Ukraine

In September 2017 President Petro Poroshenko signed a decree to establish the long-awaited new High Court for Intellectual Property, which will house 21 judges. It will act as a court of first instance for IP disputes and its decisions will be reviewed by the Supreme Court of Ukraine. Practitioners are eager to see what this will mean for costs and efficiency levels and whether the court will be able to deliver greater uniformity in decisions. There certainly seems to be increasing awareness among local brand owners of the need to protect their trademarks and thus the necessity for a streamlined enforcement system.

Firms

1
AEQUO
Baker McKenzie
Doubinsky & Osharova
Pakharenko & Partners
2
Arzinger Law Office
Asters
Egorov Puginsky Afanasiev & Partners
Gorodissky & Partners (Ukraine)
IPStyle
Mikhailyuk Sorokolat & Partners
PETOŠEVIĆ
Synergy IP Law Agency
3
Borovyk & Partners
Jurimex LC
Sayenko Kharenko
AEQUO
“For IP matters AEQUO is the best choice around. Its practitioners have outstanding trademark law knowledge and provide brilliant, uniquely tailored support.” The firm provides commercially on-point portfolio management support, while it has also been notably busy on the contentious side. One particular highlight was its representation of international chemical products manufacturer DuPont concerning the infringement of its DUPONT, CORAGEN and TITUS marks – a complex matter that required intimate knowledge of criminal law. Leading the charge on this was Oleksandr Mamunya, a hard-hitting enforcement expert whose eloquent pleadings are impossible to ignore. “He knows everything there is to know about the workings of the Ukrainian legal system, which is extremely valuable for foreign clients who aren’t familiar with it. On top of that, he is always available and turns things around very fast.” Deft in alternative dispute resolution, Mamunya recently steered Forbes Media through a tricky, much-publicised arbitration proceeding against United Media Holding concerning the termination of a licence agreement.
Arzinger Law Office
Business law firm Arzinger has the wherewithal and experience to provide comprehensive support to clients at every stage of a brand’s lifecycle. Its lawyers file with finesse, search far and wide for exciting new ways to commercialise rights and let nothing ruffle their composure in the courtroom. Recent highlights include counselling Haribo on a string of portfolio management issues and assisting Grand River Enterprises on a complex non-use cancellation proceeding against Philip Morris. The “stand-out” lawyer Kateryna Oliinyk was involved in both matters. Not one to delegate work unnecessarily, she leads the IP practice by example, conducting regular face-to-face meetings with every client and working all hours to ensure deadlines are met. Her teammate Lana Sinichkina burns brightest in pharmaceutical matters; a shrewd strategist, she assesses the pros and cons of any action before issuing advice and never loses sight of her clients’ overall business objectives.
Asters
The exclusive Ukrainian member of the World Services Group, Asters has a bulging address book with plenty of international contacts. This has made it a prime choice for multinationals with sprawling portfolios and ambitious local entities looking to expand their operations abroad; Biosphere, Car-Freshner and Ferrero are three notable patrons. Julia Semeniy is the team’s most renowned member. She is a “real warrior” in the courtroom but also excels in prosecution and portfolio management. Lessons learnt defending trademarks against infringers have sharpened her drafting skills: her applications withstand scrutiny.
Baker McKenzie
“There are no limits to what Baker McKenzie can do. The firm has outstanding IP lawyers who flourish in both filing and enforcement.” With a state-of-the-art online platform that gives clients real-time access to their global trademark portfolios and a monitoring system that covers customs procedures in 55 countries, matters are handled seamlessly and no one is ever left out of the loop. Recently the team has been flexing its muscle on the anti-counterfeiting side, providing extensive support for Columbia Sportswear. Handling this is group head Ruslan Drobyazko; clients can sleep soundly in the knowledge that he will come to every courtroom proceeding rigorously prepared. “He’s not only a sophisticated trademark practitioner – he’s also very personable and someone who maintains close contact with colleagues in the firm’s other offices.”
Borovyk & Partners
Conscious of how high the stakes can be for brand owners, Borovyk & Partners’ diligent, dedicated lawyers “go over and above. Rather than simply giving legal advice and answering questions, they consider clients’ overall business strategies and proactively suggest ways of realising them”. One notable beneficiary of this exemplary service is Beiersdorf, for whom the team is creating innovative ways to plug the flow of counterfeit goods into Ukraine. With his strong links to the customs authorities, Bogdan Borovyk is well equipped for the task; an enforcement ace, he can pick up the scent of an infringer from miles away. His streetwise teammate Petro Borovyk started his IP career at the Ukrainian Patent Office and continues to benefit from what he learned there. Getting tricky applications filed and piloting businesses through opposition and cancellation proceedings is bread and butter for him.
Doubinsky & Osharova
Few firms can equal Doubinsky & Osharova’s riches in the IP field. The firm has five ranked individuals in the WTR 1000 for 2018 – a striking three of whom occupy the gold tier. With such an armoury it is no surprise that the firm can maintain the sizeable workload it has garnered. “Clients benefit greatly from the amount of experience there; its lawyers have a feel for when costs could be saved, for example by combining actions or not registering a mark. They make reliable partners in difficult situations.” Michael Doubinsky has seen nearly everything there is to see in intellectual property, but his passion remains unwavering, as does his desire to leave new imprints on the country’s case law. “He’s a patriarch of trademark law in Ukraine and a man of absolute gravitas.” Another “indisputably strong” figure is his co-founder Irina Osharova. She manages portfolios with aplomb and has a knack for sewing up favourable licensing contracts. Tatiana Shpakovich is a substantial presence at the negotiating table too; she is a logical tactician who can find her way out of the most sinuous legal maze. Yaroslav Ognevyuk has been busy defending the State Savings Bank of Ukraine on an infringement action initiated by Sberbank regarding the early termination of a trademark. He frequently exchanges insights with fellow litigation whiz Victoria Sopilnyak, who continues to turn heads in the courtroom with deft footwork, strong powers of recall and impeccable lines of reasoning.
