Discovered Your Brand Is Being Copied? Don’t Panic, Take Action
Found someone using your name, logo, or packaging? Your first reaction is likely indignation and confusion. But don’t panic. If your brand is protected, copying is not a catastrophe, but a legal task that can and must be solved.
The key word here is “protected.” The entire algorithm we will break down below relies on one document — the Trademark Registration Certificate. It confirms your exclusive rights and provides the legal grounds to demand the cessation of the infringement. Without it, any claims lack legal weight. Therefore, if you haven’t gone through this procedure yet, effective trademark protection begins with its registration.
Of course, preventive measures are always better than reactive ones. To deeply understand how to build a comprehensive strategy and avoid the risks of an unregistered TM, we recommend reading our main article on brand protection strategy. But if the infringement has already occurred and you have the Certificate in hand, it is time to act decisively and consistently. The first step on this path is to gather an irrefutable evidentiary base.
Step 1: Gathering Evidence of Infringement
Emotions and indignation are a natural reaction when you see someone using your brand. But for effective protection, you need to set them aside and move to the methodical collection of evidence. This is the foundation upon which your entire future strategy will be built, as without properly documented facts, any claims or lawsuits will be unsubstantiated.
It is the presence of the registration certificate that gives you the exclusive right to demand the cessation of the infringement, and properly collected evidence turns this right into a real tool. As we analyzed in detail in the article on the risks of operating without a trademark, preventive measures create the basis for effective response. That is why competent trademark rights protection begins not from the moment a copy is discovered, but from the moment of its registration.
To ensure your evidence has legal weight, it is important to collect it correctly. Below, we will break down step-by-step:
- What and how to document correctly. We will provide a clear checklist of evidence: from screenshots of websites and social media to photos of products from retail outlets.
- Why notarization and expert examination are needed. We will explain why simple screenshots may not be enough for court and how to give them undeniable legal force.
- How to conduct a test purchase. We will tell you how to obtain one of the strongest pieces of evidence — a sample of the counterfeit product along with a fiscal receipt.
Each of these stages has its own legal nuances that directly affect the success of your case. Let’s examine them in more detail.
What and how to document correctly?
Your emotions are a understandable reaction, but they are not an argument for the court. The basis of successful trademark protection is a carefully collected and legally correctly formatted evidentiary base. Without it, any of your demands will be just words. Therefore, your first step is the scrupulous documentation of every fact of infringement.
Compile an evidentiary portfolio that will become the foundation for your legal position. Here are the key elements it should contain:
- Screenshots from digital sources. Document website pages, Instagram or Facebook posts, and products on marketplaces where your TM is being used illegally. It is important that the screenshot shows the page URL, as well as the date and time of its creation. This proves the fact of your brand being used on the internet at a specific moment in time.
- Offline photo and video documentation. If you see a counterfeit product on a store shelf, take a picture of it. Take photos of the price tag, signage, and the layout of the retail outlet. Video recording can capture the process of selling or providing services under your mark. This is material evidence of the infringer’s presence in the real world.
- Advertising records. An audio recording of a radio commercial or a video recording of a television advertisement where your TM is mentioned is direct evidence of the use of the designation specifically for promoting goods or services among consumers.
- Test purchase. This is one of the strongest pieces of evidence. Purchase the infringer’s product and be sure to keep the fiscal receipt, packaging, and the product itself. The receipt confirms the fact and date of the commercial transaction, and the product becomes physical evidence that can be submitted for expert examination for comparison.
Collecting this evidence is the first step in exercising your exclusive rights, which trademark registration provides. Without the certificate, all these actions lose their legal force, and you remain defenseless against copying, as we detailed in the article on the risks of operating without a TM. However, even with photos and receipts in hand, it is worth remembering that they may not be enough for the court, and this is where their proper legal certification comes to the fore.
