The five-year period of continuous non-use of a trademark as a ground for early termination of a trademark certificate does not depend on the change of trademark owner - SC GC

The validity of a trademark registration certificate may be terminated early if the trademark has not been used in Ukraine for a continuous period of five years in relation to the goods or services for which it is registered and there are no valid reasons for its non-use. The calculation of the said five-year period does not depend on the change of the owner (authorised user) of the trademark.

Such conclusions were reached by the Grand Chamber of the Supreme Court in the case concerning the request of Eurocash S.A. for early termination of the trademark certificate of Dominus-K LLC. 

The plaintiff argued that the defendant is the owner of the certificate for the EUROCASH trademark, which has not been used in Ukraine for the last five years, which is the basis for early termination of the certificate for such trademark. At the same time, the existence of such a certificate prevents the claimant from obtaining legal protection in Ukraine for four of its own trademarks with the word ‘EUROCASH’ under international registrations.

The courts of previous instances reached opposite conclusions. The court of first instance dismissed the claim as the five-year period of continuous non-use of the disputed trademark from the previous owner (25 August 2020) had not expired as of the date the plaintiff filed the claim (5 June 2023). Instead, the court of appeal noted that the possibility of early termination of a trademark certificate does not depend on the change of the certificate holder's identity.

During the consideration of the case, the Grand Chamber of the Supreme Court interpreted the provisions of Part 4 of Article 18 of the Law of Ukraine ‘On Protection of Rights to Trademarks for Goods and Services’ and the EU-Ukraine Association Agreement, taking into account their grammatical content, systemic connections and intended purpose.

The Grand Chamber of the Supreme Court concluded that these legal provisions provide for the cancellation of a trademark registration (early termination of the certificate) on the grounds of failure to put it into use within a five-year period in the relevant territory (non-use in Ukraine). This period starts from the date of publication of information on the issuance of a certificate or granting legal protection to a trademark under an international registration in Ukraine. At the same time, these rules of law do not contain any conditions that the said period starts anew with the change of the owner (authorised user) of the trademark.

In addition, to confirm its position, the Grand Chamber of the Supreme Court referred to the case law of the EU Court of Justice on the application of Regulation (EU) No 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the trademark of the European Union. In particular, the Supreme Court noted that the practice of applying such rules shows that the specified five-year term of use of a trademark includes the terms of its use by all owners, not just the last one (judgment of the Court of Justice of the European Union of 13 October 2021 in case T-12/20). 

Thus, in this case, the court of appeal established the circumstances of the defendant's failure to use the trademark under the disputed certificate for the last five years, which is the basis for early termination of the trademark certificate in the specified part, provided that there are no valid reasons for its non-use.

Resolution of the Grand Chamber of the Supreme Court of 5 March 2025 in case No. 910/8781/23 (proceedings No. 12-64гс24) – https://reyestr.court.gov.ua/Review/126153470.

This and other legal opinions of the Supreme Court are available in the Database of Legal Positions of the Supreme Court - https://lpd.court.gov.ua.