A designation that was generic for a certain type of goods and had lost distinctive character on the date of filing the application cannot receive legal protection as a trade mark – SC CommCC

A designation that, at the time of filing the application, had already become a generic name for goods of a certain type and had lost the ability to individualize the goods of a specific manufacturer does not meet the conditions for granting legal protection as a trade mark. If such a designation has been used for a long time by various manufacturers to designate goods with identical properties, it effectively turns into a generic term and cannot perform the function of individualizing the product.

This conclusion was reached by a panel of judges of the Commercial Cassation Court within the Supreme Court.

LLC “Leda” filed a lawsuit against JSC “Halychpharm” and the State Enterprise “UkrNOIVI” seeking to invalidate the Certificate of Ukraine for the trade mark “Furacilin”. The plaintiff argued that as of the date of filing the application for registration of the mark (December 17, 1997), the designation “Furacilin” was already a commonly used name for a medicinal product and was used by various manufacturers. Therefore, it lacked distinctive character and could not receive legal protection.

The commercial court granted the claim and declared the disputed certificate invalid. This decision was upheld by the appellate commercial court. The courts established that the designation “Furacilin” had been used for a long time in medical, pharmaceutical, and scientific literature, as well as in business activities by various manufacturers to designate an antiseptic preparation.

When considering the case, the courts took into account the results of forensic examinations, according to which, as of the date of filing the application, the designation “Furacilin” was already being used by many manufacturers to designate goods with identical characteristics. As a result of such use, it had lost its distinctive character as an individual mark and had turned into a commonly used designation for a certain type of goods.

The Commercial Cassation Court of the Supreme Court noted that a designation is recognized as generic for goods of a certain type if it has been used for a long time by various manufacturers to designate goods that have common properties or purpose, as a result of which consumers cease to associate it with a specific manufacturer. In such a case, the designation loses its distinctive character and cannot perform the function of a trade mark.

The panel of judges of the Commercial Cassation Court of the Supreme Court also emphasized that establishing the fact that the relevant designation was used by different manufacturers before the filing date is an important circumstance in determining its generic nature. The designation “Furacilin” had been used in Ukraine since the Soviet period and was applied by various manufacturers as the name of an antiseptic preparation.

The Cassation Court concluded that the lower courts correctly applied the norms of legislation in the field of protection of rights to trade marks and reasonably established that, as of the date of filing the application, the designation “Furacilin” was generic and lacked distinctive character.

The Commercial Cassation Court of the Supreme Court left the cassation appeal unsatisfied and upheld the decisions of the previous courts without changes.

Resolution of the Commercial Cassation Court of the Supreme Court dated February 26, 2026, in case No. 910/16718/20 — https://reyestr.court.gov.ua/Review/134456211.

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