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Protection from brand piracy in Ukraine (legal actions against trademark infringement)

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Creation and promotion of a brand sometimes requires years of hard work and huge investments. In turn there is always a temptation for unfair businessmen to avoid such costs through using other people's achievements. Through some manipulations with known trademarks such dealers mislead consumers about the quality of goods and / or their manufacturer earning a lot of money on this and thus depriving real owners of trademarks of part of their profits. There are many ways of such manipulations: changing a few letters in the name of a brand (for example "Abibass" instead of «Adidas», «Somy» instead of «Sony»), design modification, registration of a known brand for another product, etc. And if earlier there was forgery of mostly foreign brands now Ukrainian brands often become object of such violations.

In order to protect its rights to a trademark in court and receive compensation for its misuse one should first of all register it as a trademark for goods and services and obtain a certificate. As a general rule a person who holds a certificate of registration of a trademark for goods and services shall be entitled to use the trademark and has the exclusive right to authorize its use by others and prevent them from using it, including in courts. The only exceptions are those brands that have international registration or recognized as well known by the decision of the Appeals Chamber of the State Intellectual Property Service or a court.

In order to go to court owner of a trademark should check the validity of his certificate (international registration) and the scope of legal protection obtained after registration of the trademark for goods and services. According to Art. 5 of the Law "On Protection of Rights to Trademarks for Goods and Services" validity of the certificate is 10 years from the submission date and is prolonged by the State Intellectual Property Service every 10 years.

The scope of legal protection is determined by the image of the trademark and the list of goods and services for which the trademark is used in accordance with the State Register of certificates of trademarks for goods and services. As stipulated by subsection 59 of Resolution number 12 of the Plenum of the Higher Commercial Court of Ukraine dated 17.10.201 the trademark owner has the right to prohibit others to use identical or confusingly similar to a trademark marking only for those goods and services for which the mark is registered or goods and services related to it. So for example if a trademark is registered only as an image for medical products and medicines the owner of the trademark cannot prevent its use, such as in the manufacture of musical instruments.

It is also necessary to determine whether the use of a trademark is illegal. Nearly any kind of trademark use without the consent of its owner is considered illegal. In particular by putting it on any product for which the mark is registered, sign associated with it, label, stripe or other object attached to the product, storage of such goods with an intent to sell and its sale, importation, exportation; its use while offering or providing services, in business documentation, advertisements and on the Internet including domain names.

And this applies not only to use of registered trademark for goods and services but also to similar signs and symbols that can be misleading about manufacturer of goods or services or not allowing to define them as distinct. According to the Order № 116 of the State Patent Office dated 28.07.1995 marking is considered similar enough that it can be confused with another one when it is associated with it as a whole despite the difference in the elements.

As evidence of such misuse one may present samples of goods that are produced by the defendant and which are marked with corresponding marks for goods and services as well as documents depicting such marks (for example catalogs, price lists with a proposal for the sale of goods or services). Identity and similarity of the mark for goods and services used by a defendant in sale of goods or the provision of services is confirmed through expertise.

At the same time section 6 of article 16 of the Law "On Protection of Rights to Trademarks for Goods and Services" stipulates a number of exceptions that allow use of a registered trademark without the consent of its owner. In particular, non-commercial use of a trademark for goods and services, its use in news and comments to them; while exercising rights arising prior to the filing date of trademark registration.

When sure that the right to a trademark is violated an owner may require the defendant to cease the violation and to compensate losses in court. He may also demand removal of illegally used trademark or designation similar to it from the product or its packaging and the destruction of produced images, signs or symbols similar to a trademark.

To restore business reputation owner of the mark may also file a claim for the protection of trademark through the publication of information about the infringement of claimant’s rights by a defendant in the media. According to Plenum of the Higher Commercial Court of Ukraine this publication is possible only in particular printed media in which a defendant placed advertising of products with the illegal use of the trademark in any form.

If a defendant uses a brand name that is similar to a trademark that a claimant registered, he may file a lawsuit to invalidate the certificate issued to the trademark of the defendant on the grounds of non-compliance with the legal protection requirements. According to the Resolution№ 12 of the Plenum of the Higher Commercial Court of Ukraine dated 17.10.2012 in such cases one should definitely involve the State Intellectual Property Service as a co-defendant.

Also there is a possibility of bringing violators of trademark to administrative liability under Art. 51-2 of the Code of Ukraine on Administrative Offences or criminal liability under Art. 176 of the Criminal Code of Ukraine.

There are following examples of sanctions being applied to violators of trademark rights:

  • Resolution № 28/246pn of the Higher Commercial Court of Ukraine dated 10.04.2012 in which a company was prohibited to use a trademark for goods and services «SUPROTEC» for classes 1, 4 and 35 (industrial products, industrial oils, advertising) since intellectual property to this sign belonged to the claimant. Also as the results of this case the defendant was obliged to publish information in media about the infringement of claimant’s intellectual property rights;
  • Resolution № 21/118-10 of the Higher Commercial Court of Ukraine dated 08.11.2011 upheld the correctness of previous instances judgments about prohibiting defendant to use in any way several brands of claimant and marking similar to them in the way that they can be confused with these brands as well as recovery of more than two million gryvnyas in damages from the defendant to the claimant;
  • Resolution № 20/165 (SD110170) of the Higher Commercial Court of Ukraine dated 30.08.2011 upheld the decisions of previous instances about claim of “Google Inc.” company being satisfied in which it was demanded to recognize as invalid a certificate of trademark for goods and services “GOOGLE” (wording designation) which was owned by LLC “GO OGLE”;
  • Resolution № 12/25 of the Higher Commercial Court of Ukraine dated 25.04.2006 upheld the correctness of previous instances judgments about prohibiting Insurance Company "Oranta - Dnipro" to use the mark for goods and services "Oranta" and the obligation to destroy all images of this mark.

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