Ukraine: Brands Update. August-September 2015

Last Updated: 29 September 2015
Article by Oleksandr Padalka and Oleg Klymchuk

In this issue of Brands Update we consider the decision of the Supreme Court of Ukraine explaining which courts are competent to cancel decisions of antitrust authorities, answer questions regarding a new tool for capturing of IP rights infringements on the Internet that was officially presented by the IntelzakhystState Enterprise(Intelzakhyst), and analyze the changes in the Ukrainian Institute of Intellectual PropertyState Enterprise(UAPTO) practices in part of trademark applications and paid services.

UNFAIR COMPETITION. Is the issue of court jurisdiction over unfair competition disputes finally closed?

Most probably, the Supreme Court of Ukraine (theSCU) has put a culminating full stop in the years-long "competition" between commercial and administrative courts that pertains to challenging the decisions of the Antimonopoly Committee of Ukraine (theAMC) and its local branches.

It bears mentioning that dual jurisdiction over disputes challenging the AMC decisions became an issue when the Code of Administrative Procedure (the CAP) took effect. While commercial courts had jurisdiction over such disputes by virtue of provisions of the Law of Ukraine "On Protection of Economic Competition", the administrative courts were competent to consider them based on the CAP provisions. Actually, the claimant was free to choose between the commercial or administrative court, though administrative and commercial courts of cassation had a race in providing information and/or issuing explanatory letters, each substantiating its jurisdiction over the respective dispute.

The SCU resolved the matter in favor of commercial courts. In the case that put an end to the jurisdiction-related competition, an enterprise (the Claimant) filed a claim with the administrative court for invalidation of decision of the AMC local branch (theRespondent) that held the Claimant liable. Leaving aside the fact that dispute arose because the Claimant was held liable for abuse of the monopoly position, the decision is essential for other competition-related disputes, including unfair competition. Courts of the first, appeal and cassation instances sustained the position of the Claimant and canceled the decision of the Respondent. Opposing the above-mentioned decisions the Respondent filed a claim to the SCU for review of the court decisions and referred to an improper application of substantial and procedural law provisions by the cassation courts.

On the joint session of its commercial and administrative chambers, the SCU granted the claim of the Respondent, revoked the decisions of lower courts and closed the proceedings in the case.

To substantiate its decision, the SCU pointed out that the lower courts qualified the dispute within the context of the public law and, consequently, within the jurisdiction of administrative courts. According to the SCU, such conclusion of the lower courts is not based on а proper application of section 6 of the European Convention on Human Rights. Additionally, section 4 of the CAP stipulates that the jurisdiction of administrative courts extends to all public law disputes other than disputes for which the law prescribed another procedure. Laws of Ukraine may stipulate other procedures to resolve certain categories of public law disputes, including in commercial courts. Specifically, such procedure is prescribed by section 60 of the Law of Ukraine "On Protection of Economic Competition" establishing that the applicant, the respondent or the third party may appeal the decision of the AMC in full or in part to the commercial court. Taking into account the content of the above-mentioned provisions of the Ukrainian laws, the cases on invalidation of AMC decisions are within the jurisdiction of commercial courts and subject to consideration in accordance with the Code of Commercial Procedure of Ukraine.

Notably, successful settlement of the dispute is attributable to adoption of the Law of Ukraine "On Ensuring the Right to Fair Trial" (took effect on 29 March 2015), which changed the list of grounds for review of court decisions by the SCU. Particularly, the ground for review under this law includes, inter alia, different application of the same provisions of procedural law by the cassation courts.

CAPTURING OF INFRINGEMENTS. New opportunities to capture IP rights infringements on the Internet

Intelzakhyst announced a new service enabling to capture the content of web pages as screen shots. According to Intelzakhyst, the new service offers better and more efficient opportunities in combating IP rights infringements on the Internet. The main purpose of the service is to capture the copyright infringements, without limiting its application with respect to other IP rights objects.

Furthermore, within the context of combating IP infringements on the Internet Intelzakhyst announced development of a register of infringers and pirate webs.

In this article we answer key questions of the rights holders regarding this new tool for capturing the infringements.

In which form is an infringement on the Internet captured?

