Media about the Firm
Dmytro Gadomskiy, senior consultant of tax and legal department of Deloitte, stresses: “It becomes clear that there are gaps in Ukrainian legislation which need to be managed. One of these is the ambiguous and divergent definitions of the term ‘royalty’. On the one hand from the perspective of Ukrainian tax legislation and the Civil Code and on the other, internationally agreed Double Taxation Treaties to which Ukraine is a party. Such discrepancies cause difficulties for both domestic business and international investors and can have a very negative impact on IP transactions, requiring businesses to amend their license agreements and to suffer some uncertainty as regards tax treatment.”
Konnov & Sozanovsky attorneys at law are well respected among IP players. Having a large IP offering, 2008 highlights included advising Microsoft on a number of projects on software and related services; assisted Ancor Management (network of recruiting agencies based in CIS) in trademark litigation against registration of similar trademarks in the name of another company; IP due diligence of the film production company Star Media. Juliya Semeniy, partner and head of intellectual property department is a key IP practitioner. The name of managing partner Tatiana Glukhovskaya is well-known in the IP field, as proven by the results of the poll and strong positions of IP individuals ranking.
The recognized IP boutique Doubinsky & Osharova continues to receive excellent references from peers. Among the variety of IP work, recent notable matters are representation of interest of Honda Motor Co. Ltd in a case regarding the cancelation of the trademark “Pilot” in the name of an individual, Mr. Murashov, with the aim of subsequent sale to Honda Motor Co. Ltd; acting for Oleina SA for obtaining a status of well-known trademark in Ukraine. Headed by Michael Doubinsky, the team includes Victoria Sopilnyak, Anton Koval and Yaroslav Ognevyuk.
The Kiev office of Baker & McKenzie continues to represent its international clients in IP related matters in Ukraine. The experience of IP practitioners Ruslan Drobyazko and Yuliya Kolchenko is reflected in its representing Diageo recently in a number of cases related to the illegal import of Diageo products, which involved enforcement actions in major industrial cities in Ukraine; representing Baileys in a non-use trademark action in Ukraine started by a competitor in a related trademark dilution case; acted for L’OREAL with regard to high-profile trademark opposition and prosecution work as well as enforcement work (customs recordals of L’OREAL’s IPR rights with the Ukrainian Customs Service). The team of Yuliya Kolchenko, Oleksiy Stolyarenko, Svitlana Romanova successfully represented Eli Lilly and Company, a global pharmaceuticals company and one of the world’s largest corporations, in the cassation of olanzapine patent appeal case, filed by Egis Pharmaceuticals PLC, a major Hungarian pharmaceuticals company.
DLA Piper Ukraine team provides its clients with services on trademarks and patents filings, licensing, franchising, advertising, data privacy and e-commerce. For a global integrated IT network solutions provider DLA Piper carried out due diligence of a target in Ukraine, with particular emphasis on IP issues, reviewed and advised on the compliance of procedures of creation and transfer of IT software with Ukrainian laws. The team also advised a major Ukrainian chemicals manufacturer and conducted due diligence of its IP portfolio, which included trademarks, industrial property objects, innovation proposals, software, domain names and more. Natalia Pakhomovska, head of the technology, media and commercial practice of the office, is the leading IP expert and was recommended in the poll.
The range of IP practice of Gide Loyrette Nouel is quite broad — trademarks, patents, IP dispute resolution, unfair competition. Activity in 2008 includes advice to European leaders in the hotel industry related to the use of trademarks and software; industrial company of oil extraction industry as to the purchase of the patents for inventions and transfer of related know-how from research institutes in Ukraine and Russia; beverage manufacturers in a dispute resolution a procedure related to unauthorised use of IPR in an advertising campaign; industrial companies and bank institutions with regard to the provisions applicable to transfer of IPR within the framework of M&A transactions. A notable part of IP assistance was delivered to European broadcasting companies and media holdings. Karl Hepp de Sevelinges, Anastasiya Lemysh and Inna Kilovata handled IP related projects in the Kiev office.
Inyurpolis law firm was frequently mentioned during the poll in the IP field. The team of Aleksey Kharitonov, Olena Khitrova and Anton Zinchuk was particularly distinguished in the field. Its recent cases focused on trademark litigation: representation of Interbytchim LLC; CJSC Torgservice in connection with protecting rights on “MASTER +" trademark; handled mediation procedure on Yurincom Inter TM.
