TM Roshen and TM Kyivskii Tort as being well known in Ukraine. Furthermore, the team provided advisory to Louis Vuitton Malletieron features of IP protection in Ukraine and prepared all the necessary documentation and performed the procedure for TM registration. The firm rapidly develops its IP disputes offering, led by Dmytro Kocherga, dealing with trademark, infringement copyrights, patent for utility models. The client base includes, among others, Danone Ukraine, Auchan Ukraine, MITEK, MEGATEX, LOLL&POP, IMPORT FOODS, PROLEGO, WINNER, Elit Dekor, V.A.N. Foods, Renuka International Limited. Managing partner Mariya Ortynska is regarded as an IP-expert and the firm’s main rainmaker.

Konnov & Sozanovsky strengthened its intellectual property practice through its merger with ARTEX UKRAINE, an IP services firm. Alexander Molotai, its previous managing partner, became the head of the IP practice team. The firm advised its long-standing client, Film.Ua Group, on all IP matters regarding numerous trademarks of the group, including registration of trademarks in the European Union, prolongation of trademark certificates, transfer of IP rights. Other recent highlights include advising Kangertech on acquisition of a trademark from a patent troll; supported Frontech Sales LLP on structuring and legally supported the licensing of the online jewellery trade in India.

Marchenko Danevych is historically focused on IP transactions and contract work as well as IP-related disputes. The firm has established undisputable strength in the life sciences market, and often acts as IP advisor for major pharmaceutical clients. Moreover, the team is engaged in complex registration prosecution and strategy. The firm advised the EBRD on IP issues arising with respect to data exclusivity and patent protection of medicinal products in Ukraine; advised Next Retail (NEXT) on IP protection issues under multiple marketing and advertising agreements, which authorized Ukrainian agents (MasterCard Ukraine, Yves Roche and others) to use the client’s trademarks and databases in promotion of its products; acted to Koss Corporation on the IP rights protection and enforcing distribution agreements with leading brick and mortar retailers, as well as online retailers in Ukraine. Borys Danevych is renowned for tremendous experience in IP matters pertaining to life science. Oleksandr Aleksyeyenko has a comprehensive competition focus, and is also present across the bulk of IP assignments.

In 2017 the long-standing IP law firm of Mikhailyuk, Sorokolat & Partners commands asizeable team providing a full range of services related to obtaining and maintaining the legal protection for patents, trademarks, designs, supporting transactions and enforcement of IP rights, initiating and participating in cancellation actions against patents and trademark certificates. Throughout the past year the firm handled approximately 30 IP disputes in Ukraine, expanding the geography of business. It also expanded by opening two branch offices in Moldova and Belarus. Partners Anna Mikhailyuk and Vadim Mikhailyuk are well-known IP practitioners. Senior partner Valentin Mikhailyuk, the firm’s founder, is the first patent and trademark attorney registered in Ukraine.

PwC Legal on IP rights protection, covering transactions and intragroup agreements. For example, the team supported Jysk Group in challenging unfair registration and fines applied. Another highlight is its advice to Google Inc. regarding compliance requirements when expanding the territory of coverage of a new mobile application (YouTube Gaming) from the perspective of Ukrainian privacy regulations, copyright, ethical standards and restrictions, e-commerce regulations and broadcast regulation. The team has a strong following of TMT clientele, and rendered legal support to Opera Software with establishing contractual framework of IT services provision. Olga Romanenko, who joined in 2017, became the head of IP, IT and data protection practice. Zhanna Brazhnyk, who headed the team before that, is an important team member.

Sayenko Kharenko’s IP practice features a strong team in Ukraine. Clientele includes both start-ups and some of the world’s leading brand names across IT and e-commerce, food and beverage, automotive, pharmaceuticals, and retail sectors. In 2017 the team successfully represented the interests of Porsche Ukraine in protection of the VW, AUDI, SEAT brands in Ukraine, and acted as legal counsel to Electronic Arts, an American video game company, in relation to prize promotion issues. Partner Oleksandr Padalka, and counsel Oleg Klymchuk are primary IP contacts at the firm. Nazar Chernyavsky supervises the TMT group, traditionally a strong focus of the firm.

SDM Partners has developed comprehensive expertise in patents, trademarks, copyright, designs, domain names, trade secrets and related unfair competition issues. During 2017 the team provided complex legal services to Paramon Pictures Corporation in structuring intellectual property objects when entering a new market; advised Planeta Kino IMAX on the structure for protection of IP rights for the line of new cinemas as well as full implementation of proposals; represented Moon Records in copyright disputes relating to numerous musical compositions. Serhiy Dzis is a lead partner.

