Industrial property protection
Objects of industrial property law (inventions, trade marks, know-how, others) are the foundation of the business. Their loss can lead to complete collapse. Responsibility for their safety lies solely with the owner of such rights. Appropriate legal mechanisms have been developed to protect intangible assets.
Defense of industrial property is a set of measures provided for by law, which guarantees the normal use of technical developments and helps to restore violated legal relations. The legislative basis for legal protection is Paris Convention for the protection of industrial property rights.
SION’s lawyers will develop effective advocacy strategies, will deal with the state registration of rights, and after receiving the title of shield, they will take up the tracking of offenses and take comprehensive protection measures to counteract them.
We know the legal and practical aspects for resolving such cases, we have a number of successful cases. Thanks to them, they got into the top of the leading international rating 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 been working 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 kind of intellectual property. Some of its objects must undergo state registration, after which a title of defense is issued – a patent or certificate. It is valid only in the country of registration.
Such objects include:
- trade marks (trade marks);
- utility models;
- industrial designs;
- appellation of origin.
There are also “non-traditional” industrial property objects, which do not require state security of rights. But at the enterprise it is necessary to create a special security regime for them. This includes know-how and trade secrets. Subject to all security rules, there are a number of legal methods to protect such objects. SION lawyers know how to work with them.
Features of protection of industrial property objects
In Ukraine, the defense of industrial property is based on the Civil Code of Ukraine (CCU), relevant laws, and the Paris Convention. The scope of security, according to patents for inventions and utility models, is determined by their formula. Protective period – until the end of the document: 20 years for an invention, 10 – for a utility model; 10 – on TM (with the possibility of extension).
The following protection methods are used:
- Pre-trial. This is an attempt to negotiate, conclude a licensing agreement, resolve disputes without a lawsuit. You can use our lawyer as an intermediary (mediator). He will notify the perpetrators of the violation of other people’s rights, demand to stop illegal use and explain the consequences if it continues. As a rule, already at this stage, most of the offenses are suppressed.
- Judicial. To resolve the situation, a lawsuit is filed. You can demand the cessation of misuse, payment of compensation, the seizure of items and devices for production, prosecution.
- Administrative and legal. This is an appeal to the customs authorities, patent office, etc.
The methods are chosen taking into account the extent to which and for what amount the rights are violated. The amount of damage affects the choice of liability for the offender – under the administrative or criminal code.
Among the special methods of protecting patent rights (Article 432 of the CCU):
- suspension of the passage of goods across the border, which go with violations;
- withdrawal from circulation of goods created with violations;
- monetary compensation for damages;
- printing of information on violations in the media.
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Knowhow – secret, valuable information about production (technical, commercial), known to the developer, but unknown to third parties. According to Art. 506 CCU know-how as a type of trade secret can be used, transferred (under a non-patent license agreement), allowed to use, and resisted unlawful disclosure. In other countries, production secrets are also protected by law.
The owner is the one who determined that the information is a trade secret. He must develop an action plan and implement a security regime for non-disclosure: restrict access, agree on a list of persons with access, etc. Often information “leaks” because of the employees of the company. We advise you to make a provision on internal investigation for such cases. SION employees are engaged in the preparation of internal regulatory documents, they will help to do this.
The term of protection is not stipulated by law. By default, this is the period while the trade secret is valid and valid in the enterprise. Owners of the know-how rights can count on pre-trial and judicial advocacy by the same means as the holders of traditional industrial property. This is an injunction, compensation for damages, destruction of goods manufactured in violation, etc.
Legal protection of industrial designs
Promos – solutions for the design or appearance of objects. In Ukraine and some countries it is possible to issue a certificate for them, in other states – patents. The owners of such documents receive exclusive rights to the industrial design, which they can dispose of at their own discretion. Among other things, to protect against illegal commercial and other uses.
Legal defense is provided for the duration 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, which can be protected by placing objects of intellectual property rights in the customs register (in order to prevent the import / export of goods with possible violation of rights), pre-trial claim work and going to court. Our lawyers have a successful experience of such shields in Ukraine.
Trade secret protection
Trade secrets are confidential information that can be used to increase income. To protect business secrets, it is also necessary to introduce a secrecy regime, as for know-how. Defense is carried out by the same methods, pre-trial and judicial. The term of security is also not limited by laws.
When going to court, you will need to prove:
- the presence of a secret, its signs;
- the use of the secrecy regime at the enterprise;
- violation of the owner’s rights (illegal acquisition, use by third parties);
- damages caused, their size.
Our lawyers will help determine the extent of the violation and gather the facts. They will prove that the object is protected from the point of view of law. Before starting cooperation, we will conclude a non-disclosure agreement. In the course of work, we will use all possible legal methods to defend the interests of the client.
Judicial practice for the protection of industrial property
In Ukraine, every year the number of disputes on the defense of patent rights with the involvement of government agencies is growing. Many of these can be viewed as precedents. The grounds for going to court can be imitation of a well-known TM, unfair registration, use of a similar domain name, export without payment of royalties. Judicial practice confirms that it is possible to achieve restoration of violated rights, including a ban on the use of someone else’s industrial property, and to compensate for losses.
Disputes over industrial property are considered in Ukraine by courts in accordance with the current legislation. At the same time, the jurisdiction will be determined by an experienced lawyer of our company, taking into account the specific situation, will prepare an appropriate claim and represent the interests of the client in court with the greatest benefits for the customer of the service.
The SION specialists have a lot of examples related to the advocacy of industrial property. Some of them have become indicative. For example:
- AP-AGDA Group s.r.o., Czech confectionery manufacturer. At our suggestion, in 2017 I registered the appearance of cookies (industrial design). The received certificate was placed in the customs registers of Ukraine and EU countries. The client receives royalties on each exported product that may violate his rights. We won 914/1288/18 in 2019 when one of the exporters refused to pay royalties. His goods were recognized as counterfeit and destroyed. The court decision became a precedent for the protection of an industrial design being a mechanism that works perfectly in Ukraine.
- TM ECONOMCLASS. A lawsuit was filed against its owner for the 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 TM throughout Ukraine.
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The cost of services for the protection of industrial property
The participation of our specialists in actions to protect violated rights implies the following payment:
- Pre-trial settlement (mediation) – UAH 3000-5000 / hour (depending on the involvement of a lawyer, patent attorney or attorney).
- Preparation of a statement of claim – from 5000 UAH. (depends on the complexity of the situation).
- Participation in court hearings – from UAH 10,000. for one instance, taking into account the complexity of the issue.
In addition, when filing a claim, you will need to pay a state fee. Its size will depend on the amount of damage caused and the number of claims. Practically in all cases related to the violation of industrial property rights, an opinion of a forensic expert in the field of intellectual property is a mandatory proof. Before filing a claim with the court, the costs of paying for the services of an expert will be borne by the plaintiff. However, if the claims are satisfied, the cost of the examination is reimbursed.
We indicate the main and possible additional costs in the calculation, which we draw up before starting work on each case. As part of the pre-trial and judicial defense of industrial property, our lawyers will provide the following services:
- advise on protection issues;
- analyze a specific situation, draw up an action plan;
- carry out claim work;
- represent the interests of the client before the court, law enforcement or administrative authorities;
- make a claim to the offender;
- organize and conduct other activities for pre-trial and judicial advocacy.
For detailing consultation and to calculate the cost of cooperation, please mail us: email@example.com