On February 9, 2023, the Supreme Court of Ukraine ruled in favor of Nemiroff Intellectual Property Establishment in the dispute against Ukrpatent and Prime Distillery LLC, invalidating the decision to register the MIRONOFF trademark.
Prime Distillery applied for the registration of the designation “MIRONOFF” in class 33 in 2019, and at the end of 2020, Ukrpatent decided to register the trademark. However, at the beginning of 2021, the vodka producer Nemiroff, which owns Nemiroff trademark, appealed to the court to cancel this decision.
It is worth noting that the Nemiroff mark is also recognized and well-known in Ukraine.
The court upheld the claim, ruling that the mark “MIRONOFF” was ineligible for protection. The court took into account the conclusion regarding the similarity of the designation “MIRONOFF” on the label of products manufactured by Nemiroff to the extent that it can be confused with the plaintiff’s trademarks and the Nemiroff mark, taking into account the similarity and affinity of the goods for which the designation is applied for registration and the plaintiff’s trademarks are registered.
However, a court appeal overturned this decision. The court decided that the plaintiff did not use the right to object to the application of Prime Distillery LLC at the appropriate stage of the application process, and in this regard, Nemiroff does not have the right to appeal the decision of Ukrpatent. At the same time, the court noted that Nemiroff is not deprived of the right to appeal to the court with a demand to invalidate the certificate that should be issued to Prime Distillery LLC on the basis of the contested decision of Ukrpatent.
In its decision, the Supreme Court came to the conclusion that the plaintiff’s right to appeal the disputed decision of the Ukrpatent in court cannot be made dependent on whether the plaintiff used his right to object to the application of Prime Distillery LLC at the time of its examination by Ukrpatent. Since the decision to register/refuse to register a trademark is made based on the result of an examination, during which the compliance of the declared designation with the conditions of granting legal protection is checked, and not depending on the presence or absence of objections to the application of interested parties.
The provided possibility of submitting objections to the application to the Intellectual Property Office does not deprive or prevent an interested person from protecting his violated right or interest protected by law by filing a lawsuit in court, in particular, by challenging the decision made by the Office based on the result of consideration of the submitted application.
In its conclusion on the similarity of the marks, the Supreme Court emphasized that the perception of trademarks by the average consumer plays a decisive role in their comparison and evaluation, and upheld the decision that the MIRONOFF application is ineligible for legal protection.