UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Anastasia Mindrul and Oksana Padokh, Mamunya IP
7.7 Small Claims In Ukraine, all trade mark or copyright claims, regardless of their size or scope, must be resolved through the courts. There are no alter - native legal bodies or forums that handle these specific types of disputes. 7.8 Effect of Trade Mark and Copyright Office Decisions The IP Office’s decisions have no direct effect on infringement actions. Nevertheless, the court may take such decisions into account when delivering the final decision on the merits of the case. 7.9 Counterfeiting and Bootlegging In Ukraine, a counterfeit mark refers to an unau - thorised reproduction of a trade mark that is identical or confusingly similar to a registered trade mark, and used in relation to goods or ser - vices for which the trade mark is registered. Copyright counterfeiting typically involves ille - gal reproduction, importation into or exporta - tion from the customs territory of Ukraine, and distribution of pirated copies of works (includ - ing computer programs and databases, pho - nograms, videograms, illegal use of broadcast programming, camcording and internet piracy). The legal system provides for both civil and criminal remedies against counterfeiting. Civil actions may include injunctions, claims for dam - ages, and the seizure and destruction of coun - terfeit goods. Criminal penalties include fines, confiscation of counterfeit goods, penal labour or imprisonment. Criminal liability also extends to the illegal pro - duction, storage, sale or transportation with the intent to sell excisable goods, including alco - holic beverages and tobacco products.
Usually, attorneys represent the parties in litiga - tion; however, self-representation is also permit - ted. Foreign trade mark or copyright owners may bring infringement claims in Ukraine through local attorneys. The trade mark must be regis - tered or its status as well known must be proved during the consideration on merits in a relevant court case in Ukraine, while copyright registra - tion 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 letters; and • an IP expert report (if necessary). The court fees for filing the statement of claim and a preliminary injunction request are also nor - mally incurred before filing a lawsuit. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants An alleged infringer may not initiate declaratory judgment proceedings. However, the defendant is entitled to file a motion requesting the court to oblige the plaintiff to deposit a sum of money into the court’s deposit account. This deposit ensures the possible reimbursement of the defendant’s future litigation costs. Additionally, the court may require the plaintiff who filed for a preliminary injunction to compen - sate the defendant for any possible losses that may arise from the injunction.
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