Case № 910/13988/20
Plaintiff: Private Joint Stock Company “Pharmaceutical Firm “Darnytsa”
Defendants: State Organization ”Ukrainian National Office for Intellectual Property and Innovations”
Joint Stock Company “Lubnypharm”
Lawsuit re: recognition of the trademark as well known, the recognition of the certificate of Ukraine on the mark for goods and services that are ineffective, requirement to carry out actions.
The case concerned a dispute between PrJSC “Pharmaceutical Firm Darnytsa” and JSC “Lubnypharm” regarding the protection of a sign as a well-known trademark in Ukraine for goods in Class 05 of the Nice Classification, namely pharmaceutical products. The claimant sought recognition of the sign as a well-known trademark in Ukraine as of 1 January 1997, an order requiring UANIPIO to include the relevant information in the list of well-known trademarks in Ukraine, and invalidation of a Ukrainian trademark certificate for a similar mark owned by JSC “Lubnypharm”.
The courts of first instance and appeal granted the claim. They found that the claimant’s sign had acquired broad recognition in Ukraine before the date on which the defendant filed its application for registration of the disputed trademark. The lower courts also concluded that the defendant’s mark was confusingly similar to the claimant’s sign and that the corresponding trademark certificate should therefore be declared invalid.
In its cassation appeal, JSC “Lubnypharm” argued that, as of 1 January 1997, Ukrainian legislation did not recognize a well-known trademark as a separate object of intellectual property rights and did not provide a special procedure for recognizing such a mark. The appellant also challenged the assessment of evidence by the lower courts and argued that the claimant had missed the limitation period.
The Grand Chamber of the Supreme Court examined the application of Article 6bis of the Paris Convention for the Protection of Industrial Property. It noted that this provision establishes a minimum level of protection for well-known trademarks. Since the Paris Convention has been in force for Ukraine since 25 December 1991, the Court accepted that well-known trademarks could be protected in Ukraine even before detailed national rules on the recognition procedure were introduced.
At the same time, the Grand Chamber made an important clarification: judicial recognition of a trademark as well-known is not, in itself, an independent remedy. Rather, it is the establishment of a legal fact that may be relevant for resolving a specific dispute, such as a claim to prohibit the use of a sign or to invalidate a conflicting trademark registration.
In addition, the Grand Chamber concluded that the lower courts prematurely invalidated Ukraine's certificate for the disputed trademark, as they failed to properly examine the parties' arguments and evidence regarding the use of the disputed designation by various manufacturers before January 1, 1997, the presence or absence of its distinctive character, the grounds for granting legal protection, and the issue of the application of the statute of limitations.
As a result, the Grand Chamber partially allowed the cassation appeal of JSC “Lubnypharm”, set aside the decisions of the lower courts, and dismissed the claims seeking independent recognition of the sign as a well-known trademark and inclusion of the relevant information in the list of well-known trademarks in Ukraine. However, the part of the case concerning invalidation of the disputed Ukrainian trademark certificate was remitted for a new examination by the Commercial Court of Kyiv.