Issues of trademark registration in Ukraine and in CIS countries in case of availability of prior rights to the similar or identical marks in the country rises a lot of disputes. This article focus on Ukraine, although practice differs in the countries of our jurisdiction.
At first, the likelihood of confusion is estimated by the Office in Ukraine (UPTO) as to the similarity of verbal elements of the conflicting marks, on which the attention of the consumers is primarily focused and, accordingly, the overall impression of the mark is created. However, other factors such as non-homogeneity of the list of applied goods/services, difference in the parties’ activities, overall impression, created by the trademark on customers, use of the trademark for labeling products/services in retail and in online trade, etc. are also could be taken into consideration by the Examination.
According to the Article 6, para 3 of the Trademark Law of Ukraine, designation cannot be registered as a trademark if it is identical or confusingly similar to the previously registered trademark in Ukraine on behalf of another person or for the homogeneous goods/services.
Case 1. JE JUMPELEGANT SPORT
Based on this provision of the Law, the trademark (TM) of the international registration (IR) No 1245537, was refused in Ukraine in class 25, as it was considered by Examination to be confusingly similar to the TM , IR 872367, earlier registered in Ukraine for the similar goods in class 25.
Having analyzed the grounds for refusal, we noted that the validation of the IR 872367 in Ukraine expired on September 23, 2015. However, according to Art. 18 of the Trademark Law of Ukraine, the owner of the opposing registration has the right to file a late renewal petition until March 23, 2016. As the deadline to respond to the provisional refusal was on April 20.2016, no deadline extension was required to file the Objection.
Ukrainian trademark legislation contains a specific provision in Art. 22 saying that no one but the owner of the registered mark in Ukraine, validity of which has expired, can file a new application for the registration of an identical designation within 3 years from the date of termination of the registration certificate.
Therefore, if the dissimilarity of the trademarks in questions had not been proved in the Objection, there was a risk of receiving final decision to the client’s trademark with the refusal grounded on the Art. 22 of the Law.
Taking into account that the claimed and opposed designations are not identical, we provided our comments as to the visual and phonetic dissimilarities of the cited trademarks and mentioning that if the new application for the opposed trademark is filed within 3 years, it should not be an obstacle for the registration of the claimed designation.
Our arguments on trademarks’ dissimilarity and termination of the opposed trademark were accepted by Examination, and the provisional refusal was successfully overcome.
Case 2. FALCON PRIVE
More challenging situation was in the case of IR 1262674 TM FALCON PRIVE, which was refused in Ukraine for all goods applied for in class 34, because it was considered by the Examination to be confusingly similar to the TM ROYAL FALCON, Certificate of Ukraine No 124978, earlier registered in Ukraine for the goods in classes 32, 33 and 34.
As the verbal elements “FALCON” are identical in the registrations, however, two other elements in the cited trademarks are different. So, it was proposed to overcome the refusal by filing the Objection on argumentation in favor of dissimilarity, as well as to mention that there are several registered trademarks in Ukraine containing the verbal element “FALCON”, which coexist on the Ukrainian market. Initially, in view of the identical verbal elements and the homogeneous list of goods in class 34, the chances to obtained protection to the IR 1262674 via objection were below average.
However, after consultation with the client, it was decided to initiate a cancelation of the opposed trademark on the ground of non-use and to file for the deadline extension for 6 months. At the same time, to submit the objection on the above mentioned grounds to have enough time for the cancellation procedure.
The objection grounded on dissimilarity was drafted and filed to the UPTO, mentioning also the fact of initiation the cancellation action. The arguments in the objection were accepted by the Office and the positive final decision was issued for the TM FALCON PRIVE in Ukraine. Despite the positive decision, the cancellation procedure is still underway.
Case 3. HAIER
The situation with the trademark Haier in Ukraine is more complicated and could be treated even as a bad faith on the market.
The IR 1259958, TM , was partially refused in Ukraine for all goods applied for in classes 07, 09, 11, 20 and services in classes 35 and 37, because the Examination considered it to be confusingly similar to the following trademark:
Bearing in mind that the owner of registrations No 17015 and No 25692 and the IR 1259958 belongs to the same group of companies – Haier Group Corporation, famous producer of major household appliances, provided Letters of Consent from the owner of the mentioned trademarks and the documents confirmed business relational between the client and the owner of opposed registrations were sufficient to overcome the cited obstacle for registration. This was an easy exercise.
With respect to Certificate No 168029, the trademark has been registered in Ukraine in class 35, which is not claimed in the mentioned above registrations under the name of Haier Group Corporation. Additionally, it was also registered in respect of goods in class 09, which are non-homogeneous to the one registered under the marks belong to the Haier Group Corporation.
As IR 1259958 was applied for broader range of goods in class 09, in comparison to Certificate No 25692, and for the services in class 35, therefore due to arisen similarity of goods and services in the cited marks, a high likelihood of confusion exists among relevant circles of consumers as to the manufacturer of goods/ service providers. In this situation, filing an Objection with the arguments in favor of dissimilarity of the marks in question was not an efficient solution.
With the aim of obtaining a trademark registration in class 09 and 35, the most effective option was to cancel the opposed trademark, since chances to overcome the obstacle for registration by other means seemed not feasible, thus leaving chances for success rather limited.
