Customs IP Protection

About service

Our lawyers pay special attention to the protection of intellectual property rights at the customs border.

 

Patent trolling remains one of the main challenges for companies that export their products to Ukraine. Import of counterfeits and parallel import are also significant issues for IP rights holders. Therefore, customs protection of intellectual property is one of the main priorities for Mamunya IP.

 

We ensure the rights of the exporters and intellectual property owners through the administrative customs procedures. Our services include, inter alia, preparing applications for recordal of intellectual property objects with the Customs IP Registry, represening the clients during the customs control and customs clearance of goods containing IP objects, as well as during identification and destruction of the counterfeited goods.

Court representation is a separate aspect of IPR protection at the customs border. In our work, we clearly understand the importance of obtaining preliminary injunctions to promptly suppress the import or export of counterfeited goods. In addition, we understand the intricacies of all stages of litigation in the field of customs disputes, which allows our clients to be always confident in the reliable protection of their intellectual property rights at the customs border.

 

Our expertise in this area includes the following:

 

·        Customs recordals and renewals

·        Customs IP disputes

·        Combating counterfeits, grey and black imports

If you control your distribution, you control your image

- Bernard Arnault

A nation that cannot control its borders is not a nation

- Ronald Reagan

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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Oleksii Lukianov

Associate, Attorney-at-law

Oleksii has been practicing litigation since 2010, most of his professional career he worked with top-tier Ukrainian law firms representing large foreign and domestic companies. He has been working in the field of Intellectual Property since 2013.   His primary focus is Intellectual Property (patent, trademark and copyright) and intangible assets litigation, and anti-counterfeiting. Aside from his courtroom practice Oleksii handled complex licensing projects and IP due diligence in various industry sectors (television, pharmaceuticals, IT, communications, etc.). He is admitted to the Bar and is a member of the Ukrainian Bar Association (UBA). His recent highlights include: Representing an international science-centered pharmaceutical company in a litigation case aimed at invalidation of the opponent’s patent for a method of treatment for disseminated sclerosis. Representing one of the biggest NGOs in Ukraine dealing with HIV treatment in a particularly complex patent invalidation litigation. Representing Japanese multinational automotive manufacturer in a large-scale anti-counterfeiting program in Ukraine. Education Kyiv National Economic University named after Vadym Hetman (KNEU), Law, 2010

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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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Dmytro Stefanovych

Associate, Attorney-at-law

Dmytro specializes in IP enforcement and litigation, with a focus on trademarks and domain names. Dmytro regularly represents clients before customs authorities, handles anti-counterfeiting matters and has a considerable experience in trademark prosecution and IP portfolio management. His areas of expertise also include personal data protection, licensing and IP due diligence. Dmytro is a member of the Enforcement Committee of the International Trademark Association (INTA) (2022-2023), WIPO ADR Young (WIPO Arbitration and Mediation Center) and the Ukrainian Bar Association. He is admitted to the Bar. Dmytro was actively involved in a number of landmark projects, such as: Representing a US multinational tech company in several TM non-use cancellation actions and domain name disputes. Providing a full range of anti-counterfeiting services to the largest delicatessen and coffee business in Europe. Representing a worldwide known crop health management platform in a TM invalidation action. Advising fintech company (digital bank) in the court case against the local PTO, arranging TM prosecution and portfolio management. Advising a famous US manufacturer of confectionary on the protection of IP rights at the customs border. Supporting one of the oldest universities in the English-speaking world in the TM pre-grant opposition matters in Ukraine. Managing the large copyright enforcement program for a major group of European and US software producers. Advising the leading Italian pharmaceutical company regarding promotional activity and advertising of pharmaceutical products. Education Taras Shevchenko National University of Kyiv, International Law, 2018

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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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