UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Anastasia Mindrul and Oksana Padokh, Mamunya IP
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special procedural provisions for trade mark or copyright proceedings in Ukraine. Currently, such proceedings are considered by civil and commercial courts (until the High Intellectual Property Court is established in Ukraine). The respective litigation cases are usually assigned to judges with the necessary level of experience in IP disputes. Parties do not influence judge selection, which is made auto - matically by the court case distribution system. A presiding judge or a party may request an IP expert opinion in cases where specific knowl - edge is required. 8.2 Effect of Registration Only the owner of a registered trade mark holds exclusive rights to use the mark or to prohibit its use, including through legal proceedings. Unreg - istered trade marks may be protected if recog - nised as well known in Ukraine by the court or the Chamber of Appeals of the IP Office. In addition to judicial protection, it is also pos - sible to approach the Anti-Monopoly Commit - tee of Ukraine with a request to protect against unfair competition. For more details, contact a local attorney. An infringement claim generally depends on whether the alleged infringer’s use of a mark is likely to confuse consumers. Therefore, the use of the same or similar mark on the same or related goods/services is crucial to establish - ing 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 man - datory in Ukraine, holding an official registration can significantly enhance the copyright holder’s position in litigation. It serves as prima facie, evi - dence of copyright ownership and the original - ity 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 preparing expert reports. The overall cost varies depending on the specific circumstances 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, geographical 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;
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