Article 229 of the CCU – lawyer in a case of illegal use of trademarks for goods and services (TM)

Legal protection of trademarks in Ukraine is an important element of the intellectual property rights protection system. It is aimed at ensuring fair competition, protecting consumer rights, and safeguarding business interests.

In their practical work, the lawyers of Prikhodko and Partners represent clients’ interests in criminal proceedings related to trademark infringement, as well as provide legal assistance in documenting evidence, preparing statements on criminal offenses, and supporting pre-trial investigations.

Legal regulation of the use of trademarks in Ukraine

Relations in the field of trademark use are governed by:

• The Commercial Code of Ukraine (Articles 154, 157);
• The Civil Code of Ukraine;
• The Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”.

The right to a trademark arises after state registration and is confirmed by a certificate. The owner of the certificate obtains exclusive rights to use their trademark. This means that the owner may prohibit others from using it without permission, in particular:

• using an identical designation for the same goods or services;
• using an identical designation for similar goods or services if this may mislead consumers;
• using a similar designation for the same goods or services if there is a likelihood of confusion;
• using a similar designation for related goods or services if consumers may believe they are connected with the trademark owner.

Thus, the law protects not only exact copying but also any use that may mislead consumers.

What liability applies for illegal use of a trademark?

Illegal use of a brand entails civil, administrative, and criminal liability depending on the nature of the offense, its consequences, and the amount of damage caused.

Civil liability arises in case of violation of the property rights of the trademark owner and предусматривает the obligation of the offender to compensate for damages. In particular, the right holder may demand:

• cessation of illegal use of the trademark;
• compensation for actual damages;
• recovery of lost profits;
• payment of compensation, often determined at the level of a potential licensing fee;
• compensation for moral damage (if grounds exist).

Administrative liability applies in cases of less serious violations, namely:

• imposition of fines;
• confiscation of goods with illegal labeling;
• seizure of equipment used for the production of counterfeit goods;
• other measures provided by law.

Criminal liability is предусмотрена for more serious violations, particularly if they caused significant material damage or were committed intentionally. According to Article 229 of the Criminal Code of Ukraine, the following consequences are possible:

• substantial fines;
• deprivation of the right to hold certain positions or engage in certain activities;
• confiscation and destruction of counterfeit products;
• in severe cases — restriction or deprivation of liberty.

The law provides a comprehensive protection mechanism that allows effective response to any violations — from minor to criminal offenses.

How are damages calculated for illegal use of a trademark? — court practice

In judicial practice, there are several approaches to calculating damages in cases of illegal use of trademarks. Most often, courts apply:

1. Actual business losses. These are the expenses incurred by the trademark owner due to the infringement.
2. Infringer’s profit. The court may consider how much the infringer earned by using another person’s trademark. Thus, all or part of the obtained income may be treated as damages of the right holder.
3. Hypothetical license fee. This is one of the most common approaches. The idea is simple: if the infringer had acted lawfully, they would have entered into a license agreement and paid for the use of the trademark.

What should you do if your trademark has been used illegally without permission?

If someone is illegally using your trademark, you have the full right to protect your interests. The law allows you to demand cessation of the infringement and compensation for damages.

If a trademark owner establishes the fact of infringement of their rights, they may take the following legal actions:

1. Send a written claim to the infringer demanding cessation of the violation and compensation for damages.
2. Apply to the Antimonopoly Committee of Ukraine (AMCU). It should be noted that the law sets a six-month period from the moment the person became aware or should have become aware of the violation to file an application with the AMCU for the protection of their rights.
3. Initiate court proceedings against the infringer by filing a claim with the competent court.
4. Submit a statement to the police to initiate criminal proceedings under Article 229 of the Criminal Code of Ukraine.

Thus, current legislation provides a wide range of legal mechanisms to protect the interests of trademark owners.

Cost of legal assistance in a criminal case on illegal use of a trademark (TM)

The cost of legal assistance in such cases depends on the complexity of the situation, the scope of work, and the stage of the criminal proceedings. At the same time, not only the price matters but also the quality of defense, as it concerns your brand, reputation, and financial losses.

The law firm “Prikhodko and Partners” provides comprehensive legal assistance in cases related to trademark infringement. A team of professionals supports clients at all stages of criminal proceedings, offering effective protection of interests and rights of intellectual property owners.

Among the main services:

1. Consultation and defense strategy. Lawyers analyze your situation and explain how to act properly. You receive a clear defense plan and recommendations on how to avoid risks in the future.
2. Detection of infringement and situation analysis. Specialists verify whether there is indeed a violation of your rights, assess the similarity of designations, and help understand the prospects of the case.
3. Preparation of applications to law enforcement authorities. Lawyers prepare all necessary documents to initiate criminal proceedings and support this process.
4. Collection of evidence. Assistance in building the evidence base: analysis of goods, labeling, documents, and preparation of expert examinations.
5. Defense during investigation. A lawyer accompanies you during interrogations, inspections, and other investigative actions, and also protects you from unlawful actions of law enforcement authorities.
6. Filing a claim for damages. Within criminal proceedings, a civil claim is prepared to recover: material damages; lost profits; moral damages.
7. Representation in court. Full support in court: preparation of legal position, proving the guilt of the infringer, substantiating the amount of damages, and protecting your interests.

A comprehensive approach by the law firm’s specialists allows not only to stop violations of trademark rights but also to reduce financial losses, restore business reputation, and effectively protect the business from similar incidents in the future.

To receive effective protection of your brand and a calculation of the cost of legal support — submit a request below.