In 2008 the number of Internet disputes handled by Vasil Kisil & Partners significantly increased, with apparent growth of the attention of global internet services providers to the Ukrainian Internet market, and fast development of convergence services in Ukraine. Another recent trend is the rising number of patent disputes, especially in biotechnology industries, pharmaceuticals and agrochemicals. Google, Du Pont de Nemours, BASF, Ukrainian Media Holding and Eurosport can be mentioned as clients in 2008. Oleksiy Filatov, partner, and Olexandr Mamunya, senior associate, come recommended for their comprehensive and practical advice and efficient representation of clients in IP matters.
LEXFOR, headed by partner Vladislav Shapoval, focuses on legal protection of copyrights (especially software), trademarks and confidential information. LEXFOR leads anti-piracy and anti-counterfeiting campaigns in Ukraine on behalf of big multinational clients (e.g. Microsoft, Philip Morris) and international associations like Business Software Alliance. As of February 2008 the firm became a legal representative of Business Software Alliance (BSA) — a worldwide association bringing together the largest software manufacturers for protection and enforcement of copyrights.
Law Firm Paritet has carried out extensive work in the advertisement industry, pharmaceuticals, IT and media. Under the leadership of partner Borys Danevych, the team advised EuroStar on transfer of IPR; Ciklum transfer of IPR on software; Pfizer on IPR issues (including patent issues, TMs and copyrights), related to research and development of pharmaceuticals and to medicinal products; Cheil Communications/Cheil Ukraine in the advertising industry and Euro Media LLC on IPR issues in show-biz and TV media, etc.
Jurvneshservice’s scope of IP work is represented by renewal of trademark registrations in Ukraine, adaptation of a franchise agreement to the requirements of Ukrainian law, drafting of a master franchise agreement and some annexes to it, consultations as to registration of a trademark to be used within production and promotion of a product. Separate focus is made on participation in a settlement procedure with a Ukrainian partner, which has submitted application as to trademark registration for its name without any consent of UA Imports. Clients of the firm include Mustang Jeans GmbH, UA Imports LLC, Fast Food Systems, Papa John’s International, Inc, Wakunaga of America Co., Ltd. Anna Tsirat is a broad-based practitioner of Jurvneshservice.
AstapovLawyers handled a resonant litigation as to recognition of the trademark rights of the Arbat Prestige retail chain in favor of Arbat Prestige in Ukraine. Oksana Kneychuk managed the case.
The IP practice in the Kiev office of CMS Cameron McKenna, as headed by Oleksandr Molotai, has developed greatly since the firm’s presence on the Ukrainian legal market, and it represented a Romanian paint manufacturer in a trademark dispute related to a cancellation of its trademark registration in Ukraine and termination of its usage.
Arzinger & Partners has shown strong competence in the IP litigation field and trademarks issues. The team with the top IP practitioner Igor Darmogray, represented CJSC Lysoform (Ukraine) and Lysoform Desinfektion AG (Switzerland) in a dispute with the Research and Production Company Simesta Vaal Ltd; cease and desist action on the infringement on proprietary rights on an internationally registered trademark for goods and services (label affixed onto products); provided legal support in the assignment of exclusive IPR to trademarks owned by Reed Messe Wien GmbH (Austria) with Ukrainian legal entities.
Legal Alliance Company was noted for its work in the field of IP property rights. Being a long-standing operator in pharmaceuticals, the legal team of Illya Kostin, Nataliya Lavrenova and Andriy Gorbatenko was engaged in IP consulting to TAMSOL medicine for Gedeon Richter’s Ukrainian office. The team also advised the Kniazha Vtikha restaurant chain and Oberon Media Entr software.
Pakharenko & Partners is a highly reputable IP boutique, known particularly for its expertise in trademarks and anti-counterfeiting. Antonina Pakharenko-Anderson and Alexander Pakharenko are known in the market as knowledgeable IP experts.
Grischenko & Partners patent and law firm regularly provides legal advice on various IP issues. Maya Lgova is distinguished by peers with regard to in-depth experience of patents.
