Ukraine’s eagerly awaited specialised IP court, which was due to begin operations in the early months of 2020, has not yet opened its doors. However, with the selection process for judges ongoing, trademark professionals remain hopeful that it will start hearing cases in 2021, ushering in a new era for rights holders operating in the country. Judicial reform is also on the cards – the country’s ongoing attempt to align its regimes with EU directives remains a work in progress, but the atmosphere is cautiously optimistic. As elsewhere, the move online has reached breakneck pace this year and more trademark outfits than ever now boast their own online portfolio management tools, reflecting the increased sophistication of the market.
- Baker McKenzie
- Doubinsky & Osharova
- Pakharenko & Partners
- Arzinger Law Office
- Gorodissky & Partners Law Firm Ltd (Ukraine)
- Mikhailyuk Sorokolat & Partners
- Sayenko Kharenko
- Synergy IP Law Agency
- Vasil Kisil & Partners
- Avellum Partners
- Borovyk & Partners
- DLA Piper
- Jurimex LC
- Marchenko Partners
The IP division at AEQUO is impressively well-rounded, matching a burgeoning prosecution practice with robust enforcement capabilities and setting precedents in IP and unfair competition cases to boot. Recent highlights include its representation of pharmaceutical company Darnista in a high-profile infringement case and of Forbes in a significant termination action. The latter task was tackled in part by Nataliya Dryuk, whose proficiency in patents and trademarks has caught the attention of household names in the pharmaceutical and media spheres. “Nataliya is always prompt in her responses, even when communicating across time zones, and has an understanding not only of legal, but also of business matters.”
Arzinger Law Office
With offices in three locations across Ukraine and two dedicated IP partners on deck, Arzinger stands apart from other full-service national law firms in terms of both resources and specialisation. It has a rare faculty for domain name disputes, but offers a comprehensive brand protection service in which non-traditional marks also feature prominently. One complex portfolio under its care is that of Haribo: in the past year the team developed strategies to overcome provisional refusals, negotiated with holders of opposed marks and registered a sound mark to protect the confectioner’s jingle. Taking the lead on this brief, Kateryna Oliinyk is a “deeply knowledgeable and very systematic IP expert who has become an important figure in the market”. Another standout in the group is the “creative and imaginative” Taras Kyslyy, who has spent 15 years on the frontlines of crucial trademark and domain name disputes. He is also accomplished in alternative forms of dispute resolution, and serves as a legal adviser and arbitrator for the WIPO International Centre for Arbitration and Mediation. “Taras has shown himself to be a professional with excellent skills, who is highly responsive to clients’ needs.”
The 360-degree IP offering of general practice Asters is bolstered by complementary know-how in areas such as unfair competition, tax and white collar crime, ensuring that clients can rely on the firm as a trusted one-stop shop. It has lately been busy registering trademarks for the likes of Ukrainian cosmetics company Biosphere Corporation and hotel operator Millennium & Copthorne, as well acting in an infringement dispute on behalf of confectionery giant Ferrero Group – all overseen by Julia Semeniy. For two decades, Semeniy has been a mover and shaker in the worlds of IP, unfair competition and media law, and a familiar face both in the courts and at the Ukrainian trademark office – as well as before Customs, as part of the firm’s thriving anti-counterfeiting practice.
“Pragmatic, imaginative, efficient and innovative, Avellum’s practitioners have vast experience and apply sound judgement in all cases.” Its trademark division was recently established on the back of an existing IP transactions practice, and has since enjoyed rapid growth under the watchful eye of Anton Polikarpov, who previously worked in-house at Roshen Confectionery Corporation – now a client. He draws on this first-hand industry insight, and on close foreign connections, to superb effect: “Anton is definitely among the most gifted IP specialists in Ukraine. He efficiently maintains cooperation with foreign attorneys, approaches matters strategically and has excellent negotiation skills. Responsive and experienced, he is a personable and reliable contact.” His team now operates across the brand lifecycle and has picked up prestigious clients such as Louis Vuitton, for which it has been acting in a series of oppositions.
