The Supreme Court of Ukraine in the case of Holy Land LLC v. Individual entrepreneur Savisko V.G. provided an interpretation of the possibility of using a trademark to sell goods online without the consent of the right holder of the TM.
At the end of 2018, the right holder of the Holy Land trademark, registered in the 35th class of the ICGS, discovered that the website for the sale of professional cosmetics, during the offer of cosmetic products for sale, unlawfully and without his permission use the registered trademark.
According to the results of a study of the content of the website, the plaintiff found that the site positions itself as an online store of Israeli professional cosmetics Holy Land.
In 2019, the owner of the rights to TM filed a lawsuit, in which he asked to prohibit the owner of the website of the Individual entrepreneur Savisko V. from using the trademark, as well as recover court fees and examination costs.
The court fully satisfied the claim, and the Court of Appeal upheld this conclusion. However, the Supreme Court sent the case back for retrial. According to the results of the re-examination, the court of the first instance again fully satisfied the claim, and the Court of Appeal upheld the prohibition on the use of TM, canceling the compensation for the costs of the claim.
Based on the results of the re-examination of the case, the Supreme Court found that there was no evidence in the case file that the defendant, for a fee and under an agreement with a certain person, provided advertising services for goods, samples of which are posted on its own website.
Also, the defendant does not provide advertising or other services that have been ordered by another person on its own website and the information provided by the defendant in its online store, posted by him for the purpose of the retail sale of goods.
The court noted that class 35 of the ICGS is called “advertising; business management; administration in the field of entrepreneurial activity; office work” and is assigned to the category “Services”. If the seller exhibits, demonstrates the goods at the point of sale (in this case, the online store), that is, implements his public offer, then there are no grounds for determining such activities as advertising or presentation of goods. Thus, the defendant does not provide advertising services to other persons, he sells on his website (or other services) and does not receive payment for this, and his actions are an offer to conclude a public contract for the retail sale of goods.
Based on this, the Supreme Court concluded that the activities carried out by Savisko V. on the retail sale of goods under the Holy Land trademark do not belong to the class 35 of the ICGS.
The court overturned the decision of the courts of first and appeal instances, and ordered to recover from Holy Land LLC the court costs of the defendant for the reconsideration of the case.