Notarization and Expert Examination
The screenshots and photos you have collected are an important first step, but their evidentiary power can be challenged in court. The defendant may claim that the screenshot was edited or that the website page looked different. To turn your evidence into undeniable proof, there are two powerful legal tools: notarization and forensic examination. This is the stage where everyday evidence collection turns into professional trademark rights protection.
A notary does not just take a screenshot. They conduct an official procedure — a website inspection — and draw up a corresponding protocol. In this document, the notary, under oath, records the exact date, time, URL, and describes the content of the page in detail. Such a protocol is official evidence that is almost impossible to challenge in court. It confirms that at a specific moment in time, the infringement actually existed in the digital space. This is critically important for intellectual property protection for entrepreneurs doing business online.
If the infringement consists not of exact copying but of using a very similar designation, an expert opinion may be required. For this, a forensic examination of intellectual property objects is conducted. A certified forensic expert analyzes your mark and the infringer’s designation based on phonetic, visual, and semantic criteria. The result is an official opinion that answers the main question: are these designations similar to the point of confusion, i.e., can they mislead the consumer? A positive expert opinion is a weighty argument for the court. When digital evidence is properly documented, it is time to obtain the most convincing physical evidence — the counterfeit product itself.
Test Purchase: A Guide for the Brave
A notarial protocol proves the fact of information placement, but a test purchase provides concrete proof of the infringer’s commercial activity — the introduction of goods into civil circulation. This is not just a purchase, but a carefully planned action that creates one of the strongest pieces of evidence in your case. To conduct it correctly, follow a simple algorithm.
- Prepare for the purchase. If possible, take a witness with you. They will be able to confirm the fact, place, and time of the purchase if the need arises. If buying online, take screenshots of every stage of the order.
- Make the purchase. Buy the product or pay for the service. Your goal is to obtain a fiscal receipt. It contains data about the seller (EDRPOU code or RNOKPP), date, time, and place of the transaction. A regular sales receipt has significantly less evidentiary power. If possible, pay by card — the bank statement will serve as additional confirmation.
- Keep absolutely everything. This is the most important stage. Immediately after the purchase, compile an evidence kit, which includes: the product itself in its untouched state, all its packaging (box, labels, tags), and the original fiscal receipt. Make a high-quality photocopy or scan of the receipt, as thermal paper fades over time.
Having a sample of the counterfeit product along with a fiscal receipt directly proves the fact of the sale of this product by a specific business entity. This makes it impossible for the infringer to make claims like “we were only demonstrating a sample” or “this is not our product.” With such a powerful evidentiary base — from notarized screenshots to a real sample of the counterfeit — you are ready to move from gathering facts to active measures. The next step is an attempt to resolve the conflict without involving the court.
Step 2: Pre-trial Conflict Resolution
With the collected evidentiary base in hand, you move from the position of a victim to the position of the party dictating the terms. Starting immediately with a lawsuit is not always the most effective strategy. Often, the infringement can be stopped faster and with fewer costs through pre-trial settlement. A well-drafted claim, supported by evidence, can solve the problem in a few weeks, whereas court cases can drag on for years. Moreover, for some categories of business disputes, an attempt at pre-trial settlement is a mandatory requirement.
It is important to understand: the right to send such a claim is given to you by the TM Registration Certificate. Without it, your letters are just requests. With it, they are a legal demand, the ignoring of which will have legal consequences. This stage is a direct result of the preventive measures we discussed in our main article on brand protection strategy. Below, we will break down:
- Key elements of a claim letter. What the document must consist of to have legal weight.
- Pre-trial claim template. A practical tool that you can adapt to your situation.
- Sending rules. How to send the claim so that it is recognized as proper evidence in court.
A properly conducted pre-trial stage demonstrates your seriousness and readiness for decisive action, which often prompts the infringer to cooperate. Let’s consider how to correctly formulate your demands.
Drafting a Claim Letter: Key Elements
A claim letter is not just a complaint, but an official legal document that demonstrates the seriousness of your intentions. To have maximum effect, its structure must be clear, logical, and legally justified. Each element performs its function, turning your appeal from an emotional letter into a weighty argument that lays the foundation for further trademark rights protection.
Here are the key components your claim must contain:
- Parties’ details and legal grounds. Indicate the full name of your company (or full name for a sole proprietor), your contact details, and the infringer’s details (if known). Most importantly, state the number of your Trademark Certificate, its date of issue, and the list of goods/services (Nice classes) for which it is registered. This legally confirms your exclusive right to use the mark.
- Detailed description of the infringement. Clearly and consistently describe where, when, and how exactly the infringement of your rights was documented. Refer to the collected evidence: “…which is confirmed by the website inspection protocol drawn up by a notary (copy attached)” or “…by the fact of the sale of the counterfeit product, which is confirmed by fiscal receipt No… dated … (copy attached).” This turns your accusations from assumptions into proven facts.
- Clear and exhaustive demands. Do not limit yourself to a general phrase like “stop the infringement.” Formulate the demands as specifically as possible: stop using the designation “NAME” on the website (specify URL), on social media (specify links), on product packaging; withdraw from circulation and destroy all counterfeit products; pay compensation for damages in the amount of X UAH. The more specific the demands, the harder it is for the infringer to ignore them.
- Deadline for response and warning. Set a reasonable deadline for fulfilling your demands (usually 10-15 calendar days). Be sure to warn that in case of ignoring the claim or failure to fulfill the demands, you will be forced to apply to the court and/or the Antimonopoly Committee of Ukraine for the compulsory protection of your rights, which will lead to the recovery of additional legal costs from the infringer.
A properly drafted letter often convinces the infringer that further resistance will lead to significantly greater financial losses. To make this task easier for you, we have prepared a practical template.
Pre-trial Claim Template
Theoretical understanding of the structure is good, but a practical example is always more effective. We have prepared a universal pre-trial claim template for you, which you can adapt to your situation. Fill in the fields in square brackets with your information.
TO: [Full Name of Infringer]
[Legal Address of Infringer]
[EDRPOU/RNOKPP Code of Infringer]FROM: [Full Name of TM Owner]
[Your Legal Address]
[Your EDRPOU/RNOKPP Code]
[Your Contact Details: phone, e-mail][Date]
PRE-TRIAL CLAIM
regarding the infringement of intellectual property rights to a trademark[Your Company/Sole Proprietor] is the owner of the rights to the trademark “[Name of your TM]”, which is confirmed by the Certificate of Ukraine for goods and services No. [Certificate Number], issued on [Date of Issue], for goods and/or services of [Number(s) of Nice class(es)] class(es) of the International Classification of Goods and Services.
We have become aware that you are illegally using a designation similar/identical to our trademark, namely: [Detailed description of where and how the designation is used — on the website (URL), on social media (links), on product packaging, etc.].
These actions are a violation of our exclusive rights, guaranteed by Art. 16 of the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services.”
The fact of infringement is confirmed by the following evidence:
1. [Name of evidence No. 1, e.g., Website inspection protocol dated DD.MM.YYYY]
2. [Name of evidence No. 2, e.g., Fiscal receipt No… dated DD.MM.YYYY]
(Copies of evidence are attached).Based on the above, WE DEMAND by [Specify deadline, e.g., DD.MM.YYYY]:
1. Immediately stop any use of the designation “[Name used by the infringer].”
2. Withdraw from civil circulation and destroy all products marked with this designation.
3. Pay compensation for damages in the amount of [Amount] UAH to our account [Your bank details].In case of failure to fulfill these demands within the specified period, we will be forced to apply to the court for the compulsory protection of our rights, which will lead to the recovery from you, in addition to the amount of damages, of all legal costs.
Please inform us in writing about the results of the consideration of this claim at the address indicated above.
Sincerely,
[Position] [Signature] [Full Name]
Important note: this template is basic and may not take into account all the nuances of your case. For complex cases, especially when it comes to significant compensation or systemic infringements, we strongly recommend contacting a lawyer to prepare an individual claim. This will significantly increase the chances of a successful pre-trial settlement.
When the claim is ready and signed, it is equally important to deliver it correctly so that this step has legal weight.
How to send the claim correctly?
Drafting the perfect claim is only half the battle. If you cannot prove that the infringer received it, all your work may prove useless. That is why the method of sending is just as critically important as its content. This is an element that is often underestimated, but it is what ensures the strength of your position in court.
The most reliable and legally flawless method is sending the claim by mail. But not just a simple letter, but a registered letter with a description of the attachment and a return receipt. Let’s break down why each component is important:
- Registered letter: guarantees that the shipment will be delivered to the addressee personally against signature, and its path can be tracked by a tracking number.
- Description of attachment: this is a document certified by a postal employee in which you list exactly what is in the envelope (e.g., “Pre-trial claim dated DD.MM.YYYY on 2 pages”). This makes it impossible for the infringer to make claims in court like “we received an empty envelope” or “there was advertising in it.”
- Return receipt: this is a card that will return to you with the recipient’s signature and the date of delivery. This is your concrete proof that the claim was delivered and the infringer is aware of your demands.
And why can’t you just send an email? An email is not reliable evidence. The infringer can claim they did not receive it, that the letter went to spam, or that their mailbox was hacked. Without the use of a qualified electronic signature (QES) by both parties, proving the fact of receipt and awareness of an email in court is extremely difficult. Therefore, for official communication that may become evidence in a case, you should choose proven postal services.
If the infringer ignored your demands even after receiving the official claim, it means it is time to move to more decisive actions — applying to state authorities.
Step 3: Protection in Court and the Antimonopoly Committee
If your pre-trial claim was ignored, it is time to move to “heavy artillery.” Applying to state authorities is the most powerful tool in your arsenal, which turns the infringement from a problem into financial and reputational losses for the competitor. It is the TM Registration Certificate that gives you the right to such decisive protection. This is a logical continuation of your strategy, where you move from warning to coercion, as we detailed in the article on preventive brand protection strategies.
At this stage, you have two main paths: apply to the court or to the Antimonopoly Committee of Ukraine (AMCU). These are not mutually exclusive options, but they have different jurisdiction, speed, and consequences for the infringer. The court considers the case from the point of view of the infringement of your property rights, while the AMCU — from the position of unfair competition and its impact on the market. To choose the most effective strategy, you need to clearly understand the capabilities of each of these bodies. Let’s consider when it is worth filing a lawsuit in court and in which cases an appeal to the AMCU will be more effective.
When to go to court: filing a lawsuit
Applying to court is the classic and most comprehensive method of protection when pre-trial methods are exhausted, or when the infringement is so brazen and large-scale that it requires immediate judicial intervention. The judicial process allows not only to stop the infringement but also to receive full compensation for damages caused. This is especially relevant if the competitor’s actions have caused direct financial harm to your business.
In the lawsuit, you can put forward several demands at once to maximize the protection of your interests:
- Cessation of infringement. This is a basic demand that obliges the defendant to stop any illegal use of your trademark.
- Compensation for damages. You can demand compensation for both actual damages (e.g., expenses for legal services or conducting an explanatory advertising campaign) and lost profits — the profit you did not receive due to the infringer’s actions. Proving lost profits is a complex process that requires economic calculations, but in case of success, it can cover significant financial losses.
- Withdrawal and destruction of counterfeit products. The court can oblige the infringer to withdraw from sale all products marked with your TM, as well as equipment for their production, and destroy them at their own expense.
It is important to understand that judicial review is a complex and formalized process that requires deep knowledge of procedural law and the specifics of cases in the field of intellectual property. Handling such a case on your own can lead to mistakes that will negate all your efforts. Therefore, involving a qualified lawyer at this stage is not just a recommendation, but a necessity for effective protection. However, besides the court, there is another state body that can protect your brand.
