Disputes relating to trade marks. Ukrainian experience.
(April 2015)
Kseniya A. Kuptsova, The Head Of The Customs & Corporate Lawyers (Ukraine) (Ukraine, Kiev)
In recent years, as trade marks are one of the main means of individualization of goods, and often the most valuable asset a business has increased significantly the number of disputes between interested in exporting or importing their products owners from different countries. I was no exception here, and Ukraine.
Among the most high-profile court cases may be noted the claim of the Russian confectionery factory "Red October" to the State Intellectual Property Service of Ukraine and the confectionery company "AVK".
The Russian company has demanded to terminate the certificates AVK trademark "Red Riding Hood", the official which expires in September 2016. It should be noted that the AVK registered rights to the brand in 2001 in Ukraine. Ukrainian company believes that the brand "Red Riding Hood" is a so-called Soviet Trademark Office. Candy with the same name released almost all confectionery factories of the Soviet Union. Therefore AVK believe that the claims of "Red October" unfounded.
Meanwhile, it is not the only dispute between Ukrainian and Russian companies. Court for intellectual property rights (Russian Federation) drew AVK to administrative liability under article 14.10 of the Administrative Code of the Russian Federation, upon importation into the territory of the Russian confectionery products placed on the packaging of the verbal element "Strawberry gone crazy". The Court found that between this element and the word mark "strawberries", the copyright of which is of "Red October" has similarities to the point of confusion.
Position AVK based on the fact that "crazy strawberry " is not an independent trademark and only a Russian translation of the trademark "Shalena Polunitsya", registered in the Russian Federation with an earlier priority date than the trademark.
However, the court pointed out that the phrase "gone crazy strawberry " is not a literal translation of the phrase "Shalena polunitsya" from Ukrainian into Russian (the literal translation of the phrase "Shalena polunitsya" - "crazy strawberry" whereas "gone crazy strawberry" is translated into the Ukrainian language as "ochmanila polunichka"). In this regard, according to the court, there is no reason to believe that the packaging of goods belonging to the AVC used the trademark "Shalena Polunitsya".
Russian court for intellectual property rights is also considered the dispute between the Ukrainian company "Slobozhanskiy mylovar" and the Federal Service for Intellectual Property of Russia to recognize the illegal refusal to register the trademark "porsche" for all products 3 class of service class 35 of the Nice Classification because it violates paragraph 6 of Article 1483 Civil Code of the Russian Federation.
Court, siding with Rospatent considered that consumers may be misled because of the similarity to the trademark claimed "Slobozhanskiy mylovar" refer to the trademarks of the German carmaker Porsche AG. Thus automakers did not represent to the court evidence to support the production of cosmetic products under its own brand.