The Commercial Cassation Court Within the Supreme Court: Average Consumer's Perception of Trademarks is Crucial in Their Comparison

On February 9, 2023, the Supreme Court composed of the panel of judges of the Commercial Cassation Court examined case No. 910/5028/21 on the company's claim against the plant and the State Enterprise "Ukrainian Institute of Intellectual Property" (Ukrpatent) to invalidate the decision to register the "MIRONOFF" trademark and to terminate the infringement of the plaintiff's intellectual property rights.

The claim is substantiated by the fact that the "MIRONOFF" sign submitted for registration does not meet the conditions for granting legal protection, as it is similar to the plaintiff's trademarks and the "Nemiroff" sign, which is recognized as well-known in Ukraine in relation to the plaintiff, and the registration and further use of the disputed sign will lead to infringement of the plaintiff's intellectual property rights.

When overturning the first instance court's decision granting the claim and delivering a new decision dismissing the claim, the court of appeal relied, inter alia, on the fact that the company did not exercise its right to file opposition to the plant's application on the grounds that the disputed mark did not meet the conditions for granting legal protection, and therefore it had no right to appeal the decision of Ukrpatent in view of the provisions of the Law of Ukraine "On Protection of Rights to Trademarks and Service Marks".

The Supreme Court overturned the decision of the court of appeal and upheld the decision of the court of first instance specifying the following. The right of the plaintiff to file a lawsuit against the disputed decision of Ukrpatent cannot depend on whether the plaintiff exercised his right to file an opposition to the plant's application at the time of its consideration by the National Intellectual Property Authority on the grounds that, in the plaintiff's opinion, the "MIRONOFF" mark does not meet the conditions for granting legal protection, since the decision to register/refuse to register a trademark is made according to the results of a qualification examination, during which it is checked whether the claimed mark meets the conditions for granting legal protection, and not depending on the presence or absence of objections to the application of interested parties.

Taking into account the fact that an average consumer's perception of trademarks plays a crucial role in their comparison and evaluation, and the nature of the disputed legal relations, in view of which the evaluation of expert opinions in accordance with Art. 104 of the Commercial Procedural Code of Ukraine is carried out from the point of view of an average consumer, the local commercial court, having assessed, among other things, the conclusions of expert studies, taking into account the specifics of the disputed legal relations in the field of intellectual property, unlike the court of appeal, came to the rightful conclusion that the "MIRONOFF" mark submitted for registration did not meet the conditions for granting legal protection set forth in the Law of Ukraine "On Protection of Rights to Trademarks and Service Marks", and, accordingly, that the circumstances of the plaintiff's intellectual property rights infringement had been proved by appropriate and admissible evidence, and therefore the plaintiff had the right to demand that the infringement of his rights be terminated in court.

Resolution of the Commercial Cassation Court within the Supreme Court of February 9, 2023 in case No. 910/5028/21 - https://reyestr.court.gov.ua/Review/108927598.

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