Industrial property protection

Table of contents

Industrial property objects (inventions, trademarks, know-how and others) are the foundation of a business. Losing them can lead to complete collapse. Responsibility for keeping them safe lies solely with the owner of the rights. Legal mechanisms exist to protect these intangible assets.

Industrial property protection is a set of measures provided by law that guarantees the normal use of technical developments and helps restore violated legal relations. The legal basis for this protection is the Paris Convention for the Protection of Industrial Property.

SION lawyers will develop an effective protection strategy and handle the state registration of rights. After you receive the protection title, they will monitor for infringements and take comprehensive measures to counter them.

We know the legal and practical aspects of resolving such cases, and we have a number of successful cases. Thanks to them, we were included in the top of the leading international ranking Legal 500 EMEA 2021 in Europe and Asia. The advantages of SION:

We represent clients’ interests in Ukraine, Great Britain, and many other countries.
We have worked in the legal services market since 2011.
We have extensive experience in protecting clients’ interests in the field of technical creativity.

Industrial property objects

Industrial property is a type of intellectual property. Some of its objects must go through state registration, after which a protection title is issued: a patent or a certificate. It is valid only in the country of registration.

Such objects include:

trademarks;
inventions;
utility models;
industrial designs;
appellations of origin.

There are also “non-traditional” industrial property objects that do not require state registration of rights. However, the company must create a special security regime for them. These objects include know-how and trade secrets. If all security rules are followed, there are several legal methods to protect such objects. SION lawyers know how to work with them.

Features of protection of industrial property objects

In Ukraine, industrial property protection is based on the Civil Code of Ukraine (CCU), relevant laws and the Paris Convention. The scope of protection under patents for inventions and utility models is determined by their claims. The protection lasts until the document expires: 20 years for an invention, 10 years for a utility model and 10 years for a trademark (with the possibility of renewal).

The following protection methods are used:

Pre-trial. This means negotiating, concluding a license agreement and resolving disputes without a lawsuit. Our lawyer can act as an intermediary (mediator). The lawyer will notify the infringers that they violate other people’s rights, demand that they stop the illegal use and explain the consequences if it continues. As a rule, most infringements stop already at this stage.
Judicial. A lawsuit is filed to resolve the situation. You can demand that the misuse stops, demand payment of compensation, the seizure of items and production equipment, and prosecution.
Administrative. This means an appeal to the customs authorities, the patent office and similar bodies.

The choice of method depends on how serious the violation is and how much the rights holder has lost. The amount of damage also affects the type of liability for the infringer: administrative or criminal.

Special methods of protecting patent rights include (Article 432 of the CCU):

suspension of the customs clearance of goods that infringe rights;
withdrawal from circulation of goods made in violation of rights;
monetary compensation for damages;
publication of information about the violations in the media.

Know-how protection

Know-how is secret, valuable information about production (technical or commercial) that is known to the developer but unknown to third parties. Under Art. 506 of the CCU, know-how as a type of trade secret can be used, transferred (under a non-patent license agreement) and licensed, and the owner can resist its unlawful disclosure. In other countries, production secrets are also protected by law.

The owner is the person who determined that the information is a trade secret. The owner must develop an action plan and put a security regime in place to prevent disclosure: restrict access, agree on a list of people with access, and so on. Information often “leaks” through the company’s own employees. We advise you to adopt an internal investigation procedure for such cases. SION employees prepare internal regulatory documents and will help you do this.

The law sets no term of protection. By default, protection lasts as long as the trade secret remains valid and is kept secret in the company. Know-how owners can count on pre-trial and court protection by the same means as holders of traditional industrial property: an injunction, compensation for damages, destruction of goods made in violation of the rights, and so on.

Legal protection of industrial designs

Industrial designs are solutions for the design or appearance of objects. In Ukraine and some other countries you can obtain a certificate for them, and in other states a patent. The owners of such documents receive exclusive rights to the industrial design, which they can dispose of at their own discretion. These rights also protect against illegal commercial and other use.

Legal protection lasts for the term of the certificate (patent). This is 5 years, with the possibility of several 5-year renewals for a total period of up to 25 years. An industrial design is a technical property. You can protect it by placing the intellectual property object in the customs register (to prevent the import or export of goods that may violate rights), by pre-trial claim work and by going to court. Our lawyers have successful experience of such protection in Ukraine.

Trade secret protection

Trade secrets are confidential information that can be used to increase income. To protect business secrets, you must also introduce a secrecy regime, as for know-how. Protection uses the same methods, pre-trial and judicial. The term of protection is also not limited by law.

When you go to court, you will need to prove:

that a secret exists and has the signs of a secret;
that a secrecy regime is used in the company;
that the owner’s rights were violated (illegal acquisition, use by third parties);
the damage caused and its size.

Our lawyers will help determine the extent of the violation and gather the facts. They will prove that the object is protected under the law. Before we start cooperation, we conclude a non-disclosure agreement. During the work, we use all available legal methods to defend the client’s interests.

Court practice in industrial property protection

In Ukraine, the number of patent rights disputes involving government agencies grows every year. Many of them can be viewed as precedents. Grounds for going to court can be imitation of a well-known trademark, unfair registration, use of a similar domain name, or export without payment of royalties. Court practice confirms that it is possible to restore violated rights, including a ban on the use of someone else’s industrial property, and to recover losses.

In Ukraine, courts consider industrial property disputes in accordance with current legislation. An experienced lawyer of our company will determine the jurisdiction for the specific situation, prepare the claim and represent the client’s interests in court so that the client gets the greatest benefit.

SION specialists have many examples of industrial property protection, and some of them have become landmark cases. For example:

AP-AGDA Group s.r.o., a Czech confectionery manufacturer. At our suggestion, in 2017 it registered the appearance of its cookies (an industrial design). The certificate was placed in the customs registers of Ukraine and EU countries. The client receives royalties on each exported product that may violate its rights. In 2019 we won case 914/1288/18 when one of the exporters refused to pay royalties. The exporter’s goods were recognized as counterfeit and destroyed. The court decision became a precedent for the protection of an industrial design and showed that this mechanism works well in Ukraine.
TM ECONOMCLASS. A lawsuit was filed against its owner for lack of distinctiveness of the mark. In the Appeals Chamber of the Ministry of Economic Development, we achieved recognition of the mark as well-known in Ukraine. We built our defense on this and won the case. Now more than 400 stores operate under the ECONOMCLASS trademark throughout Ukraine.

The cost of industrial property protection services

Our specialists’ work to protect violated rights is paid as follows:

Pre-trial settlement (mediation): UAH 3000-5000 per hour (depending on whether a lawyer, a patent attorney or an advocate is involved).
Preparation of a statement of claim: from UAH 5000 (depends on the complexity of the situation).
Participation in court hearings: from UAH 10,000 for one instance, depending on the complexity of the issue.

In addition, when you file a claim, you must pay a state fee. Its size depends on the amount of damage caused and the number of claims. In almost all cases of industrial property rights violations, the opinion of a forensic expert in the field of intellectual property is mandatory proof. Before you file a claim with the court, the plaintiff pays for the expert’s services. If the claims are satisfied, the cost of the examination is reimbursed.

We list the main and possible additional costs in the calculation that we prepare before we start work on each case. As part of the pre-trial and court protection of industrial property, our lawyers will:

advise on protection issues;
analyze the specific situation and draw up an action plan;
carry out claim work;
represent the client’s interests before the court, law enforcement or administrative authorities;
send a claim to the infringer;
organize and carry out other measures for pre-trial and court protection.

For detailed advice and a cost calculation for our cooperation, please email us: info@sion-ip.com.