Trademark infringement: methods of protection

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Ланткевич Кирило

Lawyer

Ukraine / Dnepropetrovsk region

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Publication date: 12.09.2024

I am studying in the third year of the State University of Economics and Technology.I specialize in contractual, economic and corporate law, in particular, I provide consultations and write articles.

According to Article 492 of the Civil Code of Ukraine, a trademark is any designation or combination of designations that can serve to distinguish the goods (services) of one person from the goods (services) of other persons.It can be:

• A word or phrase.
   
• Letters.
   
• Numbers.
   
• Images (graphic elements).
   
• Color combinations.

A trademark serves as an important tool for identifying and protecting products and services on the market, as well as for creating and maintaining a brand's reputation. It is important that the label is able to clearly identify the origin of the goods or services, allowing consumers to distinguish them from other similar products.

Rights deriving from the trademark certificate

According to Ukrainian legislation, in particular the Civil Code of Ukraine and the Law of Ukraine on the Protection of Rights to Marks for Goods and Services, the rights arising from a trademark certificate have the following main characteristics:

1. The certificate entitles the owner to use the trademark. Use may include various aspects such as branding on goods, packaging, advertising, use in business documentation and the Internet. The certificate also provides other rights defined by law, which may include prohibition of unauthorized use of the mark.
    
2. If the trademark belongs to several persons, their mutual relations in the use of the mark are determined by an agreement between them. In the absence of such an agreement, each owner may use the mark at his discretion, but may not transfer or license it without the consent of other owners.
    
3. Use is considered the application of a mark on a product, packaging, sign, label, patch, tag or other item attached to the product. It includes the offering of goods for sale, its sale, import and export.
    
4. Use of the brand when offering and providing services.
    
5. Use of the brand in business documentation, advertising and on the Internet.
    
6. The certificate gives the owner the exclusive right to prohibit others from using the trademark without his consent, unless otherwise provided by law. This right includes control over how and where the trademark is used.

These provisions are aimed at ensuring the protection of the rights of trademark owners and maintaining order on the market of goods and services.

Effective ways to protect a trademark

Trademark protection is critical to ensuring its use and protection. The main ways of protecting trademark rights in Ukraine include:

• The first and main effective right to a trademark is ensured by its registration in the State Agency for Intellectual Property of Ukraine. Registration provides legal protection and allows the use of the trademark within Ukraine.
   
• Constant monitoring of the market and competitors for infringement of trademark rights helps to detect and respond to cases of illegal use in a timely manner. Conducting regular audits to check the correct use of the trademark.
   
• Sending cease-and-desist letters to infringers who use the trademark without permission. Achieving an agreement through negotiation or mediation to resolve infringement disputes.
   
• Filing a lawsuit in court to protect your rights. Possible lawsuits include: a trademark infringement lawsuit to stop the infringement and collect compensation, a trademark invalidation lawsuit to cancel the registration of an infringing trademark.
   
• Conclusion of license agreements to control the use of the trademark by third parties, which allows for additional protection and control over use. Signing contracts defining the terms of use of the trademark by other persons or companies.
• Trademark protection is a complex process that includes proactive and reactive measures. It is important to understand that trademark protection is not only a legal aspect, but also a business strategy to ensure the successful functioning of the brand in the market.

Compensation for damage as a result of violation of rights

In Ukraine, the legal protection of trademark rights includes the possibility to claim damages in case of violation of these rights. Here's how it works:

1. Cessation of infringement and damages: At the request of the owner of the certificate, the infringement of trademark rights must be terminated. This may include prohibiting further use of the infringing trademark. The violator is obliged to compensate the damage caused. This includes both property (material) and non-property (moral) damage.
    
2. Compensation for property damage: The amount of compensation is determined by the court. The court takes into account the lost profit or income received by the violator as a result of the violation of the rights of the owner of the certificate. This may include actual damages and any income the infringer has received from the misuse of the trademark.
    
3. Compensation for non-pecuniary damage: The amount of compensation for non-pecuniary damage (moral damage) is determined by the court based on the scope of the violation, the fault of the violator and other significant circumstances. The compensation cannot be less than the amount of remuneration that would have been paid for granting permission to use the rights to the trademark. This creates a minimum level of compensation that can be paid for the use of marks that infringes the owner's rights.
    
4. If the violation of the rights of the owner of the certificate occurred unintentionally and without negligence, the amount of compensation is equal to the amount of remuneration that would have been paid for granting permission to use the rights to the trademark.

These mechanisms provide a comprehensive approach to the protection of trademark rights and allow the owner of the certificate to receive fair compensation for infringement of his rights.

Services of a trademark protection lawyer

Trademark protection is an important aspect of running a business, and the services of a lawyer can be very helpful in securing your rights and protecting your brand. Here are the main types of legal services:

Legal services for trademark registration: The lawyer advice provides advice on choosing the best strategy for trademark registration, taking into account the types of marks (words, images, combinations, etc.) and jurisdiction. A lawyer consultation helps to prepare and submit an application for trademark registration to the relevant body (POIP).

 Lawyer services for the protection of trademark rights: The lawyer organizes the monitoring of the use of the trademark in the market to identify possible violations or illegal use. Conducts a legal analysis of the situation and risks of potential violations of trademark rights and provides recommendations on further actions. A lawyer drafts and sends official letters of claim or cease and desist letters (letters with a demand to stop violations) to violators of rights. If necessary, the lawyer initiates a court proceedings or pre-trial dispute resolution procedures to protect trademark rights.

Legal assistance in concluding contracts: Lawyers online draft and review trademark licensing agreements, partnership agreements and other documents related to the use of the brand. A lawyer assists in the management of trademark rights, including licensing, transfer of rights and other aspects of commercial use.