Trademark owners must exploit their rights fairly

On March 16 2011 the Kiev Appeal Court has upheld a decision of the first instance court dated December 1 2010 in which the latter had cancelled the trademark NAPAPIJRI (Registration 73215), owned by an individual, in its entirety on the grounds of non-use. The cancellation action had been initiated by VF International, which owns the Napapijri sportswear brand in many counties.
The defendant claimed that he used the trademark, under a licence agreement, on his website, in the domain name attached to the website and for online trading, arguing that any of these uses was recognised as "use of a trademark" under Ukrainian law. However, the court ruled that use of a trademark on the internet will be considered to be sufficient only if the mark is used in connection with the products for which it is registered. Use of the trademark on a website or in a domain name without any reference to the products for which the mark is registered will not be considered as genuine use of the mark.

In addition, the court noted that the defendant had not provided evidence that he had manufactured or acquired the relevant products. Similarly, the court found that an advertising agreement submitted by the defendant could not be regarded as evidence of use of the mark, since it had not been proved that the relevant products had actually been advertised under the mark.
On appeal, the Kiev Appeal Court noted that, in the circumstances of the case, the defendant was abusing his rights in the trademark - the applicable law provides that a trademark owner must exploit its trademark rights fairly. Furthermore, the defendant created obstacles against the registration of the trademark by VF International in Ukraine. These were lawful grounds for the cancellation of the defendant's trademark registration.
Julia Semeniy, Konnov & Sozanovsky, Kiev

Unlock unlimited access to all WTR content