Trade Mark protection in litigation

Representation by an Attorneys at Law of DEGA Partners Advocates Union (AU) of the interests of a non-resident legal entity in the case of the protection of intellectual property rights and compensation for damages.

A foreign company – the owner of the trademark, was forced to go to court for the protection of intellectual property rights because, without the appropriate permission of the owner to use trademarks, on the territory of Ukraine imported and further commercialized products with trademarks on their labels belonging to a non-resident legal entity.

In 2020, the Claimant became aware that for the period from 2016 to 2020 inclusive, further commercial distribution of products in the territory of Ukraine was imported and carried out for a total amount of 1,374,270.54 Euros.

To identify a legal entity, which during 2016-2020 was responsible for the placement (registration) of products in the import customs regime, customs declarations (form MD-2) were requested from the State Customs Service of Ukraine within the framework of court proceedings.  

The Defendant, objecting to the claim, referred to the confirmation of the chain of supply of the goods and the absence of violation of any intellectual property rights of the Claimant or other persons in the sale of products in Ukraine, since under the requirements of Part 6 of Article 16 of the Law of Ukraine “On the protection of rights to marks for goods and services “- the right of the owner of the certificate to prohibit other persons from using TM without his consent does not apply to the use of TM for goods introduced under this TM into civil circulation by the owner of the certificate or with his consent.

In addition, Defendant, arguing that the trademark owner had consented to the introduction of the product into civil circulation, argued that the Claimant’s head was the same person as the head of the seller of the product in the supply chain.

The exclusiveness of this dispute is that, according to the legal position of the Supreme Court, set out in the Decree of 03/17/2020 in case No. 911/2674/17, the introduction of goods into civil circulation by the owner of the certificate or with his consent is possible on the territory of a state other than Ukraine.

The Supreme Court recognized that the seller’s lack of the right to sell the disputed goods does not indicate the bad faith of the buyer acquiring ownership of the disputed goods and does not confirm the illegality of its import into the territory of Ukraine.

The lawyers of DEGA Partners AU have successfully applied in this litigation the provisions of the requirements of paragraphs 7-9 of Art. 16 of the Law of Ukraine “On the protection of rights to marks for goods and services”, according to which the owner of the certificate can transfer to any person the exclusive property rights of intellectual property to the trademark in full or concerning a part of the goods and services specified in the certificate, the owner of the certificate has the right to provide permission (to issue a license) to any person to use the trademark based on a license agreement; moreover, an agreement on the transfer of ownership of a trademark and a license agreement is considered valid if they are concluded in writing and signed by the parties.

In addition, the lawyers of DEGA Partners AU have proved in court the existence and amount of damages caused to the non-resident legal entity, the unlawfulness of the conduct of the causing of damages – Defendant, and the causal connection of such conduct with damages caused.

As a result, the court supported the legal position of the lawyers of DEGA Partners AU in the case and noted that the subject of the dispute is not the illegal sale of products of a certain composition and destination,  but the illegal use of trade designations and markings applied to the packaging of products, therefore, the fact of purchasing the goods from the manufacturer outside Ukraine does not grant the right to introduce such products into civil circulation on the territory of Ukraine under the mentioned trademark without the agreement of the owner of the trademark.

Defendant’s argument that the director of the plaintiff and the company of the seller in the supply chain were the same person did not refute the fact that there was no contract for the transfer of ownership of the trademark concluded with the rightful owner of the trademark.

Thus, the court concluded that it was illegal for Defendant to use the Claimant’s trademarks.

In addition, the Court:

– it is forbidden for Defendant to the realization (selling) on the territory of Ukraine in any way to consumers, storage to offer for sale, offering for sale of products with signs on its label for goods and services belonging to the Claimant.

Recovered from Defendant – 109 941 (one hundred nine thousand nine hundred forty-one) Euro 64 Eurocents of losses, 40 156 (forty thousand one hundred fifty-six) UAH. 74 kopecks examination costs, 129 383 (one hundred twenty-nine thousand three hundred eighty-three) UAH. 60 kopecks. expenses for professional legal assistance, 57 482 (fifty-seven thousand four hundred and eighty-two) UAH. 74 kopecks court fee.

We congratulate the Client on the Restitution required!