Protection against unfair competition in the AMCU
Infringement of trademark rights is not only a problem for the brand owner but also a dirty game in the market. This is exactly what the Antimonopoly Committee of Ukraine (AMCU) pays attention to. Unfair competition in the context of TM is any action that can mislead consumers regarding the manufacturer of the product. In other words, when a competitor is not just using your name, but trying to look like you to gain a commercial advantage.
The AMCU considers cases where there are elements of copying that create confusion. The most common examples:
- Copying the appearance of packaging. Using a similar shape, color scheme, fonts, and arrangement of elements, which as a whole creates the impression of another manufacturer’s product.
- Using a name similar to the point of confusion. For example, selling sneakers under the brand “Abibas” or water “Morshynska +.”
- Imitation of corporate style. Designing a store, website, or advertising materials in a style characteristic of your brand.
The main advantage of applying to the AMCU is the speed and severity of sanctions. Consideration of cases in the committee often happens faster than in courts. And most importantly — the AMCU has the right to impose significant fines on infringers, which can reach up to 5% of the enterprise’s income for the last reporting year. Such a financial blow is often a significantly more effective lever of influence than a court decision on compensation for damages. So, you are faced with a choice: which body will handle your situation better?
Court or AMCU: what to choose?
The choice between the court and the AMCU is a strategic decision that depends on your ultimate goal, resources, and the nature of the infringement. Both bodies are effective tools but work differently. To make the right choice, it is worth comparing them by key criteria.
| Criterion | Court | Antimonopoly Committee of Ukraine (AMCU) |
|---|---|---|
| Purpose of application | Compensation for specific damages (actual and lost profits), withdrawal and destruction of counterfeit, prohibition of TM use. Direct trademark rights protection. | Cessation of unfair competition, imposition of a significant fine on the infringer, obtaining an official decision on the illegality of the competitor’s actions. |
| Speed of review | Long-term process. The case can be considered from 6-12 months to several years, taking into account appeals. | Relatively faster process. Review can take from several months to a year. |
| Types of sanctions | Prohibition of TM use, recovery of damages in your favor, destruction of goods. There are no fines in favor of the state. | Decision to stop the infringement, imposition of a fine of up to 5% of the infringer’s annual income in favor of the state budget. |
| Complexity of proof | High. It is especially difficult to prove the amount of lost profits, which requires economic examinations and calculations. | Moderate. It is enough to prove the fact of copying that can mislead consumers. There is no need to prove the amount of damages. |
So, which instance to choose? If your main goal is to quickly stop a competitor who is imitating your corporate style, and you want them to receive a tangible financial blow in the form of a fine, your path lies to the AMCU. If it is fundamentally important for you to receive compensation for damages caused, to achieve the destruction of a specific batch of goods, and the infringement is a direct use of your mark without elements of imitation, you should prepare a lawsuit to the court. Sometimes these processes can be conducted in parallel for maximum pressure on the infringer.
Now that you know the entire algorithm of actions and tools of influence, it is important to understand that success depends on the consistency and determination of your steps.
Your Rights — Your Responsibility: Act Confidently
You have gone through the entire path: from documenting the infringement and drafting a claim to analyzing the possibilities of the court and the AMCU. This algorithm is your reliable tool that turns emotions into a clear plan of action. But it is worth remembering the main thing: this entire powerful arsenal for protection becomes available only under one condition — you have a Trademark Registration Certificate. Without this document, any attempts to protect the brand remain at the level of requests, not legal demands.
Full-fledged trademark rights protection is always a combination of preventive measures and decisive reaction to infringement. If you have encountered copying of your brand or want to build a reliable protection system for the future, you should not act blindly. Seek advice from BrandR lawyers. We will help you move from theory to practice and confidently protect your rights. And for a deeper understanding of the importance of proactive steps, we recommend reading our main article on preventive brand protection strategies.
Frequently Asked Questions
What to do if my brand is being copied, but the trademark is not registered?
The situation where your brand is being copied without a registered trademark is significantly more complex, as the absence of a certificate makes it impossible to use many of the protection tools described in the article. However, not all is lost, and you still have some opportunities for action:
- Immediately file an application for TM registration: If your mark is not yet used by someone else and is original, filing an application for TM registration can be the first step. Although protection will only begin after registration, it will show your serious intentions and can later become grounds for stopping the infringement if the application is filed before the infringer (in case the infringer has not yet registered a similar designation).
- Protection under the Law of Ukraine “On Protection against Unfair Competition”: Apply to the Antimonopoly Committee of Ukraine (AMCU). Even without a registered TM, you can prove that the competitor’s actions are an act of unfair competition if they use a designation that is similar to the point of confusion with yours, or imitates the appearance of your product, packaging, or corporate style. The main thing is to prove that such actions can mislead the consumer regarding the manufacturer of the product or service.
- Use of copyright: If your logo, packaging design, advertising materials, or other brand elements have an original creative character, they can be protected by copyright. Copyrights arise from the moment of the work’s creation and do not require registration (although registration can facilitate proof). You can use this fact for sending a claim or applying to court.
- Weaker pre-trial claim: You can try to send a claim, referring to the provisions on unfair competition or copyright. However, without a registered TM, such a claim will have less legal weight and will likely be effective only against those infringers who are ready to resolve the conflict peacefully.
- Gathering evidence: Even without a TM, still carefully gather all possible evidence of infringement (screenshots, photos, test purchase receipts, notarial protocols). They will be necessary for any protection scenario.
Remember that the strongest protection is provided by a registered trademark. Therefore, if your brand is valuable, the fastest possible registration is a strategically important step to ensure its stability and security.
What is the approximate cost of trademark rights protection and can these expenses be recovered from the infringer?
The cost of trademark rights protection can vary significantly depending on the complexity of the case, the chosen path of settlement (pre-trial, court, AMCU), and the duration of the process. It usually includes the following components:
- Cost of gathering and documenting evidence:
- Notarization of web pages: Each website inspection protocol by a notary can cost from 1000 to 3000 UAH or more, depending on the volume of pages.
- Forensic examination: Examination of intellectual property objects (to establish similarity to the point of confusion) is one of the most expensive components and can cost from 8000 to 30000 UAH or more.
- Test purchase: The cost of the product itself.
- Legal services:
- Preparation of a claim: From 3000 to 8000 UAH.
- Support in the AMCU: Depends on the number of meetings and the complexity of the case, can vary from 15000 to 50000 UAH or more.
- Court support: This is the most expensive stage. The cost can range from 30000 UAH for one instance and reach hundreds of thousands of hryvnias for complex cases with several appellate instances. Lawyers can work on an hourly rate or a fixed fee per stage.
- State payments:
- Court fee: Depends on the nature of the claims. For example, for a non-property claim (on stopping the infringement) for legal entities, this is a fixed amount (about 3028 UAH in 2024), and for a property claim (recovery of compensation/damages) – a percentage of the claim amount.
- Postal services: Cost of registered letters with a description of the attachment.
Can these expenses be recovered from the infringer?
Yes, you can. The legislation of Ukraine (in particular, the Civil Procedure Code of Ukraine and the Commercial Procedure Code of Ukraine) provides for the reimbursement of legal costs to the party in whose favor the decision was made. This means that if you win the case, the court can oblige the infringer to compensate you for all incurred and documented expenses, including:
- court fee;
- expenses for professional legal assistance (lawyer fees);
- expenses related to involving witnesses, experts (forensic examinations);
- expenses for notarization of evidence;
- other expenses related to the consideration of the case.
In addition, you can demand compensation for damages caused (actual and lost profits) or payment of compensation, the amount of which is determined by the court in accordance with the law (e.g., in double the amount of the fee for using the TM). The possibility of recovering expenses is an important incentive for the effective protection of your rights and an additional lever of pressure on the infringer.
