Pakharenko & Partners is among the most reputed Ukrainian boutiques and is known for deep IP knowledge and long lasting experience. The firm has international capabilities through its two offices in Kiev and London. The strongly diversified team regularly rendered complex mandates from top European and global clients. Throughout the past year top brands from various industries enlisted the team as a legal counsel for handling trademark and patent infringement matters. Among the recent public cases of the boutique is representing West Pharmaceutical Services Inc. in a case of recognition of patents on utility models which were registered on legal entities and individuals as invalid; represented the interests of Syngenta Participations AG in a patent infringement dispute; acted for Sanofi Deutschland GmbH in a strategically important case of patent invalidation. Another notable feature of the boutique is its strong anti-counterfeiting performance. Antonina Pakharenko-Anderson enjoys her eminent standing within the IP market. Following steady references from peers for his anti-counterfeiting expertise, Alexander Pakharenko is a visible figure in IP circles.
Doubinsky & Osharova, one of the most respected Ukrainian IP boutiques, maintains remarkable market recognition and projects track. For many years the boutique remains a primary choice for top multinationals. The team acts on the variety of issues, including trademark and patent infringements, IP due diligence, anti-counterfeiting, high profiled litigation. Notable recent highlights included defense of the rights of Philip Morris in a case for defense of commercial (trade) names and trademarks in domain dispute; defense of rights of Toyota Motor Corporation in a trademark infringement case; successful defense of Adidas AG on the customs borders of Ukraine. Victoria Sopilnyak, partner focused on pharma cases. Michael Doubinsky, one of the most respected IP market figures and is top referenced professional. Yaroslav Ognevyuk leadsthe team’s key mandates and is widely recognized market practitioner. Anton Koval is another IP force of this team, particularly known for his litigation strength.
Vasil Kisil & Partners, Ukrainian legal market heavyweight, enjoys remarkable strength of its IP practice. The 2-partner and 7-lawyer proficient team is a legal counsel to an impressive number of top brand names. The IP team represents Mobile TeleSystems OJSC in a complex litigation matter defending against a claim for cancellation of a number of the client’s key trademarks registered under Madrid Convention. Recent examples of patent litigation include representation of DuPont, a world-known international manufacturer of chemical products, in a number of patent disputes. Samsung Electronics (Ukraine), a consistent client of the firm, entrusted the team to represent its interests in the course ofcopyright levy matter and patent (industrial design) cancellation. Illustrative client names are Pioneer Hi-Bred International, Inc. and Koninklijke Philips Electronics N.V. Partner Oleksandr Mamunya is endorsed by peers as a highly regarded IP disputes professional. Oleksiy Filatov dispute resolution head is an IP practice lead partner.*
* In July 2014 Oleksiy Filatov has been appointed deputy head of the Administration of the President of Ukraine.
In August 2014 five partners – Denis Lysenko, Mariya Nizhnik, Anna Babych, Oleksandr Mamunya and Yulia Kyrpa left Vasil Kisil & Partners and established Aequo law firm.
Baker & McKenzie upholds one of the top IP market players in Ukraine. With its legacy as an international heavyweight, the office enjoys the remarkable clientele of global multinationals. Its recent workload was dedicated to trademark and patent prosecution, handling trademark portfolio, infringement matters, enforcement in Ukraine, litigation and opposition work. The past year was also noted for advice on counterfeiting issues. The firm is a consistent advisor to British American Tobacco with regard to trademark and patent prosecution, litigation and opposition work. Ruslan Drobyazko and Yuliya Kolchenko are established names due to their long lasting practicing IP.
For many years Konnov & Sozanovsky has stood out for its proactive IP practice, advising both large multinationals and regional brands from IT, telecom, entertainment, food industries. The IP practice group remains extremely proficient in trademarks, licensing and copyright issues. The firm is an IP counsel toMicrosoft on copyright transfer and licensing and handles IP advisory at Film.UA. Another significant client Ferrero Group is consistently represented in the course of numerous trademark disputes and unfair competition cases. Julia Semeniy leads the IP practice and is a widely recognized practitioner on the market.**
** In May 2014 Julia Semeniy joined Asters as a partner.
Egorov Puginsky Afanasiev & Partners (EPA&P)commands CIS reach and subsequent IP capacities. The major instruction of the Kiev team derived from financial institutions, telecom, IT, media and entertainment industries, pharmaceuticals. The firm is known for representing media companies on various copyright and trademark matters. EPA&P Ukraine advises Viacom on the enforcement of IP rights and cease of sales of counterfeited products representing the client before customs and state authorities. Another notable representation included case of Illegal use of ERSTE brand, when the team acted for Erste Group Bank AG before the Antimonopoly Committee of Ukraine with regard of unfair competition by local financial institution. Taras Kyslyy, counsel, is the most vivid IP practitioner of the office. Partner Ilona Zekely, Austrian lawyer, rendered advice to one of the worldwide leading airline and event catering companies and its subsidiaries in Ukraine and Europe, on all IP matters related to the EURO 2012 football championship in Ukraine as well market entry and ongoing IP advice.
