UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Oksana Padokh and Maksym Shymanskyi, Mamunya IP
pensation, and for any non-material (moral) damage caused. The amount of damages is determined by the court, taking into account the profits lost by the trade mark owner or income gained by the infringer as a result of the rights infringement. The court determines compensation based on the extent of the infringement, the infringer’s fault and other factors. It cannot be less than the fee that would have been paid for permission to use the trade mark. If the infringement was unintentional and not negligent, the compensation equals that fee. Copyright The copyright owner has the right to seek legal protec - tion and demand compensation for damages caused by copyright infringement, including lost profits or profits earned by the infringer, or to claim compensa - tion. When determining the amount of compensation, the court considers: • the duration and systematic nature of the infringe - ment; • the extent of the violation (including the geographic scope of its distribution); Initially, the plaintiff pays the court fees to commence the proceedings. As a rule, the losing party must reim - burse these court fees to the prevailing party. Regarding attorneys’ fees and other litigation expens - es, reimbursement by the losing party is contingent upon a court ruling concerning the distribution of these expenses. If a party or its representative abuses procedural rights, or if the dispute arises from the party’s bad faith actions, the court may order such party to pay all • the economic sector involved; • the intentions of the infringer; • culpability and its forms; and • other objective circumstances. 10.3 Attorneys’ Fees and Costs
or part of the litigation fees, regardless of the dispute’s outcome. 10.4 Ex Parte Relief A trade mark or copyright owner cannot seek relief on the merits of an infringement case without notifying the defendant, as required by the procedural laws of Ukraine. Typically, the court issues a writ of summons or a subpoena to the defendant. However, the court may issue a preliminary injunction ex parte, without prior notification to the defendant. Additionally, during criminal proceedings, an infringer may not be notified about the seizure of counterfeit products. 10.5 Customs Seizures of Counterfeits or Parallel Imports Current Ukrainian law enables customs to seize coun - terfeit goods. To facilitate the identification of possible counterfeits at the border, a trade mark or copyright should be registered with the Customs IP Registry of Ukraine. Upon detecting infringing products, customs officials must immediately notify a representative of the trade mark or copyright owner and temporarily suspend the customs clearance of such goods. This suspen - sion period lasts for ten business days and can be extended by an additional ten business days upon a reasonable request. During this period, the trade mark or copyright owner may take defensive actions, including: • filing a court action, which includes an application for a preliminary injunction to halt customs clear - ance of the infringing goods, and a statement of claim for infringement of IP rights at the customs border; and • requesting the customs authorities to either destroy the counterfeits or remove the infringing marks from the products and/or packaging. In some instances, it may be necessary to obtain sam - ples of the counterfeit products and prepare an expert report. Per applicable customs regulations, seizures should not apply to genuine goods manufactured with the consent of the rights-holder or by a person authorised
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