UKRAINE Trends and Developments Contributed by: Oleksandr Mamunya and Oksana Padokh, Mamunya IP
such actions are reflected in the new version of the Law of Ukraine “On Advertising”, which pro - hibits the placement of advertisements on web - sites that raise concerns about IPR compliance. Special attention should also be given to the newly created IPR Monitoring Center (see here ). It is a specialised platform for expert communi - cation on counterfeiting, similar to the European Observatory on IPR Infringement, which aims to bring together a wide range of stakeholders to combat the negative effect of counterfeiting, including brand representatives. Its latest initia - tive was launched in early September – namely a national campaign to combat piracy and coun - terfeiting in the IP sphere, particularly in the field of book publishing. The information campaign is aimed at fostering a conscious attitude towards purchasing original books, educating citizens about the harm caused by counterfeiting and piracy, and the responsibility for distributing pirated copies of books. Landmark Decisions of the Supreme Court While the launch of the High Court on Intellec - tual Property in Ukraine is still pending, disputes related to IPR are currently handled by civil and commercial courts. At the same time, the Supreme Court, as the highest judicial author - ity, considers landmark cases and provides its legal positions on various contentious issues, which are then used by all parties involved in the process and by lower courts in similar cas - es. Among the most recent important decisions of the Supreme Court, the following should be highlighted. Google LLC v PJSC Real Estate of the Capital & NIPO (Case No 910/5815/21, Supreme Court decision, 6 April 2023) Google LLC initiated legal proceedings on the cancellation of a conflicting trade mark registra -
tion due to its non-use. The first-instance court erroneously concluded that the trade mark could be considered in use, even though the related services were provided as part of a broader real estate development activity rather than as stan - dalone services. Both the appellate court and the Supreme Court overturned the lower court’s decision, ruling that a trade mark can only be considered in use when it is present in the mar - ket for the specific service for which it is regis - tered. The Supreme Court also made a landmark ruling, stating that the installation of equipment as an intermediate step in a construction cycle does not constitute a separate service offered by the developer. This case established a new judicial position regarding the use of trade marks in the provision of services, an issue that had previously not been addressed in Ukrainian case law, which had focused primarily on trade mark use in relation to goods. Darnytsia Pharmaceutical Company v JSC LUBNYPHARM & NIPO (Case No 910/13988/20, Supreme Court decision, 17 April 2024) One of the most controversial and widely dis - cussed rulings of the Supreme Court in 2024 was its decision that fundamentally changed the approach to well-known trade marks in Ukraine. Previously, a trade mark could be recognised as well known either by the NIPO’s Chamber of Appeal or by the court as of a specific date in the past. Such recognition was considered prejudi - cial and did not require reproof in subsequent cases. The Grand Chamber of the Supreme Court ruled as follows. • Recognising a trade mark as well known as of a specific date is a determination of a legal fact, which is necessary in contentious
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