Egorov Puginsky Afanasiev & Partners
With bases in Russia and Belarus and associate offices in the United Kingdom and the United States, Egorov Puginsky Afanasiev & Partners would make a fine fit for any ambitious local brand owner or multinational looking to break into the Ukrainian market. Excellent commercial knowledge – deriving from comprehensive corporate/M&A and tax practices – only sweetens the deal. The resolutely pragmatic Taras Kyslyy is presently advising Viacom and Paramount Pictures on the enforcement of their trademarks and masterminding complex border measures to thwart fakers. As one peer acknowledges: “He is very highly regarded in the IP scene.”
Gorodissky & Partners (Ukraine)
With 12 offices across Ukraine and Russia and an army of highly qualified IP practitioners, Gorodissky & Partners has the resources to provide steadfast branding support throughout the Commonwealth of Independent States (CIS). Whatever the issue – contentious or non-contentious – a creative, commercially sound solution will be found in no time at all. Filing is a real strong suit; the Kiev team has put in over 6,000 applications since 2000, and managing partner Nina Moshynska oversaw a significant number of them. She knows the registration process minutely and retains a laser focus on business goals; her risk assessments are spot on.
IPStyle
The 2007-established IPStyle has been blazing a trail in Ukrainian intellectual property with activity such as assisting Roshen – the leading manufacturer of confectionery products in the country – on a multitude of contentious and non-contentious issues. Hallmarks of the firm’s service are creativity, cost effectiveness and a uniquely personal touch; its clients know that someone has their back, whatever the circumstances. Captaining the practice, Mariya Ortynska is a household name on the market and a magnet for brand owners. “She contributes a lot to the development of the IP community and works very hard for her clients.”
Jurimex LC
Business law firm Jurimex serves up sagacious trademark counsel that consistently hits the target. Its steadfast IP lawyers go the extra mile to meet clients’ needs, proactively conducting research into their markets and industries to provide commercially relevant advice. Managing partner Yuriy Krainiak exemplifies this. “He gets how to interact with clients and has a deep understanding of business reality. Thanks to extraordinary tactical skills and profound experience, he grasps the most perplexing issues and comes up with excellent solutions.” Recently, Krainiak has been helping international tour operator Travel Professional Group to register a series of new trademarks, while simultaneously defending its existing rights.
Mikhailyuk Sorokolat & Partners
With its thriving Kharkov office complemented by robust camps in Russia, Kazakhstan, Georgia, Belarus, Uzbekistan and now Moldova, Mikhailyuk Sorokolat & Partners furnishes clients with umbrella coverage across the CIS. Over the last 25 years this industrious firm has obtained more than 18,000 trademark certificates worldwide and sewn up ample licensing contracts. Its worldly wise founder Valentin Mikhailyuk was the first person to obtain a patent and trademark attorney licence in Ukraine after the collapse of the Soviet Union; simply put, his knowledge is comprehensive. Vadim Mikhailyuk is not wet behind the ears either; always busy, he manages portfolios sedulously.
Pakharenko & Partners
“Pakharenko & Partners is one of the most respected IP firms in Ukraine – a real market leader.” Rigged out to support clients on the full spectrum of trademark matters from filing through portfolio management to enforcement, the firm is truly an ally for all seasons. Alexander Pakharenko and Antonina Pakharenko-Anderson form the heart of the practice. When it comes to combating infringers, nobody equals Pakharenko; he has masterminded countless seizures and has close ties with the customs authorities. Pakharenko-Anderson, meanwhile, is a “phenomenal” professional with “deep knowledge and vast experience” accrued over the course of a glittering career.
PETOŠEVIĆ
PETOŠEVIĆ’s 15 offices across Central and Eastern Europe make it an obvious choice for brand owners looking to file a significant trademark internationally – or facing the prospect of a cross-border infringement battle. The firm gives each client one account manager for all jurisdictions and always thinks globally. CIS regional manager Dina Petošević lets nothing faze her; quick witted, she adapts her strategies cleverly to changing circumstances and delivers impeccable arguments in court. Able support is provided by Taras Kulbaba and Elena Zubenko. The whip-smart Kulbaba is a strategic whiz who manages portfolios artfully. Completely at home in the online world, Zubenko dazzles in internet and social media matters.
Sayenko Kharenko
Blending exemplary technical knowledge with striking business nous, Sayenko Kharenko continues to entice brand owners of all shapes and sizes. While it offers a whopping IP menu, the firm is best known for its creative, cost-effective assistance on transactional matters; getting a signature on the bottom line is no problem for these perceptive lawyers. Oleksandr Padalka shepherds clients through difficult negotiations time and again; he complements his robust trademark practice with distinguished knowledge of unfair competition law.
Synergy IP Law Agency
Synergy IP is a “creative, professional and very experienced firm” with a slew of loyal fans both at home and abroad. Notable threads from its current workload include representing the Federation of Employers of Ukraine in a significant prosecution issue and assisting Freehost in a domain name dispute. Pragmatic to the last, managing partner Viktoriia Ostapchuk is always “willing to explore unique ways of getting to the solution of a problem. She has the ability to take abstract principles and ideas and put them into concrete action”. Issues concerning asset structuring and the taxation of IP transactions are a forte. Dispensing an A-to-Z suite of services, Vasil Kisil & Partners is a one-stop shop for clients’ IP needs. Its lawyers map out portfolio management strategies masterfully and act swiftly when infringement trouble looms. On top of that, the firm has cracked the code for premium customer service, maximising face time and never losing sight of what really matters to clients: commercial gains.

