UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Anastasia Mindrul and Oksana Padokh, Mamunya IP
For both trade mark and copyright infringement, claims may include: • compensation for material damage (includ - ing damages 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 defending the violated right. According to Ukrainian legislation, the right to permit or prohibit the use of a trade mark (or confusingly similar 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 enforce - ment (as was the case previously). Infringe - ments now require a separate determination of the trade mark’s well-known status in each case, regardless of previous recognition. In Ukraine, copyright arises from the moment a work is created and does not require any reg - istration. However, according to relevant court practice, the burden of proving ownership of the copyright rests with the plaintiff. In the sphere of intellectual property, secondary liability is not directly provided under Ukrainian legislation. Trade Mark and Copyright Infringement Any unauthorised use of a trade mark (in its reg - istered form or confusingly similar designation) or copyrighted 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, includ - ing packaging containing 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 exporting; • using it in the offering and provision of any service for which the trade mark is registered; and • applying it in business documentation, adver - tising and on the internet. The following forms of unauthorised use of a copyrighted work may constitute infringement: • reproduction; • inclusion in a composite work and in a work other than a composite; • rental or lending of copies of the work; • public performance, public display, public demonstration, 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/ international registration or that the trade mark is well known in Ukraine); • the fact (or threat) of infringement; and • distribution of copies of the work; • importation of copies of the work;
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