Recognising Trademark as Well-known by Court: the Grand Chamber of the Ukrainian Supreme Court has Delivered a Practice-changing Judgement in the Trademark Dispute Between Two Ukrainian Pharma Companies

The litigation between "Pharmaceutical Firm "Darnytsia" PJSC ("Darnytsia") and "Lubnyfarm" JSC ("Defendant") (case No. 910/13988/20) has reached an interesting conclusion in the Resolution of the Grand Chamber of the Supreme Court (the "Grand Chamber").  

The Resolution has already attracted the attention of the Ukrainian IP community and is among the key legal sources going forward in the field of recognition of trademarks (TM). Before the discussed case, recognizing the TM as well-known by the court was one of the possible scenarios to cease specific infringement (usually, in the most complex, difficult, and priority-sensitive cases). In fact, Article 25 of the Trademark Law specifically provides that the TM can be recognized as well-known either by the Appeals Chamber of the Ukrainian IP Office ("Appeals Chamber") or by the court (though without providing any further details). 

In the case regarding the recognition of the Citramon trademark well-known, Darnytsia went the usual way for such cases and requested the court to first (under a separate court claim within a lawsuit) recognize the Citramon trademark as well-known as of January 1, 1997, for goods in class 05 for pharmaceuticals and then, based on the well-known status established, invalidate the "conflicting" TM certificate of the Defendant. Citramon is a family of paracetamol-based medications broadly used in Ukraine that has been in production for several consecutive decades.  

The first-instance court decided in favor of Darnytsia, recognized the Citramon trademark as a well-known trademark, and, on that basis, invalidated the Defendant's "Citramon U" trademark. The court of appeal upheld the decision of the first-instance court. The Defendant disagreed with such decisions and lodged a cassation appeal. 

In accepting the case for consideration, the Grand Chamber concluded that there was legal uncertainty in applying to the court as the authority authorized to recognize a trademark as well-known (along with the Appeals Chamber). 

In this case, the Grand Chamber took the following stance: 

Equally, according to the Grand Chamber, recognizing TM as well-known by the Appeals Chamber does not have erga omnes significance. i.e., it should not extend outside relations between the owner of a well-known TM and the IP Office. In particular, once the TM is recognized as well-known by the IP Office and included in the respective list of well-known trademarks, the IP Office will be able to rely on such well-nowness when examining other trademark applications (though we believe that it does not preclude the use of well-known TM decision of the IP Office as evidence for the court cases). Only trademark registration under national or international procedure has erga omnes significance. 

Given that Darnytsia's claim for recognition of Citramon's trademark as well-known was standalone, the Grand Chamber denied the claim as inappropriate. The remaining case was returned to the first-instance court for repeated consideration.  

The Grand Chamber also paid attention to the statute of limitations issue, especially regulations under Article 6bis of the Paris Convention (minimum five-year statute of limitations and no statute of limitations in case of bad faith use). In this regard and when assessing regulation under Article 6bis of the Paris Convention regarding bad faith use of TM, the Grand Chamber, for illustrative purposes (but not as a source of law), referred to Judgment in Case C-482/09 (Anheuser-Busch and Budějovický Budvar), arguing that parallel use of the same TM by various producers does not ultimately mean bad faith use. Apparently, statute of limitations issues would need to be reassessed during the first-instance court's repeated consideration of the case. 

Although there is no progress in the case discussed at the newsletter date, this court case already affects similar cases. For example, there is already the Supreme Court decision in another trademark dispute where the court satisfied a motion for waiving a separate claim regarding recognition of TM as well-known and leaving only claims that deal directly with well-known TM infringement. 

The decision of the Grand Chamber is important and will have far-reaching consequences for rightsholders seeking protection of their trademarks in Ukraine. It is safe to assume that there is a clearer (though not crystal clear) separation of competence between the courts and the Appeals Chamber in the field of recognition of TM as well-known. Recognizing TM as well-known by the court can help to cease specific trademark infringements (usually the most complex, difficult, and priority-sensitive). Still, it will not always work for other trademark enforcement efforts nor equally replace the decision of the Appeals Chamber. Finally, we expect it will become more difficult to protect well-known TM in cases where there is no prior recognition of the well-known status of TM by the Appeals Chamber.  

In any case, it remains to be seen how further court practice regarding well-known TMs, especially those recognized by the court, would develop. To be continued… Fingers crossed, this new practice will not become a monster the court created and will need to be destroyed by further court practice.