Unfair fair business…


It may seem that state system of trade mark registration gives much more chances for bad-faith applicants to receive a certificate than for those who truly and fairly works marked by those TMs in Ukraine and as well through the world.

This tendency has already tramped its way in Ukraine. The latest and brightest example may serve situation that has happened with registration of TM “Wal-Mart”. So now one of the world`s biggest retail network Wal-Mart Stores (Arkansas, USA) has nothing to do but sue Fozzy Group (http://forbes.ua/news/1364597-wal-mart-suditsya-s-ukrainskim-ritejlerom-fozzy-group ).

Despite the ability of court adjudgments canceling such registrations, within making a great public stir, the current situation keeps being stable and sad:

–          Laws of Ukraine on the protection of rights to trademarks; trademark rules of practice and rules of practice in filings of applications for granting a certificate of Ukraine on trademark exclude the notion of ‘bad-faith applicant’;

–          Court practices either do not provide a definition of ‘bad-faith applicant’ and as well do not present any list of situations when the unfair intentions may be indicated as such;

–          Consequently there is no legal prosecution for bad-faith applicants after the TM registration certificate was invalidated in court.

Predominantly ‘bad-faith’ trademarks are those that represent names of products never officially imported on the territory of Ukraine or as well it may be a name of company without RepOffice in Ukraine.

In prevailing amount of such cases Registrar (Ukrainian Patent and Trademark Office) should refuse the applicant in registration according to the provisions of current laws as they state:

–          Mark is not eligible for protection if it is deceptive or may create confusion with another product, service, producer or service-provider;

The era of new media destroys geographical or state borders of the informational levels; with the help of Internet everyone (as well as the expert of the Registrar) has an enormous access to variety of resources and to the foreign home shopping websites. So why would not they change the scope of their interests from the indolent to the professional ones. Meanwhile they never stomach to use internet links while “granting” preliminary refuses; the only question is – why those cases are so selective?

–  Out of the registration rules as well are marks that constitute a reproduction or an imitation liable to create confusion to the trade names that are known in Ukraine and belong to another person, who has gained the rights before the application on the similar or identical goods was filed to the Registrar.

If somebody concerning the above statement would have an intention to mention that the company without registration and RepOffice in Ukraine, and the one that does not have any commercial activity on the territory of Ukraine do not gain the right on the trade name – I would happily remind those that according to the provision of Art.8 of Paris Convention for the Protection of Industrial Property, the trade name is under protection in