Case Studies

• 
  Enforcement Tobacco · Ukraine · Foreign tobacco manufacturer

  Non-use cancellation won against a Lorillard subsidiary

  Challenge

  A foreign tobacco company found its intended cigarette brand already registered in Ukraine. The opposing party was a subsidiary of the American group Lorillard, founded in 1760.

  What we did

  Analysis established that the registration had lain unused in Ukraine for an extended period. We collected the supporting evidence and ran the litigation from start to finish.

  Outcome

  The prior registration was cancelled by the court and the client’s mark was successfully registered.

• 
  Trademarks Technology & Hosting · Ukraine · TheHost.ua

  Descriptiveness objection overcome for TheHost.ua

  Challenge

  The well-known Ukrainian hosting provider TheHost.ua was refused registration on the ground that the mark lacked distinctive character. The application covered hosting services, and the examiner treated the mark as descriptive of exactly those services.

  What we did

  Working closely with the applicant, we built a legal position on the distinctiveness of the mark as filed and argued it through to the examiner.

  Outcome

  The examination was persuaded, the mark was registered, and it continues to provide the applicant with protection.

• 
  Trademarks Chemicals & Coatings · Ukraine · ASTEX

  Identical dominant element overcome for paint manufacturer ASTEX

  Challenge

  ASTEX, a Polish paint and coatings manufacturer, was refused registration over an earlier Ukrainian mark whose dominant word element was identical to the sign applied for. The company had traded in Ukraine for years and needed the mark registered unchanged in order to act against counterfeits and hold its market share.

  What we did

  A provisional refusal always carries a right of reply, and the reply is where the matter is decided: no response, or the wrong argument, converts the refusal into a final one. We selected the arguments to fit the facts, set out the legal position and described the commercial situation to the examiners.

  Outcome

  The refusal was overcome and the client obtained protection for the full scope applied for.

• 
  Trademarks Cosmetics & Personal Care · Ukraine · Spanish cosmetics company

  DERMIUM LAB registered over the earlier mark DERMOLAB

  Challenge

  The owner of DERMIUM LAB, a Spanish company, was refused registration over the similar earlier mark DERMOLAB. The marks were close, the dominant element was the word component, the product niches were the same, and the mark had not yet built recognition in Ukraine or elsewhere — leaving little to argue from.

  What we did

  We built the case on the differences between the two signs and on why protection was warranted for the mark as filed.

  Outcome

  The client’s trademark was successfully registered.

• 
  Trademarks Consumer Goods & Homeware · Ukraine · Bulgarian homeware manufacturer

  hd HOMEdecor registered despite a near-identical dominant element

  Challenge

  A Bulgarian manufacturer of homeware was refused registration of hd HOMEdecor. The examiner cited HD HOMEdesign, owned by a Greek proprietor and presented in a very similar style.

  What we did

  Our patent attorneys set out the case for registering the applicant’s mark notwithstanding the overlap in the dominant element.

  Outcome

  The refusal was overcome and the applicant obtained full protection for all goods applied for.

• 
  Trademarks Agriculture & Plant Breeding · Ukraine · Vissers Aardbeiplanten B.V.

  Harmony registered over the earlier marks ГАРМОНІЯ and HARMONIE

  Challenge

  Ukrpatent frequently refuses marks by reference to the field in which the sign is used. Vissers Aardbeiplanten B.V., the Dutch strawberry breeder and propagator, hit exactly that problem when registering Harmony — the name of one of its key strawberry varieties — with ГАРМОНІЯ and HARMONIE cited against it.

  What we did

  We identified the substance of the objection quickly and filed a reasoned response to the provisional refusal within a short deadline.

  Outcome

  The mark was secured for the goods that mattered to the client and Vissers Aardbeiplanten B.V. obtained registration in Ukraine.

• 
  International Branded Goods · United States · Name not published

  US trademark secured, from clearance search to registration

  Challenge

  A client needed brand protection in the United States and required certainty before committing to a filing.

  What we did

  We ran a clearance search across registered and pending US marks to confirm the route was clear, advised on the correct filing basis before the USPTO, and handled prosecution including the response to the examining attorney’s office action.

  Outcome

  The mark was registered in the United States for a ten-year term.

• 
  International Branded Goods · United States · Name not published

  US designation of a Madrid registration carried through examination

  Challenge

  A client filed under the Madrid System designating the United States. Each designated office examines independently, and the USPTO applies its own practice — in particular its own requirements for the identification of goods and services, which do not always match national classifications. Queries on specification wording and other formal points are routine as a result.

  What we did

  We argued the case for registration and worked through the office actions on specification and formalities.

  Outcome

  The objections were overcome and the mark obtained protection in the United States.

• 
  International Branded Goods · Multiple · Name not published

  Madrid registration obtained, then assigned on the WIPO register

  Challenge

  A client needed protection for its trademark abroad, and later — after a change in how the business was structured — needed the international registration transferred to a different company.

  What we did

  We filed under the Madrid System and carried the application through examination in each designated territory, including the United States and the European Union. For the transfer we handled the transaction end to end, drafting the agreements and recording the change of ownership on the WIPO international register.