Intelzakhyst captures infringement on the Internet as screenshots using a special software they developed for this purpose. The fact of infringement is documented as an expert opinion (theExpert Opinion). To ensure admissibility of the Expert Opinion as an evidence in the court it is expected that it will be signed by an expert, who is certified as a court expert for "Examination of the telecommunication systems (hardware)". Intelzakhyst further expects to engage court experts of the Research Center of Court Expertise Regarding Intellectual Property Issues under the respective agreements between Intelzakhyst and the said expert institution. If and when so requested by the customer, the screenshot can be provided on a physical data storage media (e.g., CD). Such data carrier may also contain files related to IP objects (e.g., captured audiovisual works the rights to which were infringed).

The Expert Opinion will be signed by representative of Intelzakhyst and executed on its official letterhead.

As a part of capturing the respective webs Intelzakhyst will take the following actions:

  • detailed examination and mandatory check of the web-site source code;
  • examination of the website source code to identify any intrusion, modification or redirecting;
  • examination of data routing;
  • capturing of the contents of the web-site, specifically in text, graphical and other multimedia forms, including WHO-IS service data.

What is the procedure and the fee for obtaining the Expert Opinion?

To obtain the Expert Opinion it is required to file an electronic application via web-site of Intelzakhyst(registration is required) or contact Intelzakhyst directly by phone or email/mail.

The minimum fee for the Expert Opinion is UAH 2,000 (about EUR 80). This fee covers examination of three web-pages on a web-site. Additional fee is charged for examination and capturing of any extra page. Such extra fee is negotiable on a case-by-case basis but is expected to be about UAH 500 (about EUR 20).

How long does it take to obtain the Expert Opinion?

The Expert Opinion is issued within 1 or 2 days and can be sent via courier services.

To which extent may such Expert Opinion be treated as an adequate and admissible evidence in the court?

Intelzakhyst believes that such capturing of the infringement is a sufficient proof of IP infringement on the Internet and can be used in the court.

However, the lawyers are of the opinion that Expert Opinions, like other evidence, will not be predominant for the court and will be evaluated by the court at its own discretion. Also, lawyers and judges have some questions regarding the legal status of the Expert Opinion. Further, the practitioners have concerns that the expert and other persons signing the Expert Opinion do not bear criminal liability for accuracy of the opinion.

Due to the foregoing, the legal status of the Expert Opinion remains unclear. We expect to find the answer to this question in the court practice.

What are objectives of the register of infringers and pirate webs? How can it help in combating for my rights in case of infringements?

Intelzakhyst considers this register to be an additional information resource for the judges for the purposes of combating IP rights infringements. However, the criteria for qualification of web-sites as pirate and a certain person as infringer remain unclear up to date.

IP AREA REGULATION. The list of UAPTO paid services extends

With effect from 30 July 2015, the list of paid services provided by the Ukrainian Institute of Intellectual PropertyState Enterprise(the UAPTO) extended significantly. The respective amendments were made to the UAPTO's Paid Services List.

For example, today the UAPTO offers the following paid services with respect to trademarks:

  • searching for identical or similar signs based on the UAPTO's data base, including international registrations designated for Ukraine, and issuing of the respective report;
  • developing a logo;
  • preparing applications for trademark registration in Ukraine, the Russian Federation, as well as in accordance with the Madrid system;
  • drafting IP contracts;
  • maintaining records with respect to IP contracts.

The UAPTO provides such paid services with respect to other IP objects (e.g., inventions, utility models or designs).

It is worth mentioning that earlier such services were provided by the Ukrainian Innovation Centre, which is currently one of the UAPTO's departments. The extension of the list of paid services offered by the UAPTO is an evidence of consolidation of functions related to provision of services in the IP area to improve their promptness and quality.

TRADEMARKS. Online access to trademark applications register is open!

On 21 August 2015, the State Intellectual Property Service of Ukraine opened an online access to the trademark applications on its web-site.

As expected, details of trademark applications which have successfully passed the formal examination after 20 August 2015 are available. The visitors may run the application search according to the following criteria: i) application number; ii) filing date; iii) applicant; iv) key words, and other.

For more information about access to trademark applications, please see the previous issue of Brands Update.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions