Research experts noted that:

• Pakharenko & Partners is a disputes-focused intellectual property law boutique acting on a broad range of patent and trade mark infringement cases. The team frequently represents prominent multinationals and offers multi-jurisdictional filings of trade marks that also include Ukraine. The law firm also assists with obtaining patents for inventions and consults on anti-counterfeiting.
• Eminent practitioner Antonina Pakharenko-Anderson acts on patent and trade mark litigation and prosecution.
• Alexander Pakharenko is a patent and trade mark attorney, particularly recognised for his extensive experience in anti-counterfeiting matters. He is adept in trade mark infringement cases.

The entire team of Pakharenko and partners is grateful for the long-term recognition of Chambers and Partners and is ready to make every effort to continue to work professionally for the benefit of our clients in wartime conditions.

https://chambers.com/department/pakharenko-partners-intellectual-property-europe-7:34:221:1:111329

WTR 1000 – the World’s Leading Trademark Professionals – a unique guide that identifies the top trademark professionals in key jurisdictions around the globe. The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive ‘go-to’ resource for those seeking world-class legal trademark expertise.

A specialized event titled “Ukrainians against Counterfeiting” was dedicated to the World Anti-Counterfeiting Day within the Ukrainian awareness-raising campaign “Anti-Counterfeiting and Anti-Piracy Days in Ukraine”.

The event aimed at bringing together the efforts of state customs, law enforcement agencies and all interested parties to combat counterfeiting. At the end of the event, as the outcome of the meeting, a resolution was adopted by the event participants recommending creating a specialized platform (center) in Ukraine, similar to the European Observatory on Infringements of Intellectual Property Rights. The participants of the event suggested the following name for the center: “Monitoring Center on Infringements of Intellectual Property Rights” (IPR Monitoring Center).

The IPR Monitoring Center to be created on the basis of the IP Office should involve a wide range of stakeholders with their experience, technical skills and knowledge in the area of IPR protection that could be used for the development and improvement of the IPR protection system.

The IPR Monitoring Center should become the main source of:

• information allowing state authorities to develop effective policies for the protection of IP rights and support innovation and creativity;
• analytical data, tools and specialized information databases to support the fight against infringement of IP rights;
• knowledge and training programs for the IPR protection and enforcement system, law enforcement agencies, companies and practitioners in the field of IP;
• support and development tools for the initiatives aimed at supporting innovators, creators and enterprises (especially SMEs) in protection and enforcement of their IP rights and organization of all-Ukrainian campaigns to raise awareness of the value of IP rights and the negative consequences of IP rights infringements.

The objectives and activities of the above-mentioned center should not extend to participation in specific operations or investigations conducted by competent authorities.

The event was held online. Among the speakers of the event there were the Chairman of GACG Network, Director of the Ukrainian IP Office, Directorof UAACP,  representatives of the IP Office, the State Customs Service of Ukraine, the Office of the Prosecutor General, the Bureau of Economic Security of Ukraine, and the IP and Law firm Pakharenko and Partners. About 60 representatives of the professional community took part in the event.

The recommendations of The Legal 500 ranking testify to the high professional reputation of the firm among the clients and recognition of performance of Pakharenko and Partners by the researchers, based on successfully completed projects and deep professional knowledge in intellectual property area.

Despite the terrible wartime circumstances, the results of the study confirm the high professional status and reputation of Pakharenko and Partners, which remain unchanged thanks to the efforts of the company’s experienced and competent team. Thus, Pakharenko and Partners is recommended by the publication as a TOP-tier IP law firm in Ukraine.

Managing Partner Antonina Pakharenko-Anderson and the Partner Alexander Pakharenkothis year have also been included in The Legal 500 Hall of Fame, which recognizes professionals who are receiving constant positive feedback from clients for their impeccable work.

The Program includes more than 1,700 measures to be taken in 15 priority areas to reduce the level of corruption and ensure integrity. In particular, the areas to be covered include judiciary, defense, law enforcement, state regulation of the economy, customs and taxation, urban planning and land management, corporate management of state enterprises, education, health care, social protection, etc. Also, the priorities include ensuring the inevitability of responsibility for corruption and improving the effectiveness of the anti-corruption system.

With an aim to improve the effectiveness of the corruption preventing and combating system and to ensure formation and implementation of the state anti-corruption policy, in section 2.3.1, the Programacknowledges the existence of such a problem as “insufficient transparency and efficiency of the work of customs authorities, excessive amount of discretionary powers of customs officials. The problems of effective, transparent and predictable functioning of customs authorities, its digitalization and automation, as well as the presence of corruption-inducing factors in the Ukrainian customs legislation received widespread attention throughout the scientific as well as expert (professional) and practical communities. Taking into consideration the main publications in this area, we need to acknowledge that the performance of the State Customs Service is not as effective as it potentially could be. Therefore, there is a need to improve the performance with due account for the principles on which the Anti-corruption Strategy for 2021-2025 is based.

Such improvement should take place considering the need to solve, in particular, the problems of “2. A large number of IPR infringements during the importation of goods. 3. Insufficient digitization and automation of the activity of customs authorities.”

In order to solve these problems, among the Measures for the implementation of the State Anti-Corruption Program for 2023-2025, the following step is envisaged in 2/Annex 2 to the Program, namely:

“2.3.1.2.1. Development of a draft law on introducing amendments to the Customs Code of Ukraine, according to which:

1) it is determined that a right holder’s conclusion is sufficient to confirm the infringement of intellectual property rights and to draw up a protocol on violation of customs rules related to the movement of goods across the customs border of Ukraine with infringement of intellectual property rights;

2) application of measures to assist in the protection of intellectual property rights is extended to cases of revealing goods suspected of infringing intellectual property rights and moved with avoidance of customs control, with concealment from customs control, by way of undeclared transportation, etc.;

3) administrative responsibility for the movement of goods across the customs border of Ukraine with infringement of intellectual property rights is strengthened;

4) a right holder is included in the list of persons taking part in the customs offense proceedings under the Art. 476 of the Customs Code of Ukraine”.

According to the Program, the implementation of these measures is entrusted to the Ministry of Finance and the State Customs Service, which must develop a draft law on introducing the respective legislative amendments within the period from March to June 2023 and publish it on the website for public discussion. Public discussion of the draft law is planned for July-August and its adoption is scheduled for November 2023.

The next step set forth in the 2/Annex 2 to the Program should be “2.3.1.2.5. Developing the draft Order of the Ministry of Finance on amendments to the Procedure for applying measures to assist in protection of intellectual property rights and the interaction of customs authorities with right holders, declarants and other interested parties, approved by the Order of the Ministry of Finance dated June 9, 2020 No. 281, and the Procedure for registration in the customs register of objects of intellectual property rights, which are protected under the law, approved by the Order of the Ministry of Finance dated May 30, 2012 No. 648, – as amended by the Order of the Ministry of Finance dated June 9, 2020 No. 282, according to which:

1) the specified legal acts are brought into line with the amendments to the Customs Code of Ukraine specified in subsection 2.3.1.2.1;

2) the customs authority is given the right to consult with a right holder during the customs inspection of the goods;

3) addressing the systematicity of cases in which right holders, confirming the customs authority’s conclusion that the goods are suspected of infringing intellectual property rights, refuse (do not intend) to apply to such goods the measures to assist in the protection of intellectual property rights or other actions, provided by law, is introduced;

4) an exclusively electronic form of information exchange between customs authorities and rights holders (submission of applications to the customs register of IPR objects, application of measures to assist in the protection of IP rights) is introduced “.

Public discussion of the draft order, ensuring its revision (if necessary), approval and submission for state registration are planned to be carried out within 3-5 months from the date of adoption of the draft law on amendments to the Customs Code of Ukraine.

Furthermore, from March 2023 until February 2025, the State Customs Service should finalize “development and putting into operation of new software and information complexes aimed, in particular, at:

1) ensuring the possibility of tracking the entire chain of actions related to the application of measures to assist in the protection of intellectual property rights, both on the part of customs authorities and on the part of right holders;

2) facilitation of interaction between customs authorities and rights holders through the transition to information exchange in electronic form;

3) the application of standardized approaches to recording all actions and decisions related to the application of measures to assist in the protection of intellectual property rights, expanding the list of information that accumulates in the relevant software and information complexes, with the aim of expanding opportunities for analysis, reporting, and improving risk management systems;

4) creation of additional sources of information to be used by customs authorities in the course of taking measures to assist in the protection of intellectual property rights;

5) implementation of intelligent systems for analyzing the performance of customs authorities in the sphere of assisting in protection of intellectual property rights and further improvement of business processes.”

One of the key elements of the Program is a system of indicators that will allow real-time monitoring and assessment of progress in achieving strategic results envisaged in the Anti-Corruption Strategy.

Planned activities must be carried out in accordance with clear deadlines, have specific performers, and deliver expected results with the use of financial resources necessary for their implementation.

You can review the draft Program at the link: https://cutt.ly/08TLgmA

All materials on the topic: https://cutt.ly/c8jqouF

Antonina Pakharenko-Anderson’s article “Business and Intellectual Property in Times of Crisis” published in the 2023 annual edition of The Women’s IP World, devoted to the activities of Ukrainian businesses and their use of intellectual property rights. The Managing Partner of the IP and Law Firm “Pakharenko and Partners” summarizing what presented emphasized: “We all are wondering what will the global world and Ukraine be like in 2023? Ukrainians know the answer – everything will be fine, because now we are all open to change, as never before. This means that old businesses will transform and new ones will be established, while business achievements will be guaranteed by IP protection, as it always was in recent decades.”

English language analytics outlining the expertise of legal teams in Ukraine may well become a powerful market intelligence source to speed up the rebooting of economic activity in our country.

The article Border Enforcement of IP Rights during Martial Law and after the Victory was published https://ukrainianlawfirms.com/reviews/anti-counterfeiting-piracy/

Author — Alexander Pakharenko, Partner, Pakharenko and Partners IP and Law Firm, Attorney-at-law, Ukrainian Patent Attorney, Director of the Ukraine Alliance Against Counterfeiting and Piracy.

Ukraine joined this public awareness movement in Spring 2012 by launching the continuous awareness-raising campaign “Anti-Counterfeiting and Anti-Piracy Days in Ukraine” at the initiative of Ukraine Alliance Against Counterfeiting and Piracy (UAACP) and with the support of government authorities and organizations comprising the state IPR protection system, State Customs Service of Ukraine, Ministry of Internal Affairs of Ukraine, Ukrainian National Committee of the International Chamber of Commerce, Pakharenko and Partners IP and Law Firm.

Campaign’s goals include promoting respect for intellectual property rights, formation of a rational consumption model and raising awareness of Ukrainians about the risks and consequences of purchasing counterfeit goods.

Ukraine is currently facing russia’s military aggression full of violence and bloodshed, where devastation and cruelty are taking place every day. Nevertheless, the fight against counterfeiting has not only retained its relevance for our country, but gained additional economic and social importance since counterfeiting is not just a matter of morality and infringement of intellectual property rights, but it is a crime that generates rapid cash flows that are not controlled by the government and are likely to be used by the enemy to finance war crimes against our state!

A joint studies on the scale and threats posed by counterfeiting prepared by the Organization for Economic Co-operation and Development (OECD) and the European Union Intellectual Property Office (EUIPO) released in 2019 and 2022 found that annual trade in counterfeit and pirated goods is worth $ 500 billion representing more than 3% of global trade! All counterfeit goods can pose different levels of threats to consumers. The most popular ones are perfumes, cosmetics, clothing, toys, car parts and medicines. The largest exporters of dangerous counterfeits to the EU (3/4 of the volume of seized goods) are China and Hong Kong. The goods are mainly shipped by postal services, while sea is the dominant transport mode in terms of seized value.

All goods currently produced worldwide contain intellectual property items and are protected by intellectual property law. Counterfeiting products involve infringements of intellectual property rights, which carry increased socio-economic risks (compared to other IPR infringements), as they are:

products of unknown origin and quality,

production and distribution of which was adopted by organized crime,

enormous profits from sales are used for financing other crimes (such as human, arms and drugs trafficking), which in the context of martial law in Ukraine is a critical threat to our country,

“quick money” received from the sale of counterfeit products during the war in Ukraine can most likely be used to arm and support the enemy.

Our consumption during the war should be more conscious than ever, so each of us should ask ourselves when buying goods: “If there is a possibility that my money spent on this product will be used by criminals to buy bullets that will kill our soldiers on the front line, then do I really need to buy this product?” The answer for Ukrainians is obvious!

However, in order avoid buying counterfeits, the original goods must be available on the consumer market. Unfortunately, at the moment, during the war, this is a big problem for our country, because the market is filled with various counterfeits and even if we want to buy an original product, we sometimes do not have such an opportunity.

The only effective mechanism to influence the counterfeit market is to create conditions under which the manufacture and sale of counterfeits becomes unattractive and unprofitable for infringers. What can be done to reduce this problem and give consumers a possibility to choose between an original product and a counterfeit one? Implement the following measures:

• stop illegal production and impose severe sanctions on manufacturers and sellers of counterfeits;
• trace the entire logistics chain of entering goods suspected of IPR infringements into commerce. To this end, introduce the obligation of economic entities to have a copy of the declaration or its number under which such goods were imported when selling any imported goods on the Ukrainian physical market and online. This will allow regulatory authorities to monitor the legality of imports of any goods into Ukraine;
• improve the system of prosecution and liquidation of illegal networks;
• raise consumer awareness of the scale of the problem of production and sale of counterfeit goods, because the fight cannot be effective without broad public support!

Do we really need to protect IP rights at the customs border during the war? The answer is simple – YES! The reason for this is Ukraine’s international obligations to join the EU and the vital need to protect Ukraine’s economic interests, because a state that does not protect intellectual property rights, in fact, supports shadow business (its inaction causes damages to legitimate businesses that pay taxes), finances organized crime and war criminals, and, in the Ukrainian reality, helps the enemy.

That is why, on June 15, 2022, the UAACP and the Department of Specialized Training and Cynological Support of the State Customs Service,continuing their long-term cooperation, will hold a joint educational online event for customs officers of the State Customs Service of Ukraine, dedicated to the protection of IP rights at the customs border during the martial law. Such measures, according to the right holders, contribute, inter alia, to maintaining the high efficiency of the work of customs authorities to protect IP rights. In addition to the educational purpose, during the event the current issues of customs work towards assisting in protection of IP rights during martial law will be discussed. The outcomes of the event will be highlighted in our future publications.

Undoubtedly, with the joint efforts of customs, law enforcement, expert, judicial authorities, rights holders, and the whole society, Ukraine should say a resounding NO to counterfeiting and make combating counterfeits a priority for the sake of our victory over the enemy!

Glory to Ukraine!

History of awareness-raising events in pictures

While we fully support the efforts of the Verkhovna Rada of Ukraine and the Cabinet of Ministers of Ukraine to launch the economy, stimulate entrepreneurs to conduct foreign economic activity, increase tax revenues, prevent shortages of vital categories of goods in the domestic market, as well as to ensure the availability in the domestic market of affordable essential goods, Pakharenko & Partners, as rights holder companies representatives, would like to express our concern over the possibility of creating favorable conditions for fraudsters to import and distribute counterfeit goods. That is why we sent appeals to the Cabinet of Ministers and the State Customs Service of Ukraine in which we drew attention to such aspects.

Counterfeiting is infringement of intellectual property rights (IP) which is associated with increased (compared to other infringements of IP rights) socio-economic risks, as it involves the products of unknown origin and quality, production and distribution of which is has been adopted by organized crime and proceeds of which are used to finance other crimes (such as arms and drug trafficking), which pose a critical threat to our country in the context of martial law in Ukraine.

Quick money derived from the sale of counterfeit goods during the war in Ukraine are most likely to be directed for the needs of the enemy.

Thus, counterfeiting is not only a matter of morality and infringement of IP rights, but also a criminal shadow business run by organized criminal groups, and the proceeds of the same can be used to finance war crimes against our state. Therefore, we can suggest that a state that does not fulfill its international obligations, does not fight against counterfeiting, does not merely “fail to protect intellectual property rights”, but, in fact, supports the shadow business (causing damage to legitimate businesses that pay taxes) and finances organized crime and war criminals.

In war-affected conditions, the decisions of the Government of Ukraine not to take measures to assist in the protection of intellectual property rights may not result in the economic recovery, but rather play into the hands of organized criminal groups and various fraudsters who never paid taxes, never conducted legitimate business, and were using illegal, smuggling logistics channels for importing counterfeit products and illegally selling them in markets and spontaneous trade spaces.

In the opinion of the right holders, a more balanced decision of the Government of Ukraine would be to improve the automated risk analysis and management system of the State Customs Service ensuring complete exclusion of the human factor and carrying out inspections of cargoes which, according to UKTZED codes, are matching goods in respect of which the measures provided for by section XIV of the Customs Code were applied during the recent two years. In case of detection of goods with features of infringement of intellectual property rights, under martial law, it is necessary to limit the measures applied by the customs to the possibility of drawing up a customs offense protocol based on the right holders’ conclusion on the availability of counterfeiting features. By the decision of a court or other body having the relevant authority during martial law, such goods shall be transferred free of charge for the needs of medical, educational, socio-cultural institutions, other institutions and institutions financed by state or local budgets, or subject to recycling, disposal or destruction under Article 243 of the Customs Code of Ukraine. It is also necessary to increase the fine for violating the requirements of Article 476 of the Customs Code of Ukraine in order to increase revenues to the state budget of Ukraine.

Should the Government of Ukraine decide not to apply measures to assist in the protection of intellectual property rights under Section XIV of the Customs Code of Ukraine in respect of a wide range of goods, war criminals and other fraudsters will gain unlawful advantage over scrupulous entrepreneurs, the state budget will not receive the necessary taxes, and the system of assisting in protection of intellectual property rights at the border will suffer irreparable losses and will be set back a decade.

This position was also voiced and discussed at the Zoom conference of the National Association of Patent Attorneys of Ukraine on April 20, 2022, and was generally supported by colleagues in the market.

We hope that the position of the professional community will be heard by the Government of Ukraine.

Glory to Ukraine!

Traditionally, each year the World Intellectual Property Organization (WIPO) is proposing a theme for a discussion in the context of intellectual property.

This year, the World Intellectual Property Day’s theme focuses on exploring the huge potential of young people across the globe trying to find new and more effective solutions to drive positive changes for a sustainable future.

It is important for the Ukrainian professional community to keep the best practices and achievements in the intellectual property sphere and ensure further development of the IPR protection system in our country, which, along with the entire economy as a whole, must work to bring our victory closer.

Glory to Ukraine!