UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
crucial to establishing a likelihood of confusion and, consequently, infringement. Well-known trade marks, however, may be protected more broadly, covering even dissimilar goods if the use harms their distinc - tiveness or reputation. For copyrights, although registration is not manda - tory in Ukraine, holding an official registration can significantly enhance the copyright holder’s position in litigation. It serves as prima facie evidence of copy - right ownership and the originality of the work, thus simplifying the enforcement process and reducing the evidentiary burden. 8.3 Costs of Litigating Infringement Actions The typical costs for bringing an infringement action to a conclusion in the first instance include court fees, professional fees and the costs associated with pre - paring expert reports and/or poll opinion reports. The overall cost varies depending on the specific circum - stances of each case. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The exclusive right of a trade mark owner to prohibit unauthorised use of the registered trade mark does not apply in the following situations: • exercise of any right acquired before the trade mark filing date, or the priority date (including the right of prior use); • use of the trade mark for a product that has been placed on the market under the trade mark by the owner or with their consent; • use of the trade mark in a manner related to the type, quality, quantity, destination, value, geo - graphical origin, time of production of goods or provision of services, or other characteristics of goods or services, provided it does not infringe on the rights of the trade mark owner; • use of the trade mark in commerce when it is necessary to indicate the intended purpose of a product or service – for example, as accessories or spare parts (descriptive use); • use of the trade mark in comparative advertising;
• non-commercial use of the trade mark; • all forms of broadcasting news and commenting on news; • fair use of names or addresses of other persons; • use of the trade mark in comparative advertising and not associated with unfair business practices; and • the exclusive right of the owner of a trade mark certificate containing a geographical indication to prohibit other persons from using the registered trade mark without their consent does not apply to the fair use of the respective geographical name by other persons. For more details, contact a local attorney. Additionally, a counterclaim may be filed as a defen - sive strategy to invalidate an earlier registered trade mark or to cancel its registration due to non-use. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The Copyright and Related Rights Law provides the following exhaustive list of fair uses/fair dealings (without the copyright holder’s permission and free of charge, but with attribution to the author and source): • quotations, including translations, from legally published works such as newspaper articles can be used in press reviews if they serve a critical or informational purpose and are clearly marked as quotations; • legally published articles and short works, includ - ing excerpts from various works, can be repro - duced digitally for educational or research purpos - es, with no commercial benefit and where usage is aligned with the intended educational or research goal; • educational institutions may reprographically reproduce legally published articles and other short works for teaching, provided the reproduction is limited to educational purposes and is not system - atic; • digital reproduction and access to legally published short works and excerpts for remote learning are allowed, with protective measures against unau - thorised access;
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