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6 June 2016

Brands & Trends. May 2016

TRADEMARKS: Zero tolerance to non-use of trademark

While one of the beverage giants is fighting for Zero trademark rights on the other side of the Atlantic, Ukrainian brewers are fighting for Ukrainian version of  zero trademark. Yet, the focus of battle in Ukraine differs. The recent court decision in Carlsberg Ukraine vs. First Private Brewery trademark cancellation case has given an important reminder for trademark owners that the top importance for judges is to see and touch a real product for which a trademark is registered, while other evidences are less significant. However, now it seems to be only a part of the test that the Ukrainian courts expect to implement in the future. The court currently wants to not only see a sample of the trademarked product, but also expects to receive evidences, which confirm that it was brought to the relevant market for consumers.

“НУЛЬОВКА” word mark (to be spelled as ”NULYOVKA” and that actually means zero of something) was registered in 2005 for goods in classes 32 (in particular, for non-alcoholic beverages and for beer) and 33 (alcoholic beverages (except beer)) (the “Trademark”) and further assigned to First Private Brewery.

About a year ago, Carlsberg Ukraine (the “Claimant”) filed a lawsuit against First Private Brewery (the “Defendant”) seeking cancellation of the Trademark registration due to its alleged non-use during three consecutive years.

The Defendant disagreed with the lawsuit and along with various documentary evidences (license agreement, delivery notes, other business related documents) provided a bottle of non-alcohol beer bearing the Trademark.

However, the Claimant contended that the bottle of beer provided by the Defendant is not an admissible evidence mainly because the products bearing the Trademark is not available on the market for consumers. To prove its statement, the Claimant provided its bottle of the Defendant’s non-alcohol beer, which does not contain the Trademark. The fact of beer purchase was confirmed by the payment receipt. To further support its position regarding the absence of the relevant product on the market, the Claimant also provided the market research reports and mass media monitoring report.

When assessing the evidences provided by the parties the court held that the Defendant failed to prove that the respective product bearing the Trademark is available on the market for consumers. The court expected to see not only a sample of the product – which was actually provided – but also a payment document, which would prove that the product was purchased on the market. As regards documentary evidences provided by the Defendant, the court held that they do not prove that the relevant product with the Trademark attached to it was available on the market for consumers during three consecutive years.

In view of the above consideration, the court satisfied the claim and decided to terminate validity of the Trademark for all goods for which it was registered.

It seems that the above court decision is not the end of the dispute. First Private Brewery filed two new trademark applications for ”NULYOVKA” word mark, and the Claimant expressed its intent to acquire rights to this mark. However, although the dispute between brewers is likely to continue, the above status quo in the case is an important signal for other non-involved trademark holders that trademarked products should be brought to the market. Otherwise, your trademark may be an easy meat for competitors.

For more information, please contact Oleksandr Padalka or Oleg Klymchuk.

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