Defending from Trademark Infringement
Konnov & Sozanovsky
- +380 (0) 44 490 5400
- +380 (0) 44 490 5490
Konnov & Sozanovsky is a full-service law firm oriented towards providing comprehensive legal advice to Ukrainian and international clients. Since 1992 it has proved to be justly recognized as one of the leading law firms in Ukraine.
Konnov & Sozanovsky advises clients in the most popular business areas of law: agrarian law, banking and finance law, copyright and media law, commercial law and contracts, competition law, corporate law, intellectual property law, labor law, real estate, construction and land law, tax law, and has represented clients in large-scale mergers and acquisitions and litigation cases.
The firm practices an individual approach in each case, taking into consideration the peculiarities of a client’s business and its preferences. The firm’s rich experience covers legal advice of matters in such industries as advertising and design, agriculture, banking, energy and power, food industry, insurance, investment and the equity market, light industry, media and telecommunications, pharmaceuticals, publishing, real estate and construction, software, spirits industry, tobacco industry, trade and distribution, veterinary production.
Konnov & Sozanovsky is highly involved in the activities of the business community and is a full member of the American Chamber of Commerce in Ukraine (ACC), Ukrainian Bar Association (UBA), European Business Association (EBA, Ukraine), Association of European Businesses (AEB, Russia), International Trademark Association (INTA).
Konnov & Sozanovsky is an exclusive member of First Law International (FLI) — the specialized international legal network, which has been operating on the legal market since 2003 and has already succeeded in integrating the most competitive law firms from more than 40 countries from all over the world. This allows FLI members to provide high quality legal assistance to clients in all major legal systems, thereby saving clients considerable time and resources, while maintaining service quality and confidentiality of information transferred. Therefore, the client gets not only service but also a reliable business partner and legal advisor across three continents.
The firm is ranked among the top Ukrainian law firms in accordance with annual surveys by Yuridicheskaya Practika Weekly in 1997-2013. It was also named Law Firm of the Year in the field of IP according to the Ukrainian Legal Awards 2007-2009 and to this day is considered one of the best companies in the IP field.
The firm is recognized by major international legal surveys such as PLC Which Lawyer?, IFLR 1000, Legal 500 and Chambers Global. Specifically, the Chambers Global and Chambers Europe publications recommend Konnov & Sozanovsky in the IP field. According to the Legal 500 publication Konnov & Sozanovsky is recommended among 1st tier law firms in the sphere of IP as well as among 2nd tier law firms in the tax sphere. IFLR 1000 acknowledges the firm in the sphere of M&A. Annual publications of PLC Which Lawyer? recommend the firm in IP, competition, corporate/M&A and private equity/venture capital.
For trademark owners it is crucial to know how trademark rights can be defended. Existing Ukrainian legislation provides for a row of opportunities to take if they face infringement of their trademarks. However, a specific type of action shall be chosen depending on the circumstances of a particular case. Therefore, below we will give an overview of some actions available to defend one’s trademark rights.
In case of a civil action the trademark owner may bring a lawsuit to the court according to the Civil Procedure Code of Ukraine (where the owner is an individual) or commercial court according to the Commercial Procedure Code of Ukraine (where the owner is a legal entity). The infringement action may also be filed by an authorized licensee.
Court examination is one of the crucial issues of the trademark litigation in Ukraine. It may be appointed to clarify some specific issues which often arise in trademark disputes, for instance: whether the trademarks are confusingly similar, whether the goods and services for which trademarks are used and/or registered are similar, whether the trademark is distinctive or is deceptive, etc. Though the last trend in the court practice is that some questions which may arise in trademark disputes can be resolved by judges from the consumer standpoint, the court examination is appointed in many trademark cases. The court can appoint examination at its own initiative or on the request of a party to the proceeding.
Preventive Measures/Provisional Remedy within the Civil Action
The applicable procedural legislation provides the owner of the intellectual property rights with several options to prevent distribution of the infringing products before the case is heard on its merits.
First of all, it is possible to apply for preventive measures as provided by Article 43-2 of the Commercial Procedure Code of Ukraine, before filing the lawsuit. The preventive measures allowed by the effective legislation include inter alia obtaining evidence and seizure of goods owned by the defendant.
The application for the preventive measures shall be considered by the commercial court (in the region where the respective procedural actions shall be performed) within 2 days after it is filed.
The applicant (trademark owner) can also file motivated request to consider the application without notifying the person with respect to which the preventing measures are requested (defendant). Such a request is usually based on the arguments that should the defendant be notified, the evidence or goods in question may be made unavailable. At the same time, please note that if the court ruling on the preventive measures is issued without notifying the defendant then the latter may, within 10 days after a copy of the ruling is received, file a request to cancel the aforesaid ruling. Such a request shall be considered by the same court which applied the preventive measures within 3 days after the request is filed.
