Resolving conflicts

An experienced attorney understands that registration of trademark rights makes sense only in conjunction with the implementation of an effective trademark protection strategy. We use all available tools to prevent, identify and stop infringement of our clients' rights both in Ukraine and in other countries. We advise, develop and implement rights protection strategies at all organizational levels, using the experience gained and connections with partners and right protection organizations.

All necessary legal actions to stop the unlawful use of a trademark or industrial design:
  • Complains and cease and desist letters to stop the infringement of rights

  • monitoring new applications for trademark registration in order to prevent bad faith registrations in a timely manner;

  • using best practice for developing strategies for global rights protection;

  •  monitoring of trademarks submitted for registration to identify possible conflicts;

  •  preventing the import of counterfeit products (registration of intellectual property rights at customs);

 

 

  • The trademark owner has the opportunity, based on the results of the said monitoring, to submit a reasoned opposition to the proposed registration of a trademark that may cause a conflict in the market with an already registered trademark owned by him/her, prior to issuing a decision on registration of the trademark, identifying such filing as a fact of unfair market behavior and violation of his/her rights The examination body may accept such arguments for consideration only if they are filed no later than 5 days before the date of the decision on trademark registration is made. In order to identify unfair filings that may later cause conflicts in the market, we make monthly searches and inform clients about potential conflicts suggesting best course of action in each individual case.

As soon as potentially conflicting applications or unfair use of the trademark are identified, either through our internal monitoring or through notification from the client's special tracking agencies, we take action to stop such infringements. Depending on the situation and preliminary investigations, we develop a strategy based on our knowledge of the market, understanding of the underlying business interests and available legal instruments. We prepare effective warning letters, which is a cost-effective way to initiate communications with the infringer, send the infringer a notice and quickly determine its position and available resources.

There are numerous strategies for resolving domain name conflicts in Ukraine: from voluntary transfers of domain names to referring disputes to the courts. At the same time, we are always ready to take your budget into account and help you build a further strategy in the most cost-effective way.

Our attorneys have specialized knowledge and are certified as mediators of conflicts in the field of intellectual property. We have the appropriate education, experience and market knowledge to find common ground with even the most aggressive infringers. Given the difficulties in predicting the estimated costs associated with litigation aimed at stopping actions that violate the rights of third parties, the conflict of positions, and possible costly expert examinations, mediation is a critical step in the process of combating rights violations and stopping unfair actions in terms of cost-effectiveness.

Objections to unfair trademark registration

Any interested person may notify the examination of potential conflicts in the event of registration of their designation as a trademark by submitting a reasoned objection at least 5 days before the registration decision is issued. We stopped such decisions on registration applications that violate our clients' rights by monitoring new applications and filing timely, reasoned objections to notify the examination of a potential conflict. This is one of the most cost-effective tools to stop the infringement of rights in Ukraine, as it avoids potentially costly litigation to invalidate the certificate.

 

Please note that after the publication of information on the registration of a trademark, no objections to its registration may be filed. We recommend using such an opportunity as filing an objection to a problematic registration, arguing that it may cause conflicts in the market.

Registration of intellectual property in the Customs Register

The registration of intellectual property in the Customs Register of Ukraine has been widely recognized as an effective tool for preventing the import of goods that infringe the rights of owners of trademarks registered in Ukraine.

 

For many years, we have been supporting the registration of intellectual property rights registered with the Patent Office of Ukraine in the Customs Register of Ukraine, protecting their owners from attempts by third parties to import goods marked with trademarks or protected by design patents used without the permission of the owner of the relevant intellectual property