Assignments, Licensing, Franchising

About service

Though immaterial, intellectual property is still a property that a company or a person may assign to commercialize the works of the mind. For that, various kinds of agreements and deals are conducted every day.

 

Our professionals have profound experience in drafting, negotiating and supporting any kind of intellectual property rights assignments, keeping our clients' interests as a top priority.

 

Our expertise in this area includes the following:

 

·        Drafting assignment agreements, licensing deals and franchising contracts

·        Negotiating with a counterparty

·        Assessing risks related to IP transactions

·        Communicating with state authorities, recording IP assignments with the state registries

·        Developing franchising strategies

·        Pre-court negotiations re breaches of IP deals

·        Handling IP agreement-related litigation

Exceed your customer's expectations. If you do, they'll come back over and over. Give them what they want - and a little more

- Sam Walton

If you have an apple and I have an apple and we exchange these apples then you and I will still each have one apple. But if you have an idea and I have an idea and we exchange these ideas, then each of us will have two ideas

- George Bernard Shaw

Key contacts

Oleksandr Mamunya

Founding Partner

Oleksandr Mamunya is an Attorney-at-law and a Patent and Trademark Attorney. Since 2003 Oleksandr has been practicing in the area of Intellectual Property, including patents, trademarks, trade names, designs, copyright, and related rights, domain names, as well as IP enforcement, litigation and anti-counterfeiting. His experience covers litigation and out-of-court dispute resolution, including patents, trademarks, and trade names for major Ukrainian and international companies. In addition, he handles complicated trademark and patent prosecution matters and works on complex IP assignments and licensing deals, and manages big clients’ IP portfolios. Oleksandr works in close cooperation with the Ukrainian PTO and is involved in projects to improve mechanisms of intellectual property rights protection, and in elaborating and implementing IP reform in Ukraine. Oleksandr is a member and active participant of the International Association for the Protection of Intellectual Property ( AIPPI ) (since 2012), International Trademark Association ( INTA ) (since 2008) (member of the Anticounterfeiting Committee (2022-2023), the Parallel Imports Committee (2017-2021), and the leader of the Case Law Development Working Group (2021), Ukrainian Bar Association ( UBA ) (Chair of IP Committee (since 2017), National Association of Patent Attorneys of Ukraine (admitted to practice as Patent and Trademark Attorney since 2010), European Business Association (since 2012) (Сouncillor of the Agrochemical Committee and Consumer Electronics Committee), Kyiv City Bar Association (admitted to Bar since 2005). Education Ukrainian School for Political Studies, 2016 State Institute of Intellectual Property, 2009 World Intellectual Property Organization (WIPO) Academy, 2005 Taras Shevchenko National University of Kyiv, Law, 2004​

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Ganna Prokhorova

Counsel, Attorney-at-law

Ganna Prokhorova is an attorney-at-law, mediator, and arbitrator focused on Intellectual Property, and particularly trademarks, copyright and design, unfair competition, and art law. Since 2005 she has been advising well-known domestic and international companies on the protection of intangible assets through a combination of monitoring and filing strategies, negotiating and drafting IP assignments, licensing and franchising agreements, as well as judicial and out-of-court defense against infringement and dilution. Ganna has a profound experience in IP court cases and domain name disputes representing famous international brand owners. She is also regularly engaged in combating counterfeits and protecting plant varieties in Ukraine. Ganna is a WIPO Domain Name Panelist under the UDRP and UA-DRP at WIPO (Geneva, Switzerland), and a URS Examiner at MFSD (Milan, Italy). Ganna is an arbitrator at the Court of Arbitration for Art (CAfA) (Hague, the Netherlands). In addition, she has for a long time been in the leadership of several international and domestic organizations and associations, such as the International Trademark Association ( INTA ) (2015-2021) (member of the Copyright Committee and the Leader of “Works Made for Hire: Review of Legislation and Practice” Task Force covering 60+ countries, 2020-2023, member of the Bulletin Committee – Features, 2018-2019, member of the Anticounterfeiting Committee, 2016-2017), the European Community Trade Mark Association ( ECTA ) (member of the Anti-Counterfeiting Committee, 2019-2022), the Pharmaceutical Trade Marks Group (member since 2016), the Ukrainian National Bar Association ( UNBA ) (member of the IP Committee Board since 2019), the Ukrainian Bar Association ( UBA ) (member since 2006). Ganna is passionate about IP. Her emphatic, dynamic and flexible approach to handling matters, together with the ability to manage and foresee different issues in advance, and the solid network of relations with IP professionals worldwide, are the values appreciated by clients. Education Sotheby’s Institute of Art, 2018 State Institute of Intellectual Property, IP Law, 2016 The Hague Academy of International Law, 2015 World Intellectual Property Organization (WIPO) Academy, 2007 Kyiv National Economic University named after Vadym Hetman (KNEU), Commercial Law, 2006

