UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
• the fact (or threat) of infringement; and • in specific cases, the amount of material and/or moral damage, and the causal link between the infringer’s actions and the harm caused. In copyright disputes, the plaintiff must prove: • the plaintiff’s ownership of copyright or the right to their protection; • the fact of unauthorised use of a copyrighted work; and • in claims for compensation for material and/or moral damage, the extent of the damages and the causal relationship between the harm suffered and the actions of the infringer. Unfair Competition The Law of Ukraine on Protection Against Unfair Com - petition imposes liability for the unlawful use of the business reputation of an economic entity, including the unauthorised use of an entity’s trade mark or simi - lar designations in economic activities, which has led or may lead to dilution of the activities of such entity. The Anti-Monopoly Committee of Ukraine enforces liability for unfair competition in Ukraine. Rights to unregistered marks may also be protected by filing a complaint with the Anti-Monopoly Committee of Ukraine. Cybersquatting Unauthorised use of trade marks in domain names is unlawful. Thus, the rights-holder has the right to bring an action to cease such use of a trade mark in domain names, with the termination claim of the delegation or transfer of the domain name that infringes on trade mark rights. 7.3 Factors in Determining Infringement According to the Trade Mark Law, the use of a trade mark or a confusingly similar designation without the consent of the rights-holder constitutes infringe - ment. However, there are exceptions where the use of a trade mark does not require the consent of the rights-holder (refer to 9.1 Defences to Trade Mark Infringement ). The unauthorised use of an author’s work is deemed unlawful under Ukrainian legislation. Simultaneously,
the Copyright and Related Rights Law provides an exhaustive list of exceptions that permit the use of copyright objects without the rights-holder’s consent (refer to 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) ). 7.4 Prerequisites and Restrictions to Filing a Lawsuit In Ukraine, no prerequisites exist for suing a trade mark or copyright infringer. While it is common, not mandatory, for the owner to send a cease-and-desist letter before filing a lawsuit, the claim should mention any prior attempts to resolve the issue out of court. Additionally, considering a case’s specifics, the court may require the plaintiff to deposit a sum of money into the court’s account to secure potential reimburse - ment of the defendant’s legal costs. This applies if the claim seems obviously unreasonable or for an abuse of the right to sue. 7.5 Lawsuit Procedure Jurisdiction Trade mark and copyright disputes, including infringe - ment proceedings, between individuals or individu - als and legal entities fall under the jurisdiction of civil courts. Disputes between legal entities and entrepre - neurs should be heard by commercial courts. These rules apply to first, second and third instances. Usually, attorneys represent the parties in litigation; however, self-representation is also permitted. Foreign trade mark or copyright owners may bring infringement claims in Ukraine through local attor - neys. The trade mark must be registered or its status as well known must be proved during the considera - tion on merits in a relevant court case in Ukraine, while copyright registration is not required. Costs Before Filing a Lawsuit Such costs typically involve: • the test purchase of the infringing products; • evidence notarisation and translation; • postal services for sending cease-and-desist let - ters; • an IP expert report (if necessary); and
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