Synergy IP Law Agency splits its IP offering into two practices: intellectual property registration and transactions, and litigation practice. The agency is very vivid in the IP community, and is seen to enhance its market presence. Among significant cases is a trademark prosecution for ROZETKA.UA. The team represented KAVA + for the registration of the TM BELLINI (coffee production) in Ukraine and Italy. It is worth noting that the team represented its client before the IP Office of Russian Federation (ROSPATENT) regarding registration of the TM VIVO; represented PANMED LLC interests before the USA IP Office regarding the registration of the TM Panmed and protection of the client’s rights to the Panmed TM in the Internet in a pre-trial order. Managing partner Viktoriia Ostapchuk is head of the intellectual property registration practice. Partner Anna Kravchuk is head of the transactions and litigation practice.

Vasis Kisil & Partners’ IP team is strong in trademark litigation and copyright matters. In 2017 the team represented Facebook as a co-defendant in a defamation dispute; represented a global consumer electronics manufacturer and its subsidiary in Ukraine on different IP matters, including combating counterfeit and grey import, current consulting on copyright and licensing matters. The copyright highlight included representation of six well-known Japanese copyright owners on combating illegal use of copyright objects on a pirate website. Renowned expert Ilarion Tomarov, counsel, joined the firm as head of the IP practice group.

INTEGRITES has a growing presence in non-contentious and contentious IP matters. In particular, the team tailors public offer agreements, data protection policies, advises on compliance with consumer protection regulations in online sales of goods and provision of services, and was entrusted with remediation of such violations as copyright infringement, unauthorized use of domain names and trademarks online. Representation of clients in judicial proceedings, while various types of IPR infringements or unfair competition practices are another side of the practice. Dariya Ganzienko is head of IP.

Advance Partners is a newly-arrived full-service IP boutique firm established by Oleg Zhukhevych and Elena Biloshuk, practitioners with over 12 years of professional experience and a proven track of records in intellectual property (previously worked with Gorodissky & Partners). Most recently the team acted on trademark litigation and patent infringement cases.

2017 was a busy one for the IP practice at Gramatskiy & Partners encompassing a range of instruction for protecting copyright and industrial design, franchising, managing a portfolio of intellectual property rights. Given the firm’s robust IT practice its team regularly handles transfer IP rights and complex licensing matters. The client list includes KSTT Services, Global Universal Trading LTD, AgroAlliance Group, PTS UA Services, Skywindgroup, Skywind Tech UA, Playtech Software Limited, Clickmein. Borys Karas is the practice head. The largest and most complex projects are headed by Ernest Gramatskiy.

Legal Alliance Company has a primary industry focus in pharmaceutical and healthcare, covering a wider range of IP queries. The recent caseload includes representation of Berlin-Chemie in a dispute on the invalidation of the orders of the Ministry of Health of Ukraine on the registration of a medicinal product of a competitor whose name is similar to Espumizan TM; development of legal position and recommendations within the framework of legal support of the dispute of the pharmaceutical company about patent trolling; representing the interests of an international cosmetics manufacturer in a dispute regarding a domain name. Nataliia Lavrenova and Vitalii Savchuk are the key IP practitioners. Illya Kostin is the lead partner.

During the past year the IP/IT team at Wolf Theiss sustained its practice diversity developed throughout the previous years. In particular,the firm assisted the leading Ukrainian venture capital fund AVentures Capital in round A investment into a Ukrainian e-commerce start-up, where use of the IP portfolio was a major part of the subject matter of this deal. Other recent highlights included advising Monster Beverage Corporation on a promotion program of a corporate structure, including advising on IP rights issues related to use of the company’s trademark by promotion participants. Taras Dumych is lead partner.

Recognized for extensive presence in the aviation sector, Ante Law Firm advises on issues related to brands and trademarks, copyrights: domestic and international registration, fair usage, transfer of ownership, taxation, IP rights protection. Amongst notable projects in 2017 was analysis of EU legislation of PDP and IP protection in the sphere of aviation, focusing on advanced passenger data. The firm supported Qatar Airways with its entry onto the Ukrainian market, including IP right protection issues. The firm was enlisted by Zdravo company to handle an anti-counterfeiting case. Kateryna Ishchenko, senior associate, is an IP practitioner.

IP is one of the core practice areas of the new market player Berylstone Attorneys-At-Law. The dynamic team showcased several significant projects in of its recent profile, among others, advising Eco Snack on introduction its products under the Bob Snail trademark to the EU market; maintaining the common project of Liliya Pustovit, the renowned Ukrainian designer, and Morshynska brand. The firm also advises Playboy Ukraine on a copyright lawsuit. Vladislav Belotsky, managing partner, is practice head.