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Anastasia Mindrul

Patent and Trademark Attorney

Anastasia is a registered Patent and Trademark Attorney of Ukraine working in IP since 2004. She primarily focuses on legal strategies for protecting and enforcing IP rights, patent and trademark prosecution, pre-trial counselling, copyright enforcement, geographical indications, trade names, industrial designs, and representing clients before the Chamber of Appeals of the UA PTO. Anastasia provides a diverse range of services at every stage of the IP life cycle, from pre-filing consulting (preparatory work) to post-grant oppositions, further assignment, and licensing. Anastasia is the author of many academic articles regarding IP and is the co-author of several monographs on the protection and enforcement of IP rights. Moreover, she participated in a number of working groups to develop, improve, and enforce intellectual property legislation in Ukraine. Her recent matters: Advising one of the world fastest-growing direct selling companies on possible strategies against its key trademark infringement by the third party who attempted to register a similar mark in Ukraine for the goods related to non-medicated cosmetics and pharmaceutical preparations. The case included collection of evidence, preparing and filing an opposition against the conflicting mark. Advising a global health information technology and clinical research on available strategies for protecting against unfair competition, the case included collecting evidence, preparing and filing an opposition against the conflicting mark. Supporting a well-known US multi-level marketing (MLM) company that sells health, beauty, and homecare products in the complicated trademark prosecution matter. The project included not only drafting a reply to the Provisional refusal but negotiating with the owner of the opposing mark the terms and conditions of a possible co-existence agreement, drafting and filing the latter with the UA PTO. Assisting in the assignment of several patent applications and registrations to the global digital agricultural company, advising on the peculiarities of the applicable Ukrainian law. Education State Institute of Intellectual Property, 2005 Kyiv National Economic University named after Vadym Hetman (KNEU), Law, 2003

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Ilona Boliubash

Associate, Attorney-at-law

Ilona Boliubash specializes in Intellectual Property litigation with a focus on patents and trademarks, as well as advises clients on copyright, collective management of copyright and plant varieties protection. Ilona’s expertise also includes domain name disputes under the UA-DRP, GDPR compliance, data protection as well as defamation cases. Her primary focus industries are pharmaceuticals, IT and TMT. Ilona has a profound experience in complex trademark protection projects, including multiple court disputes regarding series of trademarks of one of the biggest Ukrainian pharmaceutical producers (e.g., invalidation of the UA PTO Appeal Chamber decision) and a successful infringement case for a famous British engine manufacturer. Ilona actively participates in developing her alma mater's moot court society. She is a member of the Unfair Competition Committee of the International Trademark Association (INTA) (2022-2023), WIPO ADR Young (WIPO Arbitration and Mediation Center) and the Ukrainian Bar Association (UBA). Ilona is admitted to the Bar. Ilona Boliubash took an active part in a variety of complex projects in IP and, inter alia, in the following: A number of court disputes over the trademarks used as key trade names for the most popular medicinal products of one of the biggest Ukrainian pharmaceutical companies. The disputes included invalidation of the UA PTO Appeal Chamber decision re the competitor's TM, numerous trademark and patent invalidation cases against unfair market players, including the invalidation based on generic nature of the trademark. Collecting evidence, drafting and filing the request, and subsequent recognition of several trademarks as well-known by the UA PTO Appeal Chamber. Successful trademark infringement case for a famous British engine manufacturer which resulted in taking down the client's trademarks from the infringer's website. Ceasing the illegal use of the world-renowned client’s trademarks in the domain names under the UA-DPR proceedings. Representing the top multinational tech company in several litigation matters where early termination of the client’s TMs and invalidation of the Appeal Chamber decision on recognition of the well-known status of the TM is claimed. Representing major innovative European lifescience company in a number of patent litigation matters, including patent infringement, patent invalidation and preliminary injunction matters. Representing the world-known FMCG company before the Ukrainian customs authorities in the course of trademarks recordals in the IP objects registry, and fighting potentially counterfeiting activities. Education Taras Shevchenko National University of Kyiv, Law, 2019 World Intellectual Property Organization (WIPO) Academy, 2019

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Maksym Trykur

Associate

Maksym specializes in Intellectual Property advice and litigation. He also has a considerable experience in dealing with both domestic and foreign innovative businesses. Maksym has a particular focus on cybersecurity and data protection projects, as well as regularly assisting tech companies with regard to regulatory requirements, IP due diligence, and licensing. He is a recognized sector specialist, and was highlighted in the Legal 500 (2020) guide, which noted that “ Maksym Trykur is a strategic thinker, always keeping in mind the often complex and interconnected business goals of all our projects.” His recent matters include: Advising a group of logistics companies on establishing an international resource sharing platform on the blockchain. Supporting a global tech giant in ensuring compliance with cybersecurity and cloud computing regulations. Representing a leading global Internet company in IP-related and defamation disputes. Advising one of the world's leading automotive brands on issues relating to driverless technology. Advising an international geospatial intelligence company on classified information protection. Education The University of California at Berkeley School of Law (USA), 2016 Institute of Intellectual Property of the National University “Odesa Law Academy” (Kyiv), Innovation Management, 2016 Taras Shevchenko National University of Kyiv, Law, 2014

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