Kiev court brushes toothpaste mark off register

The Kiev Commercial Court has upheld an invalidation action against the mark NOVIJ SCHEMCHUG (meaning 'new pearl') for toothpaste. The court found that the mark was confusingly similar to the earlier SCHEMCHUG mark (meaning 'pearl') for the same type of goods (Case 21/793, July 21 2004).

Ukrainian toothpaste producer Olvia Corporation has held a registration for the mark SCHEMCHUG for toothpaste in Class 3 of the Nice Classification since 1998. In 2000 Nevskaya Kosmetika, a Russian cosmetics manufacturer, started importing its toothpaste products into Ukraine under the mark NOVIJ SCHEMCHUG for which it held a registration in Russia. It subsequently applied to register NOVIJ SCHEMCHUG in Ukraine. In September 2003 Olvia filed an action with the Kiev Commercial Court seeking invalidation of the NOVIJ SCHEMCHUG mark.

The court upheld Olvia's claims. It found that (i) the marks were confusingly similar, and (ii) Olvia had prior rights in the mark SCHEMCHUG as it had registered it two years before Nevskaya Kosmetika registered its NOVIJ SCHEMCHUG mark in Ukraine.

Nevskaya Kosmetika has appealed to the Supreme Commercial Court of Ukraine.

Tatiana Gluhovskaya, Konnov & Sozanovsky, Kiev