Dentons’ IP practice in Ukraine commands experience in IP litigation involving copyrights, patents, trademarks, and unfair competition. The team is particularly strong in the area of licensing contracts, especially in the life sciences sector, as well as on data privacy issues. The team predominantly advises foreign Fortune 500 companies on their regional trademark issues. Advising BIIR on various IP and IT licensing issues in Ukraine is a work highlight of 2017. Oleg Batyuk is the lead partner.

CMS Cameron McKenna Nabarro Olswang’s IP team in Kyiv 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. The team is highly regarded in IP litigation and transactional IP matters. Partners Olexander Martinenko and Olga Belyakova are noted as key figures.

GOLAW offers intellectual property rights protection service in a number of sectors, such as retail, technology, media. In 2017 the firm advised BreakThrough Media on copyright law, protection of video and photo materials; represented KISS Chocolaterie on a franchising agreement with the aim of expanding the brand to Kazakhstan. Senior partner Sergiy Oberkovych oversees the practice.

IT boutique Axon Partners renders 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. Selected clients include GoodWine, rabota.ua, Datas/Egar, Radar-TECh, 908.vc, Klumba, Hosting Ukraine. Dima Gadomsky, CEO, is the most recognized name in the firm.

ADER HABER (previously the team was a part of Spenser & Kauffmann) facilitates its IP offering, with a significant following of IT and retail clientele. The firm is proficient in advising on matters on the intersection of unfair competition and IP. Structuring IP relations, licensing of technologies and IP aspects of marketing campaigns fall within the recent remit. Selected clients encompass large Ukrainian winery producer NYVA NVP, N Bolshakova design studio, GillSoft Technology GmbH, Happy Star Games, IDS Borjomi Georgia. Tatiana Kharebava, counsel, led IP and IT, antitrust and competition.

In 2017 Lavrynovych & Partners made considerable efforts to develop its IP practice. Among recent cases is acting for SkyBar LLC in a dispute regarding the legitimacy of the public use of musical products; assisting MoneyGram within trademark registration. Executive partner Stanislav Skrypnyck oversees the practice.

Eterna Law renders services on trademark registration and licensing agreements, data protection issues, copyright infringement. The clients come from luxury, telecom, retail, FMCG, IT, pharm sectors. The IP practice is led by Oleh Malskyy, partner. In June 2017 Alina Podolyak joined the team.

Dynasty Law Firm represented the interests of a leading developer and manufacturer of ground-based radar equipment of the defense sector in Ukraine, in a number of disputes on the claims of an owner of patents on copyright protection and prohibition to carry out actions, recognition of the right to use inventions beforehand, and invalidation of a commissioned contract. Denys Kytsenko and Antonina Selivanova acted as responsible partners.

KM Partners, which is mostly known for its prominent tax practice, provides assistance within a wide range of issues related to intellectual property, including structuring of complex cross-border transactions related to the transfer of intellectual property rights with subsequent coverage of tax-related matters. Alexander Shemiatkin is a partner.

Launched in 2017, Brightman Law Firm, specialized in cryptocurrency investments and Initial Coin Offerings (ICO), and advises on compliance with Internet law regulations, IP protection, trademark registration, draft of software and hardware licensing agreements. The client list takes in Cryptogroup, ITX Security Systems, Axxon Soft, CoinyPay, Enjoy Business. Dmytro Honcharenko and Krystyna Nyemchynova are the founding partners.

Peterka & Partners acted for AbroIndustries, Inc., a well-known American company producing top-quality automotive, industrial and consumer products, on protection of IP rights against the distribution of counterfeit goods. Tatiana Timchenko and Taras Utiralov are core team members.

Domestic e-Pravo Law Firm provided services related to protection of intellectual property and licensing agreements. Major clients of the team, as led by Vitalii Vlasiuk, are Astrafit, Lucidica, MyDutyFree, Acronym Systems, VMC-Water Queen Ukraine.

The recent caseload of Sumrema Lex included IP rights registration as well asprotection of IP rights in courts and pre-judicial proceedings. This past year the firm was focused on pharmaceutical clients, inter alia, Scientific Production Association Medical Products and Farmlink. Victor Moroz is the main contact.

Lviv-based Bachynskyy, Kolomiets & Partners, as led by Taras Bachynskyy, constantly advises IT-companies, including distinctive questions about the protection of intellectual property rights. Kodex Law Firm handled trademark registration, IP due diligence and securing the intellectual property rights for Datalab Tehnologije, Go To The Future Ltd, AGA Medialab.