Baker McKenzie is one of a handful of international law firms with a foothold in the Ukrainian trademark scene. Its Kyiv office provides a full-bodied service to a range of companies, both domestic and international, seeking robust trademark protection and enforcement in Ukraine and across the Commonwealth of Independent States (CIS). Its potent anti-counterfeiting and domain name capabilities are a further draw for clients, which flock to its doors for effective and innovative enforcement. Another selling point is a sophisticated electronic platform granting patrons real-time access to their global portfolios. On the prosecution side, A-listers which have recently enlisted the group include British American Tobacco and a world-renowned food and beverage company – both of which are in the safe hands of department head Ruslan Drobyazko. A master of IP-driven transactions, anti-counterfeiting and enforcement, Drobyazko has also published extensively on IP and commercial topics, and regularly puts in appearances as a speaker. Supporting him are Oleksiy Stolyarenko and Myroslava Koval-Lavok. In addition to being a registered patent and trademark attorney in Ukraine, the “diligent and responsive” Stolyarenko is qualified to practise law in both Ukraine and New York, and is also a poised litigator. Unflappable project manager Koval-Lovak executes flawlessly across the trademark spectrum and can tease out favourable results in both conflict resolution and transactional settings.
Borovyk & Partners
Borovyk & Partners has a broad compass when it comes to brands, with trademark registration, management and licensing and franchising all handled with equal proficiency. Its attorneys are smooth operators at the Ukrainian trademark office and pass on their insight through training sessions and seminars aimed at helping rights holders to become more trademark savvy. Anchoring the practice are namesakes Petro Borovyk and Bogdan Borovyk, both of whom have distinguished pedigrees – the former as a court expert on intellectual property accredited by the Ministry of Justice of Ukraine; the latter following stints at an international law firm and in-house with Procter & Gamble.
Global titan Dentons has had its flag firmly planted on the Ukrainian trademark landscape for 25 years. The comprehensive menu of services on offer from the Kyiv office resonates with a diverse client base, as reflected in its equally varied output: recent projects have included advising a top international food and beverage company on infringement issues and devising trademark strategy for a global leader in the high-technology space. Taking charge is Oksana Horban, who has proven herself an adroit performer across the contentious/non-contentious divide over more than a decade with the firm.
Having originally set up shop in Ukraine as a trademark filing and IP transactional practice, international firm DLA Piper has since made significant forays into IP litigation and is now an adept all-rounder that brand owners can lean on in any circumstance. On the licensing and transactional front, it recently showcased a flair for the fine print of complex restructuring projects and franchising mandates for major multinationals. “The team’s work is exceptional; every question receives a prompt, clear and easy-to-understand answer, and everything is taken care of with efficiency. The lawyers at DLA are thorough, expedient and provide excellent value.” These superlative reviews are down to the efforts of Natalia Pakhomovska and Natalia Kirichenko, both of whom have a complete command of commercial IP issues. Pakhomovska is an astute portfolio manager with an affinity for the dynamics of the communications and technology sectors; while Kirichenko has an intuitive grasp of advertising and sponsorship issues, thanks to first-hand industry experience.
Doubinsky & Osharova
Doubinsky & Osharova stands tall as one of Ukraine’s leading IP boutiques. With its various departments working seamlessly together to deliver a fulsome service, the firm is well positioned to design meaningful overarching trademark strategies for clients. Over the past 12 months it has represented The Saul Zaentz Company in oppositions aimed at protecting its rights to the Lord of the Rings trilogy and The Hobbit, and defended Toyota’s LEXUS trademark in Ukraine – an assignment deftly handled by head of legal Victoria Sopilnyak, a “great litigator with a creative approach to challenging projects”. The group has also been working McDonald’s under the joint supervision of Anton Koval and Tatyana Shpakovich: Koval successfully proved the well-known status of the fast-food giant’s МАК mark, while Shpakovich overcame provisional refusals for the registration of its MAESTRO BURGER marks. The latter comes in for special praise: “Tatyana performs admirably, is very responsive and makes sure to keep clients up to date with the development of their cases.” Keeping the practice humming are founding partners Michael Doubinsky – the mastermind of myriad fruitful international filing strategies – and Irina Osharova, an IP all-star who was among the first 10 individuals to be certified as Ukrainian patent attorneys almost three decades ago.