What other preventive brand protection methods exist, besides TM registration, to avoid copying in the future?
Trademark registration is the foundation of protection, but an effective preventive brand strategy must be comprehensive and include other intellectual property tools and organizational measures. Here are several key methods:
- Copyright registration: Although copyright arises from the moment of the work’s creation, its registration provides additional evidence of authorship and the date of creation. Copyright protection extends to:
- Logos and graphic elements: If they are original and have a creative character.
- Packaging design: Unique graphic solutions, fonts, compositions.
- Advertising materials: Texts, slogans, video clips.
- Website and software: Code, interface, content.
- Industrial design registration: Protects the appearance (design) of a product that is new and has an individual character. This applies to the shape of the product, packaging, labels, furniture, appliances, etc. Registration of an industrial design is a very effective tool for protection against imitation of the appearance of your products.
- Patenting inventions and utility models: If your brand is based on unique technical solutions, formulas, processes, or designs, patenting them will protect the technological basis of your product/service from copying.
- Domain name registration: Register key domain names (.ua, .com, .net, etc.) that correspond to your trademark and brand. This prevents cybersquatting and the use of your name by other persons in the online space.
- Market and Internet monitoring: Regularly track the use of similar names, logos, designs in the market, on social media, on marketplaces, and among registered trademarks. There are specialized services and law firms that provide monitoring services. Rapid detection of infringements allows for prompt response.
- Confidentiality and trade secret: Enter into non-disclosure agreements (NDA) with partners, employees, contractors who have access to your sensitive information, e.g., business plans, recipes, technologies. Protection of trade secrets allows you to maintain competitive advantages.
- Use of warning labeling: Place the ® sign next to your TM (if it is registered) or ™ (if the application is filed/brand is used without registration), as well as © signs for copyright. This informs potential infringers that your brand is protected.
Integrating these elements into a single strategy allows you to build a strong “shield” around your brand, minimizing the risks of copying and unfair competition.
How long does the process of court or pre-trial settlement of a trademark dispute usually take?
The terms for settling trademark disputes are very variable and depend on a multitude of factors: from the infringer’s willingness to cooperate at the pre-trial stage to the workload of the judicial system and the complexity of the dispute itself. However, approximate indicative terms for each stage can be provided:
- 1. Gathering evidence:
- Independent documentation (screenshots, photos): From a few hours to 1-2 days.
- Notarization of web pages: 1-3 working days.
- Forensic examination: From 1 to 3 months, depending on the workload of experts and the complexity of the objects for research.
- Test purchase: 1-7 days (depending on the method of product delivery).
In total, a full package of evidence can be gathered within from 2 weeks to 3 months.
- 2. Pre-trial settlement (claim letter):
- Preparation and sending of the claim: 3-7 working days.
- Waiting for the infringer’s response: Usually, a deadline of 10-15 calendar days is set in the claim.
If the infringer immediately agrees to a settlement, the entire stage can take from 2 to 4 weeks.
- 3. Consideration of the case in the Antimonopoly Committee of Ukraine (AMCU):
- Filing an application: 1-2 weeks (for preparation).
- Consideration of the case by the AMCU: Usually from 3 to 9 months, but in complex cases, it can last up to 1 year or more. This depends on the number of meetings, the need for examinations, and the promptness of document submission by the parties.
In total, the process in the AMCU takes from 4 months to 1 year.
- 4. Judicial protection:
- Preparation of the lawsuit: 2-4 weeks.
- Consideration of the case in the court of first instance (commercial court): From 6 months to 1.5 years. Intellectual property cases are complex and are rarely considered quickly.
- Appellate instance: If one of the parties does not agree with the decision of the first instance, the appellate review can last from 3 to 6 months.
- Cassation instance: Another 3 to 6 months.
- Enforcement proceedings: After the decision enters into legal force, the process of its compulsory execution can take from several months to a year or more, depending on the debtor’s willingness to comply and the availability of their property/funds.
