Areas of Practice

Corporate & Labor Corporate experience Labor Law Mergers & Acquisitions Antitrust & Regulatory Compliance and Anticorruption Dispute Resolution and Litigation Energy PSA Regime in Ukraine Upstream Oil & Gas Downstream / Project Finance Renewable Energy Intellectual Property Unfair Competition Insurance Finance / Banking / Capital Markets Legislative Drafting Land & Construction Agriculture Information Technology International Trade and Customs Telecoms Healthcare

Intellectual Property

The RULG - Ukrainian Legal Group is extremely active in the area of intellectual property rights (IPR). In particular, our firm has been involved in drafting crucial new legislation in this area for Ukraine. Most notably, our attorneys have participated in the Working Groups that drafted the new version of the Ukrainian Law "On Copyright and Neighboring Rights", new IPR-related articles of the Criminal Code, and Book IV of the new Civil Code, which is devoted entirely to IPR.

In addition to drafting legislation, we conduct research projects such as preparing comprehensive reports for the EU TACIS Program on the issues of retroactivity and the national regimes in copyright and neighboring rights in Russia and Ukraine.

Both in practice and in the legislative drafting sphere, RULG is one of the leading Ukrainian firms in anti-counterfeiting and anti-parallel import matters, working with our clients and the international business and legal community on combating counterfeiting and parallel imports in various industries.

One of the leading European Law Directories, Chambers and Partners, has recognized our IP practice as being particularly strong. Please see attached excerpt (in PDF format) from the Chambers and Partners' overview of the IP area as it relates to the Ukrainian legal market.

Our attorneys also speak at international conferences on IP rights. These materials are available at relevant pages of our Web site, and detailed information on the series of INTA mediation seminars we organized in Kiev, Moscow and Baku is provided at the Commercial Dispute Resolution page of this Web site.

Most importantly, however, our firm regularly represents international clients on IPR-related matters, including in relation to the registration, protection, transfer, and licensing of various types of industrial property (mainly trademarks). Our trademarks protection practice includes providing legal, operational, and organizational assistance to clients in their individual and industry wide anti-counterfeiting and anti-piracy activities.

To cite just a few examples, our experience includes:

  • In April 2007, we won a major victory on behalf of our client, Mars Inc., in a ground-breaking unfair competition case. For the first time in Ukraine?s legal history, a violation based solely on color was recognized by the Antimonopoly Committee of Ukraine (AMC) as an act of unfair competition. This precedent opens the way for legitimate rightholders to successfully protect their IP rights in Ukraine against color-based unfair competition. The AMC treated this case as one of its most important priorities, as was reflected at the hearing, which took place in the main auditorium of the AMC and was attended by its most senior officials, including the Chairman of the AMC, Mr. Oleksiy Kostusiev. In his closing address, Mr. Kostusiev characterized the case as a very important first precedent for protecting rightholders against such unfair acts of infringers, which had not been punished in Ukraine previously. He commented on the difficulty of considering the case and also mentioned other infringements of well-known trademarks of Mars Inc., which were terminated with the help of the AMC. This case was led by RULG Partner, Ms. Tamara Lukanina and was widely covered in the business media. The article on the case, published in the AMC official journal, is available for download in the original Ukrainian version and in English translation.
  • We have represented a general corporate client, a major US-based multinational confectionary company, in all trademark protection issues in Ukraine.
  • We have defended clients' trademarks and other industrial property rights, for example, through obtaining "well-known" status, through drafting cease-and-desist letters, and through negotiation, mediation, arbitration and litigation. In particular, we obtained "well-known" status in Ukraine for one of the world's most popular confectionary trademarks.
  • We successfully completed major litigation against music piracy by winning several co-related cases.
  • On a regular basis we register Ukrainian Internet domain names for our clients.
  • We have represented one of the world's largest consumer goods companies in an unfair-competition (false-advertising) dispute with a multinational competitor in Ukraine.
  • We have acted as a local counsel in Ukraine for an international intellectual property consulting firm on behalf of several of their clients. In this manner, we assisted a major UK oil & gas company, two major multinational consumer goods companies, a steel company, and other companies, with various trademark and unfair competition disputes dealing with Ukraine.
  • We have successfully completed a comprehensive project on the licensing and partial transfer-of-title of one of the best-known and prestigious Ukrainian trademarks to our client, a multinational beverage company.
  • Handled all of the industrial property work involved in setting up a major Japanese tire producer's retail operations in Russia, including choosing a trade name, registering trademarks in Russian and English and negotiating use of these trademarks by franchisees of the company.

We realized early on that IPR work would be an area of major growth in Ukraine. From our firm's first days we began developing relationships with several certified patent and trademark agents to leverage our firm's capabilities by providing expert advice and assistance in conducting trademark searches, filings, registrations, and similar tasks. Over several years of working with Kiev's patent and trademark agents, we chose the leading patent and trademark firm Mikhashina & Partners, as our firm's primary patent and trademark agent and Of-Counsel in trademark registration matters. The principals of this firm, Ms. Mikhashina and Ms. Devizorova, are certified Patent and Trademark Attorneys of Ukraine with many years of extensive experience. We have found their experience in the intricate rules of Ukrainian patent and trademark registration to be invaluable to our clients.

We are pleased to make the following materials available:

  • A list of normative acts adopted pursuant to the Law of Ukraine "On the Specifics of the Government Regulation of the Activity of Subjects of Economic Activity Associated with the Manufacture, Export, and Import of Laser-Readable Discs". (download)
  • A list of some of the more important IPR-related legislation in Ukraine. (download)
  • English translation of the Law of Ukraine "On the Specifics of the Government Regulation of the Activity of Subjects of Economic Activity Associated with the Manufacture, Export, and Import of Laser-Readable Discs" (download)
  • English translation of the Law of Ukraine "On Copyright and Neighboring Rights". (download)
  • The TACIS Retroactivity Reports for Russia (in English and Russian) and Ukraine (in English and Russian). (All four reports are also available for simultaneous download.)
  • Information on the Presidential veto of the Civil Code (containing Book IV on IPR). (download)
  • A presentation by Dr. Irina Paliashvili "Trademarks Protection in Ukraine", given at the Euroforum Conference "Russia/CIS: Optimal Protection, Dispute Resolution, Enforcement". The text of Dr. Paliashvili's presentation is available on this page in English and Russian.
  • Agenda of the Euroforum Conference on Intellectual Property Rights Protection in Russia and the CIS, held in Moscow, Russia on January 29-30, 2002. (download).
  • Dr. Paliashvili's presentation, "Key New Provisions in Ukraine's IPR Legislation", given at the Euroforum Conference on Intellectual Property Rights Protection in Russia and the CIS, Moscow, Russia, January 30, 2002. (download)
  • Ms. Lukanina's presentation, "Overview of the New Copyright and Neighboring Rights Protection Regime in Ukraine", given at the Euroforum Conference on Intellectual Property Rights Protection in Russia and the CIS, Moscow, Russia, January 30, 2002. (download)
  • An article by Dr. Irina Paliashvili, "Overview of the New Copyright and Neighboring Rights Protection Regime in Ukraine". Read the article in English or Ukrainian, or download it in MS Word format in English or Ukrainian.
© 2009 RULG - Ukrainian Legal Group, P.A.