IP lawyers

IN UKRAINE AND OTHER COUNTRIES OF EASTERN EUROPE AND CENTRAL ASIA

Intellectual Property lawyers of Mikhailyuk, Sorokolat, and Partners are experienced in provision of the high-quality legal advice and handling disputes related to IP matters in Ukraine and other countries of Eastern Europe.

Core competencies of our IP lawyers

1. IP right protection for national and international trademarks, inventions, utility models, industrial designs, copyrights and domain names:

consulting and developing strategy in respect of IP rights protection;
monitoring amendments to current legislation;
providing legal opinion regarding the legitimate use of IP right objects;
drafting agreements (copyright agreements, agreements on division/assignment of the property right to IP objects created in the course of employment; non-disclosure agreements, distribution agreements, etc.);
preparing the evidence base concerning infringement of IP rights (investigation and market monitoring, control purchase conducting, Internet page notary certification arrangement, gathering the official data/ documents from the competent bodies/ organizations);
preparing and sending the cease and desist letters, conducting the negotiation with the infringers for dispute settlement;
conducting pre-judicial negotiations;
initiating and legal support of the lawsuits (preparing and filing the legal claims, representation before courts of all instances);
protection of IP rights against unfair competition;
representation before anti-monopoly authorities;
representation before police and public prosecutor's office;
recordal of the IP objects in the customs register and further representation in the customs procedures;
consulting and taking over-representation in case of illegal import / export of goods containing IP rights objects;
representation of the client's interests in the cases initiated by the third parties.

2. Oppositions, invalidation, and cancellation procedures:

consulting and development of the optimal case strategy;
preparing and sending cease and desist letters, conducting negotiations with the opponents as the pre-trial measures for amicable settlement resolution;
drafting of commitment letters;
preparing, filing, and further support of the oppositions in the administrative proceedings;
appealing the decisions of the Patent and Trademark Offices;
taking part in hearings of the Appeal Board;
initiation and support of the court cases for the invalidation and cancellation of the IP objects including the non-use trademark revocation;
conducting use investigation, accumulation of materials, securing and gathering of the necessary evidence.

3. IP lawyers of Mikhailyuk, Sorokolat, and Partners also provide consulting and support in the cases for the IP right disposition:

preparing the agreements for the creation and disposition of IP rights;
preparing the co-existence agreements;
preparing license agreements;
reviewing co-existence and license agreements for compliance with the current legislation;
conducting the negotiations and transaction support for the domain transfer.

If you need legal advice or require any assistance in respect of IP rights in Ukraine, Armenia, Kazakhstan, Moldova, Turkmenistan, Uzbekistan, Azerbaijan, Georgia, Kyrgyzstan, or Tajikistan, please contact us, our lawyers would be pleased to assist you.

Representative Cases (from 300+ IP cases handled each year)

Ukraine

Non-use cancellation case involving global electronics brand

Our team successfully represented the interests of one of the world's leading electronics manufacturers in a case concerning the invalidation of a trademark that had not been used in Ukraine for an extended period. The dispute involved a brand registered by a competitor in the class of computer equipment, which posed an obstacle to our client's market entry under its main brand.

The legal strategy focused on proving the non-use of the contested trademark over the past five years. The court of first instance upheld the client's position and declared the trademark invalid, enabling the client to proceed with the registration of its own mark in Ukraine.

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Kazakhstan

Enforcement against counterfeit confectionery products

Acting for a global confectionery manufacturer, we identified a counterfeit batch of chocolate products being sold in Kazakhstan. Following a test purchase, we filed a complaint with the Ministry of Justice, which issued an official order to stop the infringement. The counterfeit goods were seized, removed from circulation, and the client's rights fully restored.

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Georgia

Criminal enforcement against counterfeit fashion and footwear

Two separate enforcement actions were initiated for leading brands in the footwear and apparel sectors. Working with law enforcement and the prosecutor's office in Georgia, counterfeit goods were seized and destroyed, assets of infringers were frozen, and criminal cases were initiated. The proceedings concluded with court decisions imposing penalties and awarding significant compensation to our clients.

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Ukraine

Patent dispute resolved through voluntary assignment

Our client, a manufacturer of hand tools, was targeted by a patent owner in Ukraine. We filed a request with the Appeals Board seeking invalidation of the patent due to lack of novelty. During the proceedings, the patent owner acknowledged the strength of our arguments and offered to assign the rights to our client, which was accepted, leading to an amicable resolution.

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Kazakhstan

Protection of heraldic and name rights for a sovereign entity

We acted on behalf of an international organization responsible for the global protection of the name and heraldic symbols associated with a sovereign principality. Several trademark applications containing the protected name were identified in Kazakhstan. We filed formal oppositions with the national IP office, successfully preventing the registration of all infringing marks and safeguarding the client's exclusive rights.

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Uzbekistan

We represented a leading global video game company in a copyright infringement matter related to one of its iconic characters. Pre-litigation attempts to resolve the dispute were unsuccessful due to the counterparty's bad faith conduct. After initiating court proceedings, the infringer reconsidered their position and proposed a favorable settlement. The agreement included a clause allowing for a USD 30,000 compensation claim in the event of future infringement.

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Azerbaijan

Defense against non-use cancellation claim in Azerbaijan

Our client faced a non-use cancellation action before the IP Board. We submitted clear evidence of genuine use of the trademark in Azerbaijan. As a result, the opponent withdrew their claim during the proceedings.

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Moldova

Enforcement of trademark rights for a leading Italian fashion brand

We represented a prominent Italian lingerie and beachwear company in enforcing its trademark rights against a local business unlawfully using the brand name, including operating a retail store under the disputed mark. After pre-litigation measures were ignored, we initiated court proceedings demanding cessation of trademark use, removal of signage, withdrawal of infringing goods from circulation, and termination of business activity. The dispute was ultimately resolved through a court-approved settlement on terms proposed by our client. Post-settlement investigation confirmed full compliance, including debranding, withdrawal of products, and formal closure of the infringing entity in Moldova.

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Uzbekistan

Successful appeal to reinstate a cancelled trademark

We represented a major international manufacturer of coatings and paints whose trademark was cancelled for alleged non-use. Our team successfully challenged the decision in the appellate court, proving proper use and ensuring the continued protection of the mark.

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Ukraine

Overcoming provisional refusal based on a previously recognized well-known trademark

We acted for a leading global sportswear and footwear manufacturer in a trademark application that faced a provisional refusal due to the existence of a previously recognized well-known mark in Ukraine. The cited mark belonged to a related entity that had since ceased operations. As Ukrainian law does not provide a procedure for amending the status of a well-known trademark, we submitted a well-reasoned response addressing the issue. The IP Office accepted our arguments, and the trademark was successfully registered.

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