Case No. 910/16093/18
Plaintiff: KALCEKS, AS (Akciju sabiedrība “KALCEKS”)
Defendants: Pharmaceutical Group Zdorovia LLC; Ukrainian National Office for Intellectual Property and Innovations; Farmeks Group LLC
Subject matter: invalidation of trademarks and obligation to take actions.
In case No. 910/16093/18, KALCEKS, AS filed a claim seeking full invalidation of two Ukrainian trademark certificates owned by Pharmaceutical Group Zdorovia LLC: Certificate No. [NUMBER_1] for the designation “ПРОМЕДОЛ-ЗН” (application dated 04.09.2009) and Certificate No. [NUMBER_3] for the designation “PROMEDOL ПРОМЕДОЛ” (application dated 02.11.2016). Both trademarks were registered for goods in Class 5 of the Nice Classification (pharmaceutical preparations, medicines, narcotics, etc.).
The plaintiff also requested that the Ukrainian National Office for Intellectual Property and Innovations make the corresponding entries in the State Register of Certificates of Ukraine for Marks for Goods and Services and publish information about the invalidation of the certificates in the official bulletin “Promyslova Vlasnist”.
The claim was based on the argument that the disputed designations consist exclusively of signs that are commonly used as generic designations for certain types of goods. In particular, the word “Promedol” is a well-known name of a medicinal product that has long been used by various manufacturers and therefore lacks distinctiveness and cannot obtain legal protection under Article 6 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”.
By decision of the Commercial Court of the City of Kyiv dated 08.04.2019 (and additional decision dated 14.05.2019 on the distribution of court costs), the claim was fully satisfied.
The Northern Commercial Court of Appeal, by its ruling dated 12.12.2022, overturned the decision of the court of first instance and dismissed the claim. The Commercial Cassation Court of the Supreme Court, by its ruling dated 16.05.2023, set aside that appellate decision and remitted the case for a new appellate review.
Following the new appellate review, the Northern Commercial Court of Appeal again overturned the decision of the court of first instance and dismissed the claim by its ruling dated 15.01.2025.
By its ruling dated 06.05.2025, the Commercial Cassation Court of the Supreme Court partially upheld the cassation appeal filed by KALCEKS, AS, set aside the ruling of the appellate court dated 15.01.2025, and left in force the decision and additional decision of the court of first instance.
The Supreme Court agreed with the findings of the court of first instance that the designation “Promedol” constitutes a commonly used generic name of a medicinal product that has long been used by multiple manufacturers. Such a designation cannot be monopolized through trademark registration, even with additional elements such as “-ЗН”, since such elements do not confer distinctiveness.
The Court emphasized that the registration of such a designation does not perform the distinguishing function of a trademark and therefore falls under the absolute grounds for refusal of legal protection.
The Supreme Court also confirmed the correctness of the first-instance court’s assessment of the expert evidence and noted that the appellate court failed to provide proper reasoning for disregarding several expert opinions supporting the plaintiff’s position.