UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
• recognition of copyright; • restoration of the situation that existed prior to the infringement; • cessation and/or prohibition of actions that infringe copyright or pose a threat to their infringement; • termination of preparatory actions for the infringe - ment of copyright, including by suspending cus - toms procedures if there is reason to believe that pirated copies of works, phonograms, videograms, and means of circumventing technological protec - tion of copyright, etc, might be admitted into or from the customs territory of Ukraine; • publication, at the infringer’s expense, in the mass media of information about committed infringe - ments of copyright and court decisions regarding these infringements; and • implementation of other measures provided by law related to the protection of copyright. For both trade mark and copyright infringement, claims may include: • compensation for material damage (including dam - ages and lost profits), recovery of income, etc; and • compensation for moral damage. Ukrainian legislation does not restrict the rights-holder in choosing a legal claim, even if such a claim is not directly provided for by law but is effective in defend - ing the violated right. According to Ukrainian legislation, the right to permit or prohibit the use of a trade mark (or confusingly simi - lar designations) arises from the certificate issued by the IP Office or under the Madrid Agreement. Since May 2024, the Supreme Court has ruled that a well- known trade mark no longer automatically allows enforcement (as was the case previously). Infringe - ments now require a separate determination of the trade mark’s well-known status in each case, regard - less of previous recognition. In Ukraine, copyright arises from the moment a work is created and does not require any registration. How - ever, according to relevant court practice, the burden of proving ownership of the copyright rests with the plaintiff.
In the sphere of intellectual property, secondary liabil - ity is not directly provided under Ukrainian legislation. Trade Mark and Copyright Infringement Any unauthorised use of a trade mark (in its registered form or confusingly similar designation) or copyright - ed work constitutes infringement. The unauthorised use of a trade mark may include: • applying the trade mark to any goods for which the trade mark is registered, including packaging con - taining such goods and signage associated with them, labels, patches, tags or other items attached to the goods, and storing such goods with the trade mark applied for the purpose of offering for sale, offering for sale, selling, importing and export - ing; • using it in the offering and provision of any service for which the trade mark is registered; and • applying it in business documentation, advertising and on the internet. The following forms of unauthorised use of a copy - righted work may constitute infringement: • reproduction; • inclusion in a composite work and in a work other than a composite; • public performance, public display, public demon - stration, public notification, interactive provision of access to the public, and other ways of bringing to the attention of the public; • translation; and • transformation, adaptation, arrangement and other alterations of the work. The above list is not exhaustive. Infringement Elements In trade mark disputes, the plaintiff must prove: • the existence of trade mark rights (national/inter - national registration or that the trade mark is well known in Ukraine); • distribution of copies of the work; • importation of copies of the work; • rental or lending of copies of the work;
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