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Managing Partner of IP and Law Firm Pakharenko and Partners, Dr. Jur, Trademark and Patent Attorney No. 4
Legal Protection of Well-Known Trademarks
In the context of the modern consumer market, trademarks have become an inalienable part of the economy enabling businesses to increase the competitiveness of their goods and services. Trademark owners are going the extra mile to make their trademarks famous and recognizable among consumers. Meanwhile, unscrupulous entrepreneurs are also showing their interest in well-known trademarks, perceiving the use of someone else’s intellectual property as a quick and easy way to make a profit. In such cases, obtaining recognition as well-known for their trademarks becomes an effective way in which right holders can protect their rights.
Benefits of Protection Covered by Well-known Trademarks:
Protection is granted based on the virtue of fame and without mandatory registration.
Protection of a well-known trademark extends to goods and services which are not related (similar) to those in respect of which the trademark has been recognized as well-known if the use of this trademark by another person for such goods and services may suggest any link between these goods and services and the owner of a well-known mark and his/her interests are likely to be damaged as result of such use. (Art. 6-bis of the Paris Convention on the Protection of the Industrial Property, Art. 16 of TRIPS Agreement). In such a case, as practice shows, for the assessment of the lawfulness of the use of a similar trademark a sufficient criterion would be the likelihood of bringing association in consumers with a well-known trademark that may lead to confusion and, thus, damage the reputation of the latter, result in infringement of IP rights with regard to a well-known trademark and result in its dilution.
The duration of legal protection of a well-known trademark is unlimited as opposed to ordinary trademark registrations that need to be renewed every 5 years.
The actual time since which a trademark is recognized well-known counts not from the date on which a decision is taken but from an earlier date from which recognition is requested by the rights holder.
National Procedure for Recognition of a Trademark as Well-known
According to Article 25 of the Law of Ukraine On Protection of Rights to Marks for Goods and Services (hereinafter — the Law), trademarks shall be recognized as well-known based on the decision of the Chamber of Appeals of the Ministry of Economic Development and Trade, which may be subject to an appeal, or through a court. A well-known mark shall be protected in the same way as if an application for registration in Ukraine had been made on the date as of which the mark was recognized as well-known by the Chamber of Appeal.
By 1 February, 2018, 169 trademarks have been recognized as well-known in Ukraine according to the data available on the website of the State Enterprise Ukrainian Intellectual Property Institute. 129 of these trademarks were recognized as well-known under the administrative procedure by the Chamber of Appeal, and 40 trademarks through courts.
Procedure of Recognition of a Trademark as Well-known At Chamber of Appeal
An application for recognition of a trademark as well-known on the territory of Ukraine shall be accompanied by the relevant documents containing actual data, which, in the opinion of the rights holder or his/her representative, prove the famousness of a trademark in relation to the goods and/or services for which it is used as on the date mentioned in the application.
Practical case: In 2015, in the course of obtaining recognition as well-known in Ukraine for the trademark WD-40 in the name of WD-40 Manufacturing Company, USA, in respect of goods of Class 02 of the Nice Classification: anti-corrosive products for metals, anti-rust products (anti-rust compositions), anti-corrosive preparations; anti-corrosive oils, anti-tarnishing preparations, protective preparations for metals; Class 04 of the Nice Classification: lubricating and impregnating oils, as on 1 January 2005, in determining whether a mark is well-known among the specific consumer sector the following data have been considered. According to the terms of the survey, the most relevant consumer sector determined for this trademark was consumers aged 18-65 who use multi-use products — lubricants, anti-corrosive preparations for metals, anti-rust preparations for metals, anti-rust products, particularly drivers of vehicles, persons involved in the servicing and maintenance of vehicles. The survey was conducted in 16 cities of Ukraine and covered 2,750 respondents. The results obtained showed that 93.9% of respondents know the trademark WD-40; 66.8% of respondents believe that this trademark is used for such products as anti-corrosive preparations for metals (anti-corrosive oils, preparations for protecting metallic surfaces from tarnishing and rust, anti-rust preparations; anti-tarnishing agents); 43.6% of respondents believe that this trademark is applied on lubricating materials, lubricants and impregnating oils, 33.5% believe that the mark is used for car care products (vehicle chemicals and cosmetics), 14.8% believe it is applied on industrial oils. 33.0% of respondents first learned about such products bearing the WD-40 trademark from 1 January, 2000, 31.2% — from 1 January, 2005, and 11.2% after 1 January, 2010. A total of 67.1% of respondents believe that the WD-40 trademark is owned by the WD-40 Manufacturing Company (USA).
