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12 December 2014

Brands Update. November – December 2014

Trade name is not to blame

The most recent court practice concerning trade name protection reconfirms the need to ensure due arranging for protection of such intellectual property and its proper use for commercial activity; otherwise the protection of such intellectual property will get notably complicated.

Specifically, the commercial court prohibited “WINE HOUSE GROUP” LLC (Respondent) from using “WINE HOUSE” sign (Sign) that constitutes the English part of the trademark (above left) (Trademark) owned by two individuals and registered already after incorporation of the Respondent under the name “WINE HOUSE GROUP”.

The court found that “KAMIANKA GLOBAL WINE” LLC (Plaintiff) is the licensee of the Trademark that is also authorized to protect intellectual property rights in the Trademark. The Plaintiff argued that the use of English part of the Trademark without a consent of the Trademark owners, in particular, by placing it at shop-windows, shelves, store signs, business cards, packages, as well as using the Sign on its website infringes their rights in the Trademark. The Plaintiff submitted evidences of use of the Sign by the Respondent including "TM" acronym both on business cards and bags, which, according to the opinion of the Plaintiff, proves the use of the English part of the Trademark.

The Respondent, in its turn, asserted that the use of the Sign is absolutely lawful because it is a short trade name of the company which was registered as far back as in 2007, i.e. well before the registration of the Trademark by the individuals. The Respondent submitted evidences of use of the trade name in the form of ‘WINE HOUSE LLC’ (in Ukrainian: ТОВ “WINE HOUSE”).

However, the court rejected such arguments of the Respondent and pointed out that he failed to provide sufficient evidences of use of the trade name in the form that is similar to the English part of the Trademark from the date of incorporation of the company. Also, the court’s own investigation of the Respondent’s constituent documents had revealed that the short name of the company in English is “WINE HAUSE GROUP LLP,” which, according to the opinion of the court, does not confirm the right to use the Sign as a trade name.

Thus, according to the result of review of the case, the court held that the Sign is actually used by the Respondent as a trademark and is identical to the English part of the Trademark and, consequently, infringes the rights of its owners.

Customs Watch: Sports Counterfeit

According to Odessa customs’ web-site 9,000+ pairs of counterfeit sport shoes arrived to the Illichevsk Port from China for further delivery to one of the internal customs offices for customs clearance.

According to the shipping documents the sport shoes are delivered under the trademark SPORT.

However, having completed a series of analytical and operational actions, the officers of Odessa customs found that the sneakers illegally labeled with NIKE or PUMA TMs were actually imported under the cover of SPORT trademark.

The fake nature of the goods was confirmed by IP rights owners.

Import of Goods Containing IP from Free Economic Zone Crimea

On 06 November 2014, the State Fiscal Service of Ukraine (SFS) issued an explanatory letter to clarify specific aspects of assistance in intellectual property rights protection in connection with adoption of the Law of Ukraine No. 1636-VII On Establishing Free Economic Zone Crimea and Peculiarities of Conducting Economic Activity on the Temporarily Occupied Territory of Ukraine dated 12 August 2014 while importing goods that contain intellectual property from free economic zone Crimea (FEZ).In particular, the SFS explained that customs control and clearance of goods containing intellectual property that are imported into or exported from the FEZ are carried out according to the generally established procedure subject to peculiarities stipulated by the Customs Code of Ukraine.

It is important to note that goods containing intellectual property and exported from the territory of Crimea may be subject to suspension of customs clearance due to alleged infringement of intellectual property rights provided that they are registered with the Customs Register of Intellectual Property Rights. Such suspension may equally apply to both goods that are imported into the customs territory of Ukraine for distribution and goods further exported from Ukraine.

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

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