Ukrainian singer hits the right note with TAYA cancellation claim

Ukraine

In Povaliy v Ukrainian Macaroni Ltd (Case 20/70), the Commercial Court of Kiev has upheld a complaint brought by the plaintiff - a Ukrainian singer – and has ordered the cancellation of the defendant’s TAYA trademark. It found that the mark was identical to the plaintiff’s famous Taya stage name and had been used without her consent.

The plaintiff, Taisiya Povaliy, has used the Taya stage name in connection with her singing career for a number of years. The name is widely known in Ukraine. Ukrainian Macaroni Ltd (UML) started using the TAYA mark for a pasta product and registered it with the Ukrainian State Department of Intellectual Property. When Povaliy became aware of UML’s use of the TAYA mark, she applied to the Commercial Court of Kiev for cancellation of the registration. She also applied to the Antimonopoly Committee of Ukraine for a ruling that UML’s use of TAYA was an act of unfair competition.

The Commercial Court upheld Povaliy’s complaint and cancelled the registration. It noted that Article 6 of the Ukrainian Trademark Act states that a sign that replicates the name of a person who is well known in Ukraine cannot be registered as a trademark without that person’s consent. The court held that as ULM did not have Povaliy’s consent to use her famous stage name, its TAYA registration was invalid and should be cancelled.

The Antimonopoly Committee of Ukraine has yet to issue its decision on this matter. However, it is likely that the Commercial Court’s decision, together with the results of a special Gallup poll indicating that the majority of people surveyed associated UML’s pasta product with Povaliy’s Taya name, will sway the committee into finding in favour of Povaliy.

Tetyana Glukhovska, Konnov & Sozanovsky, Kiev

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