If the application for preventive measures is satisfied than the applicant shall within 5 days bring the infringement action (file the respective lawsuit) to the court, otherwise the preventive measures will be canceled.
Another option is filing application for provisional remedy which may include inter alia seizure of goods owned by the defendant, prohibiting the defendant from taking certain actions, prohibiting other persons from taking actions with respect to the subject of the dispute. Provisional remedy may be used during the proceeding, i.e. after the lawsuit is filed. Though usually the application for the provisional measures is considered in the court hearing, it is also possible that such measures can be applied by the court in the course of preparing for a hearing in accordance with Article 65 of the Commercial Procedure Code of Ukraine.
Similar provisional remedies are stipulated by Article 151 of the Civil Procedure Code of Ukraine.
The court ruling on the preventive measures or provisional remedy can be appealed against at the appeal court. However, the appeal process shall not stop implementation of preventive measures.
Customs (border) Measures
A trademark owner is entitled to proceed with registration of trademark with the Customs Register. For this purpose the trademark owner shall file the respective application to the Ministry of Revenues and Duties of Ukraine. Such an application shall be considered within 30 business days after the application is filed. Then, if the documents are drafted correctly, the trademark shall be registered with the Customs Register and the trademark owner may be able to prevent the import of products where the perspective or similar mark is used to Ukraine.
Please also note that the applicable legislation allows the customs authorities to apply customs measures even with respect to the intellectual property objects, including trademarks, which are not registered with the Customs Register, provided that they are aware of who is the owner of the respective intellectual property rights. In such a case, if the goods which are supposed to be infringing are revealed by the customs authorities, the trademark owner shall be notified.
After the customs processing of the products supposed to be infringing is suspended, the trademark owner shall within 20 business days obtain the court ruling forbidding certain actions in the matter regarding protection of intellectual property rights (such as a ruling on seizure of goods) and file such ruling to the respective customs office. In terms of procedural legislation, filing the application for the preventive measures, as described above, is the most suitable way to obtain the respective court ruling.
Unless the court ruling on seizure of goods is cancelled (by a higher court or due to failure of the applicant to file the lawsuit), the goods will remain seized until the decision on the infringement action is issued.
Please note that the cost of storing the goods which customs processing was suspended shall be borne by the trademark owner. At the same time, the trademark owner shall have the right to seek damages should the infringement be confirmed.
Having reviewed the recent court practice we can see that the applications for preventive measures filed on the basis of the respective notifications of the customs authorities on border measures are often satisfied and the seizure of goods is applied. With respect to the matters where preventive measures/provisional remedy is requested apart from customs measures we can say that in some cases the court refuses to apply preventive measures/provisional remedy claiming that use of such measures before the case is considered on its merits shall constitute unlawful interference in the business activity of the defendant. At the same time, there are cases where the court satisfies the request for such preventive measures/provisional remedy.
Administrative Proceeding in Connection with Breach of Customs Rules
If within 20 business days after customs processing of the goods supposed to be infringing the trademark infringement is confirmed by the expert opinion issued by authorized institution, the customs office shall initiate the proceeding on breach of customs rules (this is an administrative proceeding which shall be initiated with regard to the CEO of the declarant) and products that are the immediate subject of the infringement shall be seized. Though we should note that the above-mentioned term for obtaining the expert opinion is very tight.
However, should this be the case the responsible customs officer shall prepare the report on the breach of customs rules and then the case articles shall be submitted to a court which will consider the matter and issue the decision. The matter on breach of customs rules shall be considered within 15 days after the materials required to consider the matter are received by the court.
According to Article 476 of the Customs Code of Ukraine, breach of customs rules entails a fine in the amount of UAH 17,000 and confiscation of the goods which are transferred through the customs border with infringement of intellectual property rights.
Criminal and Administrative Proceedings
A trademark owner may apply to the law-enforcement authorities claiming trademark infringement.
According to Article 229 of the Criminal Code of Ukraine unlawful use of the trademark, provided that it caused considerable damage, shall entail imposition of a fine of UAH 17,000 — 34,000 along with confiscation of unlawfully produced goods as well as equipment and materials which were specifically used to produce such goods. The damage shall be deemed considerable if it amounts to at least UAH 12,180. According to current practice it is usually necessary to purchase the infringing products for the above-mentioned amount in order to prove damage.
According to Article 51-2 of the On Administrative Offences Code of Ukraine unlawful use of a trademark is an administrative offence and shall entail imposition of a fine in the amount of UAH 170 — 3,400 along with confiscation of unlawfully produced goods as well as equipment and materials designed to produce such goods.
Thus, even if a criminal offence is not established, the record on an administrative offence may be issued by the responsible office with the law-enforcement authorities and further submitted to the court. The matter shall be considered by the court within 15 days after the court receives that record on the administrative offence along with other materials in the case.
In May 2014 Julia Semeniy joined Asters as a partner.