  Outcome

  Protection obtained across every designated jurisdiction, and the assignment recorded without loss of rights.

• 
  International Engineering · United States · Ukrainian inventor

  US patent granted after examination on the merits

  Challenge

  A client who had already obtained several Ukrainian patents through our attorneys wanted protection in the United States. The US is an attractive but demanding market: there is no utility model route, so the only option is a patent examined on the merits. The USPTO issues office actions without a fixed limit — typically one or two — and while the office conducts its own search and grounds its objections in cited prior art, how that art is read varies with the examiner. The human factor matters alongside the facts.

  What we did

  Success turns on choosing the right arguments, conducting the discussion with US examiners in the right register, reading the situation correctly, mastering the technical detail, and being willing to adjust the application where it protects the essentials. Our Ukrainian attorneys ran the matter jointly with US counsel.

  Outcome

  Examination was passed and the client obtained a US patent, protected for 20 years.

• 
  Patents Advanced Materials & Electronics · Ukraine and abroad · Two independent inventors

  Inventive step established for thermoelectric devices in solid-state physics

  Challenge

  Drafting patent applications in some fields calls for knowledge held by a narrow group of specialists. Two inventors needed protection, in Ukraine and abroad, for novel thermoelectric devices — and drafting for devices of this kind requires particular parts of solid-state physics and semiconductor band theory.

  What we did

  Having that background in-house, our specialists studied the materials in depth and drafted the applications quickly and to a high standard, then argued inventive step to the Ukrpatent examiners during prosecution.

  Outcome

  Patents granted to both inventors in Ukraine and in other jurisdictions.

• 
  Patents Materials & Fire Safety · Ukraine · Vohnezakhyst SPC LLC

  Broadest available protection for a graphite-oxide fire-resistant coating

  Challenge

  Vohnezakhyst, which works on technical solutions that make buildings, equipment and everyday life safer, came to us with a novel fire-resistant coating based on graphite oxide.

  What we did

  Our specialists worked through the properties of the substance and the chemical and physical behaviour of coatings containing it, then drafted the application documents around what actually distinguished the solution.

  Outcome

  A patent granted with the widest scope of protection available on the facts.

• 
  Patents Agriculture · Ukraine · ST Kairos LLC

  Method patent granted for a new way of growing confectionery sunflower

  Challenge

  Agriculture is a substantial part of the Ukrainian economy and a great deal of technical innovation sits there. ST Kairos had devised a new method of growing confectionery sunflower and needed it protected as an invention.

  What we did

  We reviewed the materials, drafted the application and conducted prosecution, including responses to Ukrpatent office actions establishing inventive step in the method.

  Outcome

  ST Kairos obtained protection for the method, bringing a new technique into Ukrainian agricultural production.

• 
  Patents Software & Online Services · Ukraine and international · Independent inventor

  Electronic system patented in Ukraine, with inventive step recognised by WIPO

  Challenge

  Patenting electronic systems in Ukraine is a known difficulty: solutions in this field cannot always be protected straightforwardly, and doing so depends on knowing the particular features that have to be accounted for. An inventor approached us for protection of an electronic system for expressing thanks and positive feedback — "likes" — and for collecting, processing, counting and transmitting that data across electronic networks.

  What we did

  Drawing on long experience with electronic-system filings, we prepared and filed the Ukrainian application, then filed internationally, framing the claims so the invention would be assessed on its merits.

  Outcome

  The Ukrainian patent was granted, and on the international application the WIPO examination recognised inventive step in the solution.

• 
  Industrial Designs Medical Supplies · Ukraine · Prestige Medical LLC

  Industrial design entered on the customs register to stop counterfeit imports

  Challenge

  Recording IP rights on the Ukrainian customs register matters wherever goods that infringe those rights cross the border. Prestige Medical needed its registered industrial design for a medical examination glove recorded, both to smooth customs clearance of its own goods and to block counterfeits at the border.

  What we did

  We prepared and filed the customs register application for the design and saw it through to entry within a short timescale.

  Outcome

  The design is recorded on the customs register. The company has substantially reduced its losses and no longer has difficulty moving goods incorporating the design in and out of Ukraine.

• 
  Enforcement Consumer Goods (FMCG) · Ukraine · FMCG manufacturer

  Infringement claim over packaging defeated before it reached court

  Challenge

  A competitor sent our client, a fast-moving consumer goods manufacturer, a pre-action demand to stop using its own product packaging, asserting copyright in similar packaging designs and rights in a registered trademark. The competitor threatened litigation, penalties and criminal liability, and demanded damages together with the immediate withdrawal from circulation of all the product and the equipment used to make it.

  What we did

  Analysis showed neither the claim nor the demands were well founded. Our client’s packaging carried an image of the product, as the competitor’s did, but its design was distinct, typical for the category and materially different from the packaging relied on. Notably, the trademark said to be infringed had in fact been registered by our client earlier than the mark the competitor was invoking. We set out that position in a reasoned reply, together with the consequences the competitor would face, having found the weak points in its case.

  Outcome

  The matter was resolved without litigation and at no financial cost to the client.

No matters in this practice area yet.