The “extremely efficient” Kyiv team of celebrated Russian firm Gorodissky & Partners shines both in Ukraine and across the wider Eastern European market. An essential ally to many marquee multinationals, it acquits itself with distinction through all phases of prosecution, litigation and transactions. In the spotlight is trademark and designs head Maksym Kravchenko, who has previously worked within the Ukrainian government; today, his forte lies in pre-trial settlement and dispute resolution. Pre-filing brand strategy and prosecution are the metiers of colleague Olga Danish : “She is very knowledgeable, responsive and thorough, and provides not only excellent technical legal advice, but the kind of practical advice that is harder to find.”
Commercially savvy and always abreast of evolving industry trends, INTEGRITES truly understands the business of brands. The IP practice has enjoyed significant growth over the past two years, attracting a slew of international instructions, in particular regarding trademark infringement and IP transactions – both key areas of focus. It also has all things Internet on lock: among other innovations, the team has designed and implemented an action algorithm that facilitates the quick and efficient protection of IP rights online. Head of the IP practice Daria Ganzienko is a domain name sage who also brings the heat in trademark and copyright infringement suits before the state courts.
IPStyle takes a carefully calibrated approach to the management and development of intellectual assets, which pays handsome dividends for the clients that avail of its A-to-Z offering. It has become one of the country’s busiest trademark filers and is a go-to for clearing up the fakes which are rife on the Ukrainian market. The first port of call is founder and managing partner Mariya Ortynska, who has a striking hit rate in both enforcement and litigation: “Mariya provides a very professional service, with well-reasoned and objective advice which prioritises the success of her clients’ businesses.” She also takes the time to help teach the next generation, serves on Ukrainian Bar Association and INTA committee, authors legal guides and much more – she works diligently to improve IP life both in Ukraine and internationally.
A fixture on the Ukrainian IP scene since 2003, JURIMEX is a prime pick for trademark registration, litigation and licensing, as well as for assistance in niche areas such as IP-related taxation. The team enjoys rare stability, with new stars usually rising from within, which creates a sense of consistency that clients appreciate. It has lately been undertaking prosecution work for Ukraine’s largest national lottery provider, MSL, and handling a trio of enforcement, registration and licensing mandates on behalf of international tour operator Travel Professional Group – all coordinated by Yuriy Krainiak and Oksana Chaikovska. IP and media group head Krainiak consistently hammers out the wins in trademark, copyright and domain name litigation. With valuable ancillary software and internet know-how, Chaikovska is a “high-quality IP professional whose responses are always timely and substantive”.
The intersection of IP and unfair competition law is a sweet spot for Marchenko Partners, which earns plaudits for its effortless execution on IP litigation, dispute resolution and transactional briefs. Its glittering client roster include household names such as Carlsberg and NEXT, as well as a host of highly recommended international law firms. At the centre of the practice is Oleksandr Aleksyeyenko, a clever problem solver and path clearer for international companies entering the Ukrainian market.
Mikhailyuk Sorokolat & Partners
Established 28 years ago, Mikhailyuk, Sorokolat & Partners has cemented its position as one of the largest and most capable IP players in Ukraine. “It is an impressive one-stop shop which is excellent at advising in relation to multiple jurisdictions in a short turnaround.” Founder and CEO Valentin Mikhailyuk was the country’s first registered patent and trademark attorney and provided vital input on the drafting of the IP laws in the wake of independence. His firm can seamlessly secure protection in the CIS through seven strategically located offices; and across the former Soviet Union territories through a carefully cultivated network of associates. The outfit has filed more than 20,000 trademarks in total across the region and recently launched an online portfolio management service to add further value for clients. The tool was developed in part by managing partner and business development dynamo Vadim Mikhailyuk. Fellow managing partner Anna Mikhailyuk oversees the group’s activities in Russia, significantly enhancing the firm’s profile in the country in the process.