In view of the aforementioned, the panel of the Chamber of Appeal decided that the applicant had proved the fact that the WD-40 trademark is well-known to the relevant sector of consumers on the territory of Ukraine.
Practical case: In 2011 in the course of obtaining recognition as well-known in Ukraine for the NIKE trademark in the name of NIKE INTERNATIONAL LTD, in respect of goods of Class 25 of the Nice Classification: “sports goods, footwear and headgear” as on 1 January, 2006, when evaluating the duration, scope and geographical area of the use of the trademark the following data was considered. Information available on the Internet about the history of the establishment and development of Nike (established in 1964), printout from Wikipedia, information from 17 official websites of the company visited everyday by 100,000-150,000 Internet users (with total of 1 million views of webpages of these websites). Information regarding the applicant and products manufactured under the NIKE trademark; 17 million webpages found internationally using Yandex search engine and 329,000 webpages found in Ukraine. If we set the time period from 1 January, 1996 to 1 January, 2006, a total of 114,000 pages were found. Total revenues for the period from 1979 to the 2010 fiscal year came to USD 216,763,255,000, and each year, starting from the date of commencement of sales of products marketed by the TM NIKE in Ukraine (1999), annual growth was seen in the sales of such products. The exclusive distributor of products sold under the NIKE trademark has 24 stores, the first of which was opened on 1 April, 1999 in the city of Kyiv. In addition, the applicant’s products are offered for sale in 64 non-food markets, in 136 multi-brand stores in 28 cities of Ukraine, and sold in more than 70 online stores.
In view of the aforesaid, the panel of the Chamber of Appeal came to the conclusion that information about the volumes of sale of products under the NIKE trademark show that as on 1 January 2006 these goods were represented to a sufficient extent in the trade network of Ukraine and consumers had the opportunity to get acquainted with them.
Recognition of a Well-known Trademark Through Court
Generally, such requests are considered by courts in those cases where there is a dispute regarding protection of trademark rights and where the request for recognition of well-known trademark comes together with a request for invalidation of the conflicting trademark registration. For example, in cases where a defendant: registered and/or is using a trademark the essential part of which is the reproduction of a well-known trademark, which may cause confusion with the latter; registered and/or is using a trademark for non-related goods and services; registered and/or is using a domain name which is in conflict with a well-known trademark. In the course of consideration of such cases, the courts evaluate actual data (evidential base) in light of the relevant factors specified in paragraph 2 of Article 25 of the Law.
Practical case: By the decision of the Kyiv City Commercial Court of 19 July, 2006 in case No. 21/292 (regarding invalidation in full of the Certificate of Ukraine No. 28690 for a trademark owned by Intelektualni komunikatsii, LLC) that came into force on 4 December, 2006 taking into account the ruling of this court of 4 March, 2011, the trademarks ИНТЕЛ, INTEL owned by the Intel Corporation (USA) and covering goods and/or classes 9, 16, 25, 28, 36, 38, 40, 41, 42 of the Nice Classification were recognized as well-known on 25 July, 1997.
By the decision of the Kyiv City Court of Appeal of 5 June 2014 in case No. 22-7795 (regarding recognition of the HONDA trademark as well-known and invalidation of the Certificate of Ukraine No. 58723 for the HONDA trademark) that came into force on 5 June, 2014 the HONDA trademark owned by Honda Motor Co., Ltd and registered for goods of Class 7 of the Nice Classification, namely machines and machine tools, their parts; engines (other than for land vehicles), including engines for boats, electric motors and electric generators, motor pumps; agricultural implements, other than hand-operated tools; lawn mowers, trimmers and their parts, and also for goods of Class 12 of the Nice Classification, namely vehicles, apparatus for locomotion by land, water, their parts, was recognized as well-known as on 1 January, 2003.
“Information about Well-Known Marks in Ukraine” database
Information on trademarks which have been recognized as well-known by the decision of the Chamber of Appeal, are published in the official bulletin “Industrial Property” in accordance with paragraph 8 of the Order of the Ministry of Education and Science of Ukraine of 15 April, 2005, No. 228, and is also available on the official website of the State Enterprise Ukrainian Intellectual Property Institute at http://www.uipv.org/ua/bases2.html.
With regard to the procedure on publication of court decisions, if the plaintiff does not request in his/her claims to oblige the Patent Office to publish information about the recognition of a trademark as well-known in the official bulletin “Industrial Property” and include this information in the “Information about Well-Known Marks in Ukraine” database on the official web-site of the Ukrainian Intellectual Property Institute at http://www.uipv.org/ua/bases2.html, then such publication will not be made.