The Grand Chamber of the Supreme Court of Ukraine confirmed the conclusions of the court of appeals that a change of trademark owner does not affect the five-year period of continuous non-use of a trademark as a basis for early termination of the registration for such a trademark.
The Polish company Eurocash S.A. filed a lawsuit for early termination of the certificate for the trademark of LLC “Dominus-K”, which has not been used by the defendant in Ukraine for the past 5 years, which prevents the plaintiff from obtaining legal protection in Ukraine for 4 of its own trademarks with the word part “EUROCASH” under international registrations.
The court of first instance refused to satisfy the claim, since from the date of receipt by the defendant of the rights to use the disputed mark for goods and services from the previous owner (08/25/2020) to the time of the plaintiff’s application to the court with this claim (06/5/2023), the five-year period of continuous non-use of such a mark had not expired.
In turn, the court of appeal noted that the possibility of early termination of the certificate for a mark for goods and services does not depend on a change in the identity of the certificate owner.
In turn, the Supreme Court interpreted the norms of the law “On the Protection of Rights to Marks for Goods and Services” and the Association Agreement between Ukraine and the EU, taking into account their content, systemic connections, and purpose.
The court concluded that the legal norms provide for the cancellation of a trademark registration (early termination of the certificate) on the grounds of its failure to put it into use within a five-year period in the relevant territory (non-use in Ukraine). The running of this period begins from the date of publication of information on the issuance of a certificate or on the granting of legal protection to a trademark under international registration in Ukraine. At the same time, the legal norms do not contain the conditions that the running of the specified period begins anew with a change in the owner (authorized user) of the trademark.
In view of this, the Supreme Court stated that in this case, the appellate court established the circumstances of the defendant’s non-use of the trademark under the disputed certificate during the past five years, which is a basis for early termination of the trademark certificate in the specified part if there are no good reasons for its non-use.