Individuals

Michael I Doubinsky - Doubinsky & Osharova
Ruslan V Drobyazko - Baker McKenzie
Oleksandr Mamunya - AEQUO
Yaroslav Ognevyuk - Doubinsky & Osharova
Irina O Osharova - Doubinsky & Osharova
Alexander Pakharenko - Pakharenko & Partners
Antonina Pakharenko-Anderson - Pakharenko & Partners
Yuriy Krainiak - Jurimex LC
Taras Kyslyy - Egorov Puginsky Afanasiev & Partners
Valentin Mikhailyuk - Mikhailyuk Sorokolat & Partners
Nina Moshynska - Gorodissky & Partners (Ukraine)
Kateryna Oliinyk - Arzinger Law Office
Mariya Ortynska - IPStyle
Julia N Semeniy - Asters
Tatiana Shpakovich - Doubinsky & Osharova
Lana Sinichkina - Arzinger Law Office
Victoria Sopilnyak - Doubinsky & Osharova
Oleksandr Aleksyeyenko - Marchenko Danevych
Bogdan Borovyk - Borovyk & Partners
Petro Borovyk - Borovyk & Partners
Oksana Horban - Dentons
Mikhail I Ilyashev - Ilyashev & Partners
Natalia Kirichenko - DLA Piper Ukraine LLC
Maxim Koval - Koval & Partners
Taras Kulbaba - PETOŠEVIĆ
Vadim Mikhailyuk - Mikhailyuk Sorokolat & Partners
Viktoriia Ostapchuk - Synergy IP Law Agency
Oleksandr B Padalka - Sayenko Kharenko
Natalia Pakhomovska - DLA Piper Ukraine LLC
Dina Petošević - PETOŠEVIĆ
Olena Vardamatska - Wolf Theiss
Elena Zubenko - PETOŠEVIĆ
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Issue 72