The Kiev office of renowned Russian firm Gorodissky & Partners has a broad based profile of trademark and patent work. The past year has been especially rich for litigation against bad faith registrations and in patent prosecution assignments. The clientele is featured by an abundance of top global names across a range of industries. Meeting clients’ needs, the team is well versed for handling complex legal assistance including development, management and exploitation of their IP portfolio, developing the corporate IP strategy, rendering advice in the area of customs surveillance, etc. The team is led by seasoned practitioner Oleg Zhukhevych.
Sayenko Kharenko’s IP team consisted of patent attorneys, experienced IP litigators, and highly-specialized IP lawyers focused primarily on sophisticated transactional and enforcement IP matters. The multidisciplinary team possesses capacities to advise on unfair competition cases, combating counterfeit projects, IP-focused commercial contracts, IP challenges faced by technology-based companies, such as IT industry. In 2013 IP team advised one of the largest integrated conglomerates in the international gaming industry on general issues related to IP portfolio management as well as on fighting copyright infringement in a trademark infringement litigation; assisted the online games developer and publisher on copyright and trademark infringement in Ukraine; acted for a major Ukrainian developer and publisher of mobile games on the transfer of IP rights, related to the modernization of an existing mobile game during a proposed sale to a US company. The firm represented one of the major insurance companies in Russian a dispute over the right to a trade name. Nazar Chernyavsky leads the firm’s IP team, contributing his outstanding expertise in international finance and IT and communications to transactions involving IP. Anton Zhdanov leads a part of the team responsible for handling IP disputes.
AstapovLawyers international law group has boosted its practice of intellectual property, followed after admission of the IP group of practitioners led by Natalia Meshcheriakova. The 7-expert team acted on trademark and patent prosecution and opposition, IP due diligence, licensing, unfair competition and IP litigation. With its CIS coverage, the IP team advises DIAGEO on IP and unfair competition matters in the CIS; represented SIC Mining Machines on a wide scope of patent rights protection in Ukraine and other countries. Sony Electronics instructed the firm on patent disputes, while PepsiCo for IP due diligence. Among others, the diverse client portfolio of the team includes Bioton, EFKO, Detskiy Mir, SIC Mining Machines, Traditions and Quality, Prana, etc.
Asters accumulated expertise in technology licensing and distribution agreements, franchising, due diligence, trademarks, patents, copyrights, parallel import, trade secrets and confidential information. Given recognized leadership in the antitrust field, Asters stands out for its unfair competition investigations offering. The team advisedACNielsen Ukraine on various aspects of data protection, including television audience measurement its business; ABM Franchising Group in connection with buying the franchise business; Source Logistic on various aspects of IP law in respect with preparation of software development contracts with foreign and local services providers. Wizz Air, Schneider Electric Ukraine, KONE Corporation, GN Store Nord A/S belong to the firm’s formidable clientele. The IP projects were led by partners Oleksandr Padalka*, known for his IP and IT expertise, and Vadym Samoilenko, corporate and M&A lead partner.
Arzinger is growing its IP presence and demonstrating involvement into the dispute work. The Danish pharmaceutical company Takeda Pharma A/S entrusted Arzinger with protecting its IP rights to the registered trademarks “Cardiomagnyl”. Another notable representation is acting for Kometa Plus LLC as an exclusive licensee to use cartoon characters of Soyuzmultfilm. Anton Polikarpov and Natalia Ivanytska are the core IP force ofArzinger.
The mature nature of DLA Piper’s IP practice in Ukraine is confirmed by the promotion of Natalia Pakhomovska to partnership. Historically strong in IP aspects of various transactions and in commercial issues, her 3-lawyer team has developed strong capability in provision of traditional IP services, among them filings, development of IP protection strategies. In 2013 the team provided full legal support to a major international communications group, in acquisition of a marketing business, where the IP team advised on the use of brands and know-how by the target. The team also advised a number of international franchisors in their relations with Ukrainian franchisees. It also recently handled a major transfer of IP assets in the acquisition of a Ukrainian classifieds website by an international investor.
