Trademark recognition as well-known is not an independent remedy, but a condition for granting protection to a person, in particular by invalidating the registration (certificate) of a trademark by another person - SC GC

The claim for recognition of a trademark as well-known cannot be satisfied in a lawsuit as a separate one, since such a claim is not aimed at protecting intellectual property rights from a specific violation, but is a condition for granting this protection, in particular by invalidating the registration (certificate) of a trademark by another person.

If there is no bad faith in the registration of a trademark by another person, the claim of the owner of a well-known trademark for cancellation (invalidation) of the trademark certificate (registration) of that person may be satisfied within the general limitation period, which may not be less than five years from the date of registration of the trademark.

This conclusion was reached by the Grand Chamber of the Supreme Court in a case concerning the recognition of a trademark as well-known and the invalidation of another person's trademark certificates.

In this case, the Darnitsa Pharmaceutical Firm filed a lawsuit against the Ukrainian National Office of Intellectual Property and Innovations and Lubnyfarm JSC. The plaintiff argued that the designation ‘Citramon’ was well-known in Ukraine as of 1 January 1997 in its name for goods of class 05 of the International Classification of Goods and Services for the Registration of Marks for ‘Pharmaceuticals’. At the same time, the plaintiff believed that the trademark owned by Lubnyfarm, ‘Citramon U’, was confusingly similar to the plaintiff's trademark for identical goods, which was well-known as of 1 January 1997.

The courts of the first instance and the court of appeal fully satisfied the claims of Darnitsa Pharmaceutical Firm.

When considering this case, the Grand Chamber of the Supreme Court first of all noted that at the time the plaintiff filed the claim, part 1 of Article 25 of the Law of Ukraine ‘On Protection of Rights to Trademarks for Goods and Services’ established that the protection of rights to a well-known trademark is carried out in accordance with Article 6 bis of the Paris Convention for the Protection of Industrial Property and this Law on the basis of recognition of the trademark as well-known by the Appeals Chamber of the State Intellectual Property Service of Ukraine or a court. At the same time, recognition of a trademark as well-known by the Appeals Chamber or a court is not a way to acquire rights to a trademark.

Consideration of applications for recognition of a trademark as well-known in Ukraine by the Appeals Chamber is not aimed at protecting the rights of the trademark owner from infringement by another person, and the decision of the Appeals Chamber, as binding on Ukrpatent, is an instrument for protecting the rights of the owner of a well-known trademark and is not a way to acquire rights to it. Instead, the recognition of a well-known mark by a commercial court is carried out for the purpose of protecting rights to it, i.e. has a different meaning. It cannot be considered an alternative to the recognition of a trademark as well-known in the decision of the Appeals Chamber.

As noted by the SC Grand Chamber, part 1 of Article 6 bis of the Paris Convention establishes a remedy (‘invalidation of registration’), which, according to the Convention, applies provided that the mark ‘is already well-known in that country by the competent authority of the country of registration or the country of use’. In other words, taking into account this provision, the recognition of a trademark as well-known is not an independent method of protection, but a condition for granting protection to a person, in particular by invalidating a registration (certificate).

Recognition of a trademark as well-known as of a certain date is thus the establishment of a legal fact, which in an adversarial proceeding is necessary to satisfy a claim against a particular infringer. Such recognition does not have an erga omnes effect, i.e., it is not binding on persons who are not parties to the case. Recognition of a trademark as well-known by a court in a lawsuit has an inter partes effect, i.e. only for the parties to the dispute.

The Grand Chamber of the Supreme Court also emphasised that in the absence of bad faith in the registration of a trademark by another person, the claim of the owner of a well-known trademark for cancellation (invalidation) of the certificate (registration) of that person's trademark may be satisfied within the general limitation period, which cannot be less than five years from the date of registration of the trademark.

It should be added that, in explaining its position, the SC Grand Chamber in this case referred to the case law of the EU Court of Justice to illustrate the significance of the good faith of the conflicting mark registration for limiting the right to protection of the owner of a well-known mark. In case C-482/09 (judgment of 22 September 2011), the Court of Justice explained the doctrine of acquiescence in EU law. The Grand Chamber of the Supreme Court referred to this interpretation to show that in the matter of protection and enforcement of trademark rights, it is possible and even required to be the same in all EU member states to allow two owners of trademarks (containing identical designations) who have been using them for a long time to promote their products to continue to use them in good faith.

Therefore, in this case, given the special conditions to which the law links the protection of intellectual property rights to a well-known trade mark, the courts had to establish whether the claimant had acquired this right and whether the defendant's mark constituted a reproduction, imitation or translation of a well-known trade mark that could cause confusion with it.

If so, the courts had to determine whether the time limit established by national law and the Paris Convention for claiming invalidation of a certificate had been met, or whether the defendant's registration of the mark was in bad faith.

The Resolution of the Grand Chamber of the Supreme Court of 17 April 2024 in case No. 910/13988/20 (proceedings No. 12-3гс23) - https://reyestr.court.gov.ua/Review/118601114.

This and other legal positions of the Supreme Court can be found in the Database of Legal Positions of the Supreme Court - https://lpd.court.gov.ua.