In Ukraine the already registered trademark can be cancelled only through court proceedings on the following grounds:
1) non-use after expiration of the 3-year grace period from the registration date.
The opposed trademark, Certificate No 168029, was vulnerable for the non-use cancelation, and according to the information available in the open sources, such goods/ services in classes 09 and 35 were not available on the Ukrainian market from this producer under the subject mark.
In case of filing a non-use lawsuit, a plaintiff should prove his interest in cancellation. In this case, a notification of the provisional refusal was used as such a confirmation.
2) non-compliance with the criteria of protectability/ deceptive or misleading with respect to person in charge of the produced goods/ services provided.
In case of filing a non-compliance lawsuit, in particular, for preparation of the lawsuit, information was needed to confirm that goods/services under the client’s mark were available on the Ukrainian market before the date of filing the application for the opposed trademark.
Based on the available information and documentation it was decided to file a non-use cancelation lawsuit.
However, as it was in the case of the TM FALCON PRIVE, to keep the trademark IR 1259958 alive and to prove to the court the interest of the client in obtaining registration for the cited trademark, the Objection was filed grounded on dissimilarity of the IR 1259958 and Certificate No 168029 due to dissimilar focus of the parties’ activities. Moreover, based on the internet search, information was presented that a widely-known brand HAIER belongs to the Haier Group Corporation; therefore, the word HAIER is associated with only one producer – Haier Group Corporation. The information about the brand Haier, as well as about world-wide activities of the company, was also incorporated into the Objection.
As a result, the Examination in Ukraine accepted the arguments in the Objection and issued the grant of protection decision to the cited trademark HAIER in all applied classes before finalization of the cancellation action. Cancellation action against the Certificate No 168029 is ongoing.
Case 4. CARGO
In this case the IR 1132113 TM was partially refused in Ukraine for all goods applied for in class 12 and services in classes 37 and 40, because it was considered by the Examination to be confusingly similar to the following trademarks:
First of all, the strategy for obtaining trademark protection was focused on recommendation to approach the owners of the opposed marks for Letters of Consent.
An alternative way, though less reliable, was to try to overcome the refusal by filling an objection in favor of dissimilarity of applied and opposed trademarks, particularly by a visual criterion, taking under account the fact that the verbal element “CARGO” has low distinctive ability for the goods, especially applied for in class 12. In addition, different focus of the parties’ activities was mentioned, as the applied trademark is used for production of electrical spare parts and units for vehicles and their promotion via special on-line portal. In contrast to this, the owner of the trademark No 40254 names the truck model; the holder of the certificate No 86163 uses the mark for freight and passenger transportation; and the IR 644971 is used for marking tires for passenger cars.
The client decided to proceed with the objection.
With the reference to the web-site, advertising, promotional actions in Ukraine and mass-media publications, detailed information about activities of the Robert Bosch GmbH, holder of the IR 1132113 in Ukraine was provided to support arguments in the objection. By doing this, it was proved that the customers in Ukraine are well-informed about the activities of the manufacture and availability of the goods/services under the trademark in Ukraine. So, they can distinguish and recognize products/services under the applied trademark among others available on the market and associate them with a particular producer – Robert Bosch GmbH.
The strategy was successful and the trademark was registered for all the applied goods and services in Ukraine.
Case 5. PLATINUM
In relation of the Application No. m201417248 for TM in Ukraine, provisional refusal was issued for all applied goods in class 04, because the Examination considered it to be confusingly similar to TM , Certificate of Ukraine No. 193369, owned by the individual Mr. Rybak Oleksiy Mykhaylovych (UA), earlier registered in Ukraine for the broader list of goods in class 04, including “industrial oils”, which was claimed under the trademark of our client.
Despite the fact that verbal elements in the trademark are identical and the claimed goods are homogeneous, however, the overall impression, created by the trademarks on the customers’ perception differs. Therefore, it was decided to overcome the refusal with the arguments in favor of dissimilarity of the conflicting marks, especially by a visual criterion. It was stressed that the marks in question are not likely to cause confusion among relevant circles of consumers as the manufacturers of goods can coexist on the market of Ukraine.
To support the arguments in the objection, it was recommended to submit evidences of the trademark use in Ukraine, which proves the existence of certain circles of consumers, who can recognize products under the applied trademark, as it is very welcome by the Examination. The best evidences are promotional and advertising materials (catalogues, brochures), publications in the media, information about participation in expo shows in Ukraine and abroad (any diplomas, awards, participation certificates etc.) invoices, delivery bills, contracts, price lists, etc.
The applicant provided wide range of evidences of the trademark use, which shown that the trademark is widely advertised and the products are available on the Ukrainian market, volume of the sale is large, thus customers could recognize and identify products marked by the applied designation by their manufacturer. At the same time, review of the open sources did not provide any obvious information of the opposed trademark use by its’ holder. This point was also mentioned in the objection.
As a result, submitted arguments and documents were sufficient to the Examination for issuing the grant of protection decision for the cited trademark in Ukraine.
Summarizing our practical experience in trademarks’ protection with similar or identical verbal elements in Ukraine, we came to the following conclusions:
Tatiana Lipovaya, Ph.D.
Head of Licensing Department, Trademark Counsel