Pakharenko & Partners
A firm with a storied history – it was one of the first of its kind to be established in the independent Ukraine – Pakharenko & Partners consistently ranks among the crème de la crème of the local trademark scene. Despite some reported personnel losses recently, its retains its reputation thanks to the stewardship of namesake Antonina Pakharenko-Anderson. As managing partner, she sets the bar not just for her firm, but for the whole Ukrainian market, as she regularly works on matters that help to shape national IP systems and policies. Colleague Alexander Pakharenko practises across the trademark lifecycle and is a staunch advocate of clients both in the courts and before Customs and law enforcement.
With over 120 people stationed in 16 locations throughout Eastern Europe, PETOŠEVIĆ has all the resources needed to provide a full-bodied trademark service across more than 30 jurisdictions. The regional manager for the Russian-speaking region is Dina Petošević, who established and continues to head up the Ukrainian office. Under her inspiring leadership, it makes light work of all manner of trademark registration, protection and enforcement matters. A familiar face before the courts, Customs and the Anti-monopoly Committee, Yuriy Karlash “takes an engaged approach, and his high-calibre advice is detailed and clear. He handles matters professionally, communicates transparently and is quick to respond”.
Sayenko Kharenko boasts one of the largest IP legal departments in Ukraine and continues to grow thanks to new additions to its team, its client roster and its caseload. Key projects in recent months have included representing PJSC Oschadbank in a trademark suit before the Supreme Court, and handling oppositions and unfair competition cases for the Scotch Whisky Association. The firm has all bases covered for rights holders, with an insider’s understanding of the IT sector in particular; it applies this keen eye for technology to its own service too, developing a dedicated online platform through which brand owners can monitor their portfolios. In the hot seat is head of intellectual property Yaroslav Ognevyuk, whose varied practice encompasses everything from anti-counterfeiting cases to trademark and copyright disputes and unfair competition matters; he also finds time to assist with the drafting and amendment of IP-related legislation in support of the new Higher IP Court of Ukraine. Also recommended, Oleg Klymchuk has the answers to all technology transfer and IP-related M&A questions, especially in a cross-border context. He is also dab hand when it comes to matters at the intersection of trademarks and media and entertainment law.
Synergy IP Law Agency
Since its establishment 14 years ago, the “reliable and experienced” Synergy IP Law Agency has registered countless trademarks for, and robustly defended the interests of, a host of clients for which impermeable brand protection is a top priority. The feedback is uniformly positive: “The service provided by Synergy is constructive, smooth, prompt, accurate and always professional. Its opinions on trademark matters in Ukraine are well informed and show a deep level of knowledge.” Running the show is Viktoriia Ostapchuk, who is admired for her “creative approach to challenging projects” and refined grasp of asset structuring and IP taxation issues. Colleague Anna Kravchuk maintains a broad practice, but is at her best on transactional assignments and internet-related projects.
Vasil Kisil & Partners
Anti-counterfeiting is a stronghold for corporate law firm Vasil Kisil & Partners: it marries a knack for maximising damage recovery from infringers with a real facility for parallel import issues. Unsurprisingly, this specialism is highly prized among blue-chips in the FMCG, pharmaceuticals, gaming and luxury goods industries. Pulling the strings is “sharp-minded strategist” Ilarion Tomarov, who “handles his assignments with care. He often conceives of bold new procedural moves which result from constant research and development. His communication is effective, he is prepared to be flexible based on changing circumstances and he is highly dedicated to every case”. “He is a driving IP specialist with inexhaustible originality and is one of the most widely read authors in the country in the field of intellectual property.”
