Klaus Kessler

Phone: +380 (44) 586 23 03

Protection of intellectual property in Ukraine is of particular importance for the Ukrainian legislators, which fact is evidenced with the inclusion of intellectual property protection issues in Part IV of the Ukrainian Civil Code. This part covers most of the principles regulating the copyright as well as the rights to inventions, utility models and industrial designs; patent law; trademark protection; the rights to scientific discoveries and inventions, innovative integrated circuit designs and technical innovations, new plant varieties and breeds of animals; on the related rights protection areas in commercial operations, such as the right to knowhow. Moreover, there are additional laws to regulate the patent law; the rights on trade names and to technical research information.

However problems often emerge in practice in connection with the enforcement of the protected intellectual property rights in Ukraine. The reason is primarily that the existing protected rights are filed for registration with minor changes by unscrupulous applicants, and the new rights holder requires payment of license fees.

The protected rights can be infringed further in a different way where an enterprise operating in Ukraine uses the protected rights to its benefit in an inacceptable way. As a rule, an ordinary warning notice to the infringing party suffices in such situations. If the infringer does not stop his illegal acts, court litigation should be initiated and the prospects for its successful outcome are quite good - notwithstanding the disparaging comments and opinions voiced typically in the Western media.

The dispute regarding an infringement of the intellectual property rights can be settled in court or out of court in direct negotiations held by the parties involved in the conflict, possibly with the involvement of an independent intermediary party (a mediator).

Another significant aspect of the rights protection is the licensing law. As a rule, Western companies cooperate with local partners in Ukraine who are granted the license to use the company trademark (brand) for marketing purposes, or a technology protected by a patent, or a utility model, or an industrial design. Quite often the partners disregard a direct requirement of the Ukrainian law that the license agreement requires state registration to take effect in the event the licensed protected rights (i.e. the patent, trademark, utility model) require statutory registration.

The package of issues regarding the licensing of software and know-how is also of practical importance. It is necessary first of all to consider the issue of restrictions on the licenses to use and on the grant of sublicenses as well as the confidentiality issue, which is the key component in the know-how related issues and is protected with special regulations in Ukraine.

Before one launches a product at the Ukrainian market, enters into a cooperation agreement or plans any other investment project, it is essential to find out to what extent the rights associated with the product intended for the distribution are protected in Ukraine. In addition, it would be necessary to prepare the market, to register multiple patents, trademarks and the possible license agreements.

We offer advice on all the above issues – starting with pre-marketing and ending with the protection of your interests in the Ukrainian courts.