IPStyle, compact domestic IP boutique, demonstrates diverse IP offering and solid client base. Recently the team handled assignments of Confectionary Corporation Roshen, Danone Ukraine, Novus Ukraine, Delta Bank, Bank Mykhaylisvkiy, Ukrainian Bank of Development, Arsenal Insurance, Proksima Insurance Company, PocketBook Ltd. Noteworthy, the PFSoft, software developer of electronic trade systems, attracted the boutique for protecting IP rights worldwide, including trademark registration under national procedures and Madrid Protocol, and drafting software licensing agreement. The firm acts for Russian and Ukrainian banks entering the Ukrainian market, consequently advising and developing a strategy of trademark protection for Bank Mykhaylisvkiy and Bitbank. Moreover, the team includes technical specialists which in cooperation with lawyers and IP specialists conduct patent searches and draft patent applications. Partner Mariya Ortynska is the main force of the team, andcontinues to rapidly build up her IP market reputation.
Jurimex Law Firm has been present on the IP scene for a long time, and is particularly known for its work with domestic clients. Throughout 2013 the major instruction came fromM.S.L., state lotteries, and concerns drafting license agreement on trademark and copyright use, contractual package for launching TV programs, pre-court resolution of domain names use. Another firm client, Markason, owner of the Modnkasta Internet-shop, instructed the team on supporting transfer of exclusive rights on software and trademarks. Yuriy Krainiak, managing partner, is a well recognized practitioner in the market.
KM Partners, the eminent domestic tax counsel, grows the IP offering in close connection with its tax and corporate practice. Throughout the past year the team under the guidance of partners Maxim Oleksiyuk and Alexander Shemiatkin provided consulting support on trademarks use, taxation of advertising costs for using trademarks, transfer of IP rights and specialized rights to software and computer programs, usage of industrial designs and plant varieties and drafted a number of franchising and license agreements for its clients.
The Kiev office of CMS Cameron McKenna is known for its dedication to IT-related matters and strong competition performers. Lately the team handled IP and IT due diligence in terms of several acquisition projects. From the current perspective, the firm is involved in unfair competition, and industrial property matters. Olexander Martinenko and Maxym Bugai are the main performers.
In 2013 the IP activity of Gide Loyrette Nouel has been centered to healthcare and pharmaceutical sector. The Kiev IP team advised leading international healthcare companies on a dozen medicines in advertising and promotion campaigns for medicines, and launched the commercial case against illegal use of the trade name, designation and packaging identical to the registered trademark of a well-known branded product manufactured by a global pharmaceutical company. The primary IP contacts are Bertrand Barrier and Evgenia Paliy.
Being strong in trademark disputes, Ilyashev & Partners is regularly instructed by major pharmaceutical companies. The IP team has been involved into IP rights protection on the “Okomistin” trademark; and in a litigation concerning recognition of illegitimate cancel of a regulator’s decision for a temporary prohibition of “Midronat” medication in Ukraine. Mikhail Ilyashev, Irina Kirichenko and Taras Utiralov are involved in IP representations.
Marchenko Danevych, the new brand name emerged as a result of merger oftwo domestic players Danevych Law Firm and Ulysses in December 2013. The amalgamated team, as led by Borys Danevych, possesses remarkable expertise in life sciences and often advises on data exclusivity mechanism for marketing authorization. Among the team’s caseload were instructions from Innoware Ukraineondue diligence of IP rights; advising Eli Lilly, AstraZeneca Ukraineon conducting R&D projects in Ukraine; acting for Tolmar Corp on a full scope of patent retrievals regarding chemical substances that are related to certain medicines. Among others, clients include Baryisheska Zernova Kompaniya, Novo Nordisk, Johnson&Johnson Ukraine, Einhell AG, GSK Consumer Healthcare, CFC Consulting, Bayer.
In 2013 the IP practice of Integrites was boosted with numerous assignments of a diverse nature, both contentious and non-contentious. The team advised FreyWille GmbH & Co KG on possible ways for protecting its IP rights against distribution of counterfeit products in Ukraine by third persons; elaborated license agreements for Kimberly-Clark Ukraine on transfer of right to use the IP objects and enforcement of such agreements. Belvedere S.A. was represented in disputes regarding invalidation of a patent to industrial design and international registration of the trademark. Yevgen Blok, senior associate and Oleksandr Aleksyeyenko, partner, were the main practitioners along the solid recent IP caseload.
