Kostyantyn Gamkrelidze, Attorney-at-Law and Managing Partner of DEGA Partners, secured a favorable court decision ordering the cessation of the illegal use of the BOSCH trademark in a domain name and on the website ukraine-bosch.com.
Robert Bosch GmbH, the owner of the BOSCH trademark, filed a claim with the Commercial Court of the City of Kyiv, seeking:
The grounds for filing the claim were the deliberate actions of the website owner, who, acting intentionally and with awareness of the unlawfulness of such actions, reproduced and used the proprietary designation, design and stylistic elements of the official BOSCH brand without the consent of Robert Bosch GmbH.
These actions created a false impression that the online store was an official representative or distributor of BOSCH products in Ukraine and that the household appliances offered for sale had allegedly been officially imported into Ukraine.
As a result, consumers and potential buyers were misled regarding:
The defense successfully proved that the unlawful use of the BOSCH trademark in the domain name and on the website misled consumers as to the origin of the products, their configuration and the availability of the manufacturer’s warranty.
The Court agreed with the argument that a consumer who was denied the free warranty service declared on the website https://ukraine-bosch.com at an official service center would associate such negative experience not with the seller operating the website, but with the trademark owner — Robert Bosch GmbH.
This, in turn, formed a negative perception of the manufacturer and the BOSCH brand among both current and potential consumers.
In this context, the Court held that such conduct, taken together with other established violations, entitled the trademark owner to prohibit the use of its trademarks notwithstanding the principle of international exhaustion of rights, as provided for in Article 16 of the Law of Ukraine «On the Protection of Rights to Trademarks for Goods and Services».
The Commercial Court fully upheld the legal position of DEGA Partners and ordered the defendants to cease the use of the BOSCH trademark in the domain name, on the website and in advertising campaigns, as well as obliged the domain name registrar to re-delegate the domain name ukraine-bosch.com in favor of Robert Bosch GmbH.
In addition to granting the claims related to non-pecuniary relief and legal costs, the Court also satisfied the claim for compensation of moral damage caused to the business reputation of Robert Bosch GmbH.
This decision significantly strengthened the liability of the infringer before the brand and opened new opportunities for applying such remedies in modern judicial practice in similar categories of disputes.
The court decision has entered into force and has been successfully enforced.
Link to the court decision: https://reyestr.court.gov.ua/Review/128130352
We congratulate our client on the restoration of their infringed rights!