Trademarks

About service

A trademark is the main product identifier, the face and symbol of corporate identity of any business, as well as a powerful economic tool. Neglect of timely made registration almost always leads to a number of negative consequences, including unfair registration by a third party, which may entail obstacles to promotion and sale of goods and services, blocking products at customs, long-term litigations, and other times cost-consuming matters. Moreover, using an unregistered designation significantly increases the risk of violation of earlier rights, resulting in complete rebranding, where all previously made investments will be lost.

 

We have significant experience helping businesses throughout the brand's development: from choosing a trademark to a sophisticated strategic framework focusing on protection against copying, imitation, and dilution.

 

Our expertise in this area includes the following:

 

·        Developing a strategy for protection of a new brand

·        Availability searches and legal opinions

·        Monitoring and watch services

·        National and international TM filings and prosecution

·        Pre-grant and post-grant oppositions

·        TM licensing

·        TM assignments and amendments

·        Recognizing TM well-known

·        TM renewals

·        Amicable settlements and coexistence agreements

·        TM enforcement

·        Advising on advertising and antitrust regulations

·        Customs protection and anti-counterfeiting

When consumers purchase a Toyota, they are not simply purchasing a car, truck or van. They are placing their trust in our company

- Akio Toyoda

A brand for a company is like a reputation for a person. You earn reputation by trying to do hard things well

- Jeff Bezos

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​

Read more

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

Read more

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

Read more

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

Read more

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

Read more

Olga Reznytska

Patent and Trademark Manager

Olga specializes in patent and trademark prosecution matters. She provides a full scope of services related to IP portfolio management, including providing advice on registrability, trademark watch, trademark similarity and identity searches, registration of trademarks according to national and international procedures, preparing replies to oppositions and provisional refusals, preparing appeals to the Chamber of Appeals, preparing third-party oppositions. Olga is also experienced in patent prosecution, including drafting and filing the applications, analysis of PTO examiner requests, recommendations regarding the requests, drafting responses to office actions, obtaining letters of patent, managing annuity payments, etc. She is also experienced in copyright registration, drafting trademark and patent assignment agreements, license agreements, and its recording with the local PTO. Olga's recent work includes: Advising betting company on available options for protecting its TMs against unfair competition. The case included collecting evidence, preparing and filing opposition against the conflicting marks. The case is significant because the client’s marks are widely used for gambling services that became legal in Ukraine only recently. Managing an essential number of patent applications of a digital agriculture company, including overcoming complicated Provisional refusals. Consulting the client on the peculiarities of Ukrainian patent legislation related to digital farming. Supporting the successful registration of the TM of a well-known Italian wine manufacturer including advising on overcoming the opposition and provisional refusal, which were based on mistakenly assumed similarity with the marks of another wine manufacturer. It is noteworthy that these parties face the same conflict in other jurisdictions. Education Institute of Intellectual Property of the National University “Odesa Law Academy” (Kyiv), IP Management, 2018 Kyiv Institute for Translators and Interpreters, Kyiv, 2012

Read more

We have chosen the services in which we are striving to be leaders. View the whole list of them by clicking on the button below.

Discover our services

How can we help you?

Get in touch with us or learn more about the firm