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6 October 2014

Brands Update. September 2014

Quite similar, but rather different

Despite strong confusing similarity to a registered trademark, the mark filed for registration nevertheless may be registered subject to a balanced approach to the choice of goods / services.

It is hard to escape such conclusion when analyzing one of the most recent decisions made by the Board of Appeal of the State Intellectual Property Service of Ukraine ("Board of Appeal") further to hearing the appeal filed by a trademark applicant ("Appellant"). The Appellant appealed against the refusal of the Ukrainian Trademark and Patent Office (“UPO”) to register a figurative trademark "RC" (above left) for all services of class 35 ("Filed trademark") due to its strong similarity to the figurative trade mark "RC" (above right) registered earlier in the name of a Swiss company for services of class 35 ("Conflicting trademark").

When challenging the UPO decision before the Board of Appeal the Appellant asserted that the Filed trademark could enjoy legal protection to the extent of selected services of class 35, i.e., not confusingly similar to the Conflicting trademark (different kinds of services, different intended purposes and nature of services, different terms and location of rendering services). Appellant’s position was based on a shortened list of services and explanations that the Filed trademark would be used only for retailer services, while the Conflicting trademark was registered for consulting and intermediary services.

Having reviewed the appeal, the Board of Appeal came to conclusion that legal protection may be granted to the Filed trademark for the claimed services of class 35 irrespective of its general similarity to the Conflicting mark. The Board of Appeal pointed out that the trademarks are used for non-related services, notwithstanding their registration for class 35. According to the Board of Appeal, although related services are ranged into classes, it should not be the only basis for establishing the similarity. The Board of Appeal further emphasized that the basic criteria for establishing similarity should be the intended purpose of services provided in connection with a particular activity. Specifically, services of the same kind which are provided in different areas of business can not be qualified as related.

Despite the fact that the decision of the Board of Appeal is, in our opinion, frivolous to some extent, it may be nevertheless treated as a benchmark for similar cases (disputes).

IP Customs Watch Monitor: Southern Customs Activity Preventing Import of Counterfeit

The Ukrainian Alliance Against Counterfeiting and Piracy posted information about July-August 2014 enforcement actions taken by the Southern Customs to assist IP protection in the course of customs clearance of goods. In particular, during the said period the Southern Customs suspended customs clearance of about 6000 items of various goods (school bags, lawn mowers, chainsaws, trimmers, handbags, belts) due to suspected infringement of intellectual property rights.

To cease infringement of intellectual property rights and upon consent of rights holders, the elements of infringement have been removed from the goods and their packaging, such removal gave reasons to further proceed with customs clearance.

Customs Does Not Green Light to Design Patent Trolling

On 15 September 2014, the State Fiscal Service of Ukraine ("State Service") issued a letter ("Letter") to the Heads of Customs Offices clarifying certain issues of protection of intellectual property rights in designs in the course of transfer of goods across the customs border to avoid unsubstantiated delays of customs clearance. The purpose of such explanation is to prevent any abuse by bad-faith owners of design patents by prohibiting import of goods in connection with the alleged use of their designs.

The State Service pointed out that any imported product manufactured by employing essential elements of the design shall be recognized as being manufactured by using the patented design. Further, the element shall be qualified as essential if it has an effect on the appearance of the product characterized by it. Therefore, if the declared goods do not contain all essential elements of the design, import or export of such goods does not constitute an infringement of IP rights, and, thus, administrative proceedings stipulated by the Customs Code with respect to assistance in intellectual property protection shall not be initiated.

At the same time, the Letter does not provide a guidance on how to determine the essential elements of the design without suspending the customs clearance and conducting an examination. Apparently, unless more detailed explanations are in place, the availability / absence of essential elements will be determined on a case-by-case basis by respective customs officer. Consequently, it looks reasonable for the rights holders to raise awareness of customs with respect to essential elements of their designs.

UAH 500k Valued Fake Sportswear Seized by Police

As a result of the recent inspection, officers of the State Service for Combating Economic Crime in the Kherson region detected two shops selling counterfeit sportswear under a famous brand. The representative of rights holder confirmed that the goods were counterfeit.

The entrepreneurs admitted their guilt but objected to seizure of faked goods and their further examination. Nevertheless, the police officers seized the counterfeit. The goods will be subject to special examination after which an appropriate decision will be made. The total estimated value of the goods is over UAH 500k. The damages will be calculated by a subsidiary of the rights holder. Based on these facts the police initiated criminal proceedings on illegal use of the trademark.

Recent Brand Protection Publications

Destroying a False Mirror: 10 Tips for Rights Holders to Know about Destruction of Fakes in Ukraine (in English)

For more information, please contact Oleksandr Padalka or Oleg Klymchuk, or e-mail us at Brand-protection-team@sk.ua.

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