In total, the judicial process from filing the lawsuit to the final decision and its execution can last from 1 to 3 years, and sometimes longer.
Given these terms, it becomes obvious why pre-trial settlement is a desirable option, and preventive measures and timely TM registration are the most effective way of protection.
Is it possible to hold the infringer criminally liable for copying a TM?
Yes, criminal liability for illegal use of a trademark is provided for in Ukraine. This is regulated by Article 229 of the Criminal Code of Ukraine, which is called “Illegal use of a mark for goods and services, trade name, qualified indication of the origin of goods.”
Conditions for criminal liability:
Key condition for criminal liability is the presence of significant damage caused by the infringer’s actions. The legislator sets a threshold for “significant amount of damage,” which exceeds twenty tax-free minimum incomes of citizens.
Typical situations that may fall under criminal liability are:
- manufacturing and/or distribution of counterfeit products in particularly large volumes;
- systematic and conscious copying with the aim of deceiving consumers and obtaining illegal profit;
- organized criminal activity related to intellectual property.
Sanctions:
Article 229 of the Criminal Code of Ukraine provides for various types of punishments, depending on the severity of the infringement and the amount of damage caused, including:
- fine (from one thousand to four thousand tax-free minimum incomes of citizens);
- deprivation of the right to hold certain positions or engage in certain activities;
- correctional labor;
- imprisonment (for particularly serious cases, committed repeatedly or by prior conspiracy by a group of persons, or if they caused great material damage).
Process:
Unlike civil or administrative cases, where the initiator is the rights holder, criminal cases are initiated by law enforcement agencies (police, prosecutor’s office) based on the fact of a crime. The rights holder in this case acts as a victim and can file a report of a crime.
It is important to understand that criminal liability is applied to the most brazen and large-scale cases of copying. For typical business disputes, where the goal is to stop the infringement and recover damages, civil-law (court) or administrative-law (AMCU) protection mechanisms are more often used.
What to do if the infringer is abroad and is copying my Ukrainian brand?
The situation with a foreign infringer is significantly complicated by the principle of territoriality of intellectual property rights protection: your Ukrainian trademark provides you with exclusive rights only on the territory of Ukraine. For protection abroad, other strategies are needed:
- International trademark registration: If your brand is successfully operating and you are planning to enter international markets, or are already facing copying abroad, it is critically important to register your trademark in the countries where the infringer is located or where you conduct your activities. This can be done through the Madrid System (the system of international TM registration), or by filing applications directly to national offices.
- Contacting a local lawyer: Protecting intellectual property rights in a foreign jurisdiction requires knowledge of local legislation and judicial practice. You will need to involve a lawyer or patent attorney in the country where the infringement is taking place.
- Using platform policies: If the infringement is happening online (e.g., counterfeit goods are sold on international marketplaces like Amazon, eBay, Alibaba, or advertising on Google Ads, Facebook/Instagram), you can use the internal mechanisms of these platforms to report intellectual property rights infringement. Most large platforms have clear procedures for removing content or blocking infringing sellers.
- Customs register of intellectual property objects: In many countries, there is a system that allows rights holders to register their trademarks with customs authorities. This allows customs to detain and prevent counterfeit goods from entering circulation right at the border.
- Finding ways through international agreements: Although a Ukrainian TM does not act directly abroad, some international agreements (e.g., the Paris Convention for the Protection of Industrial Property, the TRIPS Agreement) establish certain minimum standards of protection and interaction between participating countries, which can be used as an auxiliary argument or basis for further actions.
- Proving unfair competition: Even if you do not have a registered TM in a foreign state, you can try to prove the fact of unfair competition if your brand has a high reputation (goodwill) and the infringer is clearly trying to mislead consumers. However, this is a complex process that requires a significant evidentiary base.
The best preventive step is a proactive strategy of registering intellectual property in key regions of the world for your business. This will provide you with a strong legal basis for rapid and effective counteraction to infringements, wherever they may arise.
