The Supreme Court of Ukraine considered a case involving an attempt to register a trademark by a person who had previously cooperated with the owner of the relevant brand. The claimant, a citizen of Moldova, sought to invalidate a Ukrainian trademark certificate registered in 2019 in the name of a Ukrainian citizen. According to the claimant, he owned the rights to international registrations of the brand, which had been used by related companies in several countries. The defendant, in turn, headed a Ukrainian company that sold products under this brand in Ukraine.
The dispute arose because the Ukrainian partner, having access to the brand through commercial cooperation, later filed an application to register the same sign in his own name. After the Ukrainian certificate was granted, this registration became an obstacle to the protection of the claimant’s international trademark in Ukraine. The claimant relied on the Paris Convention, which protects a trademark owner where an agent, representative or related person registers the mark without authorisation.
The courts of first and appellate instances dismissed the claim, taking the view that the contractual relationship existed between companies rather than directly between individuals. The Supreme Court disagreed with this formal approach. It stated that the terms “agent” and “representative” should not be interpreted too narrowly. They may cover not only classic agents, but also distributors, commercial partners and other persons who were in a relationship of trust with the brand owner.
The practical importance of this judgment is that courts must examine not only formal agreements, but also the real nature of cooperation between the parties. If a partner or representative used a brand because of arrangements with the rights holder, they cannot unfairly register that brand in their own name. This approach helps protect companies from situations where a local partner attempts to gain control over a trademark in a particular jurisdiction.
As a result, the Supreme Court cancelled the decisions of the lower courts and sent the case for a new hearing. The final issue of whether the disputed certificate is valid still has to be decided. For businesses, the judgment is an important warning: cooperation with a brand owner does not give a partner the right to register the brand as their own trademark. For rights holders, it strengthens protection against unfair partners who try to use commercial relationships to take control of another party’s brand.