Abandonment of challenged registrations does not affect invalidation action

The Kiev Commercial Court has ordered the cancellation of the trademarks BOLAREN and DOLAR (Ukrainian Registrations Nos 57823 and 128466, respectively) and of a design patent representing the trade dress for the Dolar medicine (Design Patent No 19871), which were owned by Ukrainian company Rainbow Ltd (Matter No 20/348, May 13 2014).

The claims for cancellation were based on the earlier Ukrainian trademark DOLAREN (Ukrainian Registration No 22479), owned by Nabros Pharma Pvt Ltd (India).

During the course of the action, the respondent had asked the court to postpone the proceedings in order to provide evidence that the challenged trademark registrations and the design patent had been abandoned. However, the court ruled that such abandonment did not affect the proceedings, since the consequences of abandonment by the owner of a trademark registration/design patent and those of invalidation due to a court decision are different - abandonment means that the respective registration shall cease to be valid for the future, while invalidation due to a court decision on the basis of prior rights shall have retrospective effect (ie, the registration shall be invalid from the filing date of the application (for a trademark) or the publication date (for an industrial design)). In view of the foregoing, the respondent’s request was rejected, and the matter was heard on the merits.

According to local practice, the court entrusted certified experts to examine the similarity between the claimant’s trademark and the design and trademark owned by the respondent, as well the similarity between the goods covered by the respective registrations (mainly pharmaceutical products in Class 5 of the Nice Classification). The court also took into account the evidence showing active use of the DOLAREN trademark by the claimant and actual conflict between the parties products (ie, both parties' products were sold in the same drugstores).

As far as the design patent was concerned, the court ruled that the DOLAR designation included in the challenged design under Design Patent No 19871 was confusingly similar to the claimant’s trademark, and restricted the trademark rights of the claimant arising out of the registration for DOLAREN. In terms of the legal framework, the design patent was invalidated on the basis of Ukraine's Law on the Protection of Rights to Industrial Designs, which provides that a design patent shall be invalidated where it was issued following an application that infringed third-party rights.

Julia Semeniy, Asters, Kiev