Kibenko, Onika & Partners is seen across patent related and transactional IP advice. It is noteworthy that the firm has worked on a complex transaction concerning the transfer of unique technology to Ukraine; and provided legal support to procedures for transferring rights to inventions and industrial models to the registered capital of a joint German-Ukrainian company. Olena Kibenko heads the legal team.
Wolf Theiss is experiencing growing interest on the part of its international clients to IP protection in Ukraine. During 2013 the Kiev team was focused on non-contentious work, including IP structuring in M&A transactions, trademark and domain name infringements, IT outsourcing, copyright and related rights protection, personal data protection, telecommunication, media and technology. The clients include Noosphere Ventures Management, SITA, AVentures Capital and Monster Beverage Corporation. The IP and TMT practice is lead by associate Olena Vardamatska and supervised by the office managing partner, Taras Dumych.
The IP practice of Lavrynovych & Partners is led by its managing partner Maksym Lavrynovych. Profound litigation is a traditional feature of the firm, and it was recently demonstrated by the team’s representation of JSC BAN and LLC Kvas Beverages in the recovery of damage from illegal use of IP rights. Another notable IP project was advising VS Energy International on development and disposal of a computer program by joint operations parties.
The offering of Ukrainian law firm Pragnum covered trademark and industrial models registration, licensing, franchising and unfair competition matters. Clients include domestic businesses like Hecht Ukraine, Proshyan cognac factory Ukraine, State lotteries, Rosinka, Zhitomyrsky Lasoschi. Vitaliy Bobrynev and Andrey Ponomorev are the main contacts.
Legal Alliance Company with its prime dedication to pharmaceutical sector, is seen across contentious IP matters and subsequent advising. Last year the firm represented Jadran upon the claim for cancellation of registration of TM “Vagisan”. Illya Kostin and Nataliia Lavrenova are the main figures.
Gramatskiy & Partners, reputed for its real estate and construction dedication, complements its offering with IP work. The firm represented its long standing client SNT on appealing the license agreements that violated a patent on invention. The firm demonstrates consistent involvement in copyright and industrial property protection in the course of the construction process and IP-related issues regarding commercial property. Oleksandr Koval and Bogdan Chaban are the core team members.
ILF, one of the key market players in Kharkov, is involved in trademark work. Anton Zinchuk advised Egger Holzwerkstoffe LLC on a long-term license agreement on use of 12 trademarks registered in various international jurisdictions by a non-resident.
LCF Law Group, renowned by its litigation capabilities, represented the restaurant network Varenichnaya Pobeda in a dispute with Varenichnaya Katusha regarding the unauthorized use of IP rights.Partners Anna Ogrenchuk and Sergiy Ignatovskiy are key contacts.
Misechko & Partners, as led by Volodymyr Misechko, has been seen in supporting the sale of exclusive rights on trademark and subsequent registration of a trademark. Simply Road and Europa Arm Sport are among its clients.
Peterka & Partners frequently advises multinationals on their IP issues in Ukraine. The Kiev office recently acted forKonica Minolta, regarding trademark infringements, unauthorized parallel imports of products, brand damage and counterfeit products in Ukraine and Kazakhstan; advised Regus group companies on trademark renewal in Ukraine and the payment of royalties under license agreements. Nina Sydorenko and Alexander Poels are the key contacts.
The IP practice of Juscutum Attorneys Association is a part of its IT and media practice. Recentlythis team assisted with the registration of IP rights for Kaznachey, aggregator of Internet payments. Other assignments derived from Liga, Manufactura, Atbos, Ukraine Online Venture, BVU Group. Artem Afian, Dmytro Gadomsky, Mikhail Pergamenshik make up Juscutum’s core team.
Renowned for its tax expertise, the legal team of KPMG Ukraine, as led by Tatiana Zamorska, director, delivered comprehensive legal and tax support to leading importer of spare parts in Ukraine on trademark royalty arrangements; revising draft license agreement. Maya Lgova, an experienced patent attorney from Grischenko & Partners, is a notable personality in the IP community. Sergey Grenchuk, Fedorova & Partners, is endorsed by his IP litigation expertise.
Mikhailiuk, Sorokolat & Partners, IP boutique with a network of offices, Petro Borovyk, Borovyk & Partners, and Marina Vulikh, Vulikh & Vulikh, were mentioned in the course of peer feedback on the IP market.