Higher Commercial Court remands YAMATA Case for new trial

In the long-running dispute over the trademark YAMATA, the Higher Commercial Court of Ukraine has reversed lower court decisions and remanded the case for a new trial (March 3 2008).

Japanese company Yamato Mishin Seizo Kabushiki Kaisha, a manufacturer of industrial sewing machines, sought to register the trademark YAMATO in Ukraine. Fejui Fengrenji Jituan Hongsihad had already registered the trademark YAMATA in Ukraine for similar goods.

Although Fejui had not made use of its registration for YAMATA, it complied with the applicable rules and regulations. However, Yamato contested the fact that Fejui, a Chinese company, was using the Japanese word 'yamata' as a trademark. It filed suit against Fejui, seeking:

• the cancellation of the trademark YAMATA in Ukraine;
  
  
• an injunction preventing Fejui from using the YAMATA mark; and
  
  
• an order directing the Ukrainian Patent Office to inform the International Bureau of the World Intellectual Property Organization of the cancellation of the YAMATA mark in Ukraine.

Both the Kiev Commercial Court and the Kiev Appellate Commercial Court dismissed Yamato's claims. Yamato appealed to the Higher Commercial Court of Ukraine, alleging violations of procedural due process and material law.

In an interlocutory decision, the Higher Commercial Court held that the lower courts had failed to take into consideration all the conclusions of the hearings (eg, the finding that the average consumer was likely to be confused as to the origin of the goods covered by the YAMATA mark). Moreover, the Kiev Commercial Court had exceeded its authority in finding that there was no likelihood of confusion between the marks. In addition, the Higher Commercial Court found that the Kiev Commercial Court had erred in applying the current legislation to the issue of non-use, as it was not in force at the time. Therefore, the court had disregarded the general principle of non-retroactivity.

Consequently, the Higher Commercial Court reversed the decisions of the lower courts. As the court does not have the authority to issue a new decision based on disputed evidence, it remanded the case for a new trial.

Helen Zhylinkova, Konnov & Sozanovsky, Kiev