eBay obtains cancellation of EBAY mark for telecommunication services

On October 3 2012 the Solomensky District Court of Kiev ruled in favour of eBay in its action against Ukrainian resident Stasyuk Andriy, the Ukrainian Patent and Trademark Office (PTO) and the domain name registrar NIC.ua.

eBay is an American multinational internet consumer-to-consumer corporation that manages 'ebay.com', an online auction and shopping website through which individuals and businesses can buy and sell a broad variety of goods and services worldwide.

The court invalidated Andriy’s trademark registration for EBAY (No 150439), which is identical to eBay’s word mark EBAY, and ordered that the domain names 'ebay.com.ua' and 'ebay.co.ua', which had been registered by Andriy, be transferred to eBay.

The Ukrainian PTO had registered Andriy’s trademark EBAY in Class 38 of the Nice Classification (telecommunication services) on January 10 2012, while two of eBay’s trademarks (word and logo) had been registered in Class 35 (advertising and business services) on December 16 2002 and September 10 2009.

When granting protection to Andriy’s trademark, the PTO did not consider that services in Classes 35 and 38 were related. However, during the proceedings, a court examiner appointed by eBay established the similarity of the services in Classes 35 and 38, and the court ruled that Andriy’s trademark could mislead consumers as to the provider of the services.

Maya Kryvoshei, PETOŠEVIĆ, Kiev