Other recommended experts
Maxim Koval, managing partner of the eponymous Koval & Partners, dispenses judicious trademark protection advice and presents persuasive arguments in both trademark and copyright disputes. He is hailed by peers as “an excellent partner with his sights set on high-quality service”; the Ukrainian Internet Association counts him among its judges. Redcliffe Partners’ IP head Maria Koval is a trademark all-rounder whose profile has risen through her position as a domain name arbitrator at the WIPO Arbitration and Mediation Center. “Maria’s work in the IP field is outstanding. Her ability to work on complex matters and stay constantly updated on all legal developments in the field is impressive, and she regularly shares her knowledge at international conferences.” Taras Kulbaba, the co-managing partner of Bukovnik & Kulbaba, maintains an expansive practice that stretches across Eastern Europe and the European Union. He is a seasoned manager of international portfolios and a decisive player in anti-counterfeiting and opposition and cancellation scenarios. Based out of LEX INTELS, Natalya Lemeschuk is “an exceptional practitioner in her field, with deep knowledge and expertise”. She conducts error-free prosecution for a host of domestic companies. Having previously led the intellectual property and dispute resolution group at AEQUO, Oleksandr Mamunya is carving out a new identity as head of his own firm Mamunya IP. It has been said that he “raises the standards of services for the whole Ukrainian legal market” and he has played a strong hand in improving legislation in the country. Operating out of Evris Law Firm, Alexander Molotai blends know-how in all aspects of IP and unfair competition law to provide reassuringly comprehensive counsel. Over the course of three decades, Ilyashev & Partners’ Oleksandr Padalka has consistently secured positive results on everything from unfair competition cases to cross-border transactions. Based out of newly-formed Mamunya IP, Ganna Prokhorova is “extremely capable, very responsive and a pleasure to work with”. Her encyclopaedic knowledge of legal issues in the Ukrainian art market resulted in her appointment as one of the first-ever arbitrators at the Court of Arbitration for Art, the international forum for art law disputes.
- Michael I Doubinsky - Doubinsky & Osharova
- Ruslan V Drobyazko - Baker McKenzie
- Oleksandr Mamunya - Mamunya IP
- Yaroslav Ognevyuk - Sayenko Kharenko
- Kateryna Oliinyk - Arzinger Law Office
- Mariya Ortynska - IPStyle
- Irina O Osharova - Doubinsky & Osharova
- Alexander Pakharenko - Pakharenko & Partners
- Antonina Pakharenko-Anderson - Pakharenko & Partners
- Julia N Semeniy - Asters
- Yuriy Krainiak - Jurimex LC
- Taras Kulbaba - Bukovnik & Kulbaba IP Guardians
- Taras Kyslyy - Arzinger Law Office
- Valentin Mikhailyuk - Mikhailyuk Sorokolat & Partners
- Viktoriia Ostapchuk - Synergy IP Law Agency
- Anton Polikarpov - Avellum Partners
- Tatiana Shpakovich - Doubinsky & Osharova
- Victoria Sopilnyak - Doubinsky & Osharova
- Ilarion Tomarov - Vasil Kisil & Partners
- Oleksandr Aleksyeyenko - Marchenko Partners
- Bogdan Borovyk - Borovyk & Partners
- Petro Borovyk - Borovyk & Partners
- Oksana Chaikovska - Jurimex LC
- Olga Danish - Gorodissky & Partners Law Firm Ltd (Ukraine)
- Nataliya Dryuk - AEQUO
- Daria Ganzienko - Integrites
- Oksana Horban - Dentons
- Yuriy Karlash - PETOŠEVIĆ
- Natalia Kirichenko - DLA Piper
- Oleg Klymchuk - Sayenko Kharenko
- Anton Koval - Doubinsky & Osharova
- Maria Koval - Redcliffe Partners
- Maxim Koval - Koval & Partners
- Myroslava Koval-Lavok - Baker McKenzie
- Maksym Kravchenko - Gorodissky & Partners Law Firm Ltd (Ukraine)
- Anna Kravchuk - Synergy IP Law Agency
- Natalya Lemeschuk - LEX INTELS
- Anna Mikhailyuk - Mikhailyuk Sorokolat & Partners
- Vadim Mikhailyuk - Mikhailyuk Sorokolat & Partners
- Alexander Molotai - Evris Law
- Oleksandr B Padalka - Ilyashev & Partners
- Natalia Pakhomovska - DLA Piper
- Dina Petošević - PETOŠEVIĆ
- Ganna Prokhorova - Mamunya IP
- Oleksiy Stolyarenko - Baker McKenzie