Court issues rare decision on well-known trade names

Ukraine

On March 30 2012 the Solomyansky District Court of Kyiv ordered the cancellation of the trademark BALTIKA, registered for goods in Classes 29 ("processed peanuts, prepared nuts, raisins, ground almonds"), 30 ("peanut confectionery, confectionery, fried almonds") and 39 ("packaging of goods") of the Nice Classification.

The plaintiff, JSC Baltika Breweries (VAT Pyvovarna Kompaniya Baltika), brought an action against a natural person, seeking cancellation of the trademark BALTIKA (Registration 43973, granted on October 15 2004).

The plaintiff argued that the defendant’s mark (below, top) was confusingly similar to:

  • its international figurative mark BALTIKA (International Registration 696700) (below, bottom), which covered goods in Classes 32 ("non-alcoholic beverages, beers") and 35 ("advertising, updating of advertising documentation"); and
  • the plaintiff’s well-known trade name in Ukraine, VAT Pyvovarna Kompaniya Baltika.

The defendant argued that:

  • his trademark and the plaintiff’s corporate trade name were different means of identification; and
  • he had acquired the right to use the mark by law and, as a result, neither of the parties could use the marks without obtaining the other party’s approval.

The defendant stressed that the two trademarks were not exactly identical; he also noted that the marks were registered for different classes, and that beer, nuts and confectionery were not homogeneous products.

The court agreed that the plaintiff’s trade name was well known in Ukraine at the date on which the defendant filed the application for registration of his trademark (September 12 2002). The court arrived at this conclusion after considering evidence (eg, contracts and financial statements) submitted by the plaintiff and information on:

  • the volume of sales and services;
  • the duration of use of the trade name;
  • the geographical area where the services were provided; and
  • the degree of awareness among consumers as to the connection between the trade name and the plaintiff.

Following two expert investigations, the court reached the following conclusions:

  • The goods in Class 32 ("tea, coffee, non-alcoholic beverages") were similar to the goods in Class 29 ("processed peanuts, prepared nuts, raisins") and Class 30 ("peanut confectionery, confectionery, fried almonds").
  • The goods in Classes 29 and 30 ("processed peanuts, prepared nuts, raisins, peanut confectionery, confectionery, fried almonds") were similar to "beer" in Class 32. Because beer can have different tastes - from bitter to sweet - it might require snacks that help combine the different tastes with similar or opposite characteristics.
  • "Packaging of goods" in Class 39 was similar to "updating of advertising material" in Class 35.
  • Use of the defendant’s mark was likely to mislead the relevant public as to which company produced the goods or rendered the services.
  • On the date on which the defendant filed the application for registration, with regard to the goods and services in Classes 29 (especially "ground almonds"), 30 and 39, the contested mark was similar to the plaintiff’s corporate trade name to such a degree that the two could be confused.

The court thus held that the defendant's trademark should be invalidated. This case is important because it takes into consideration the issue of well-known trade names. Although this issue has been regulated since 1927 with the Soviet Decree on Firms and, later, by amendments to the legislation, the case law is still unconsolidated and sporadic in this respect.

Yuriy Karlash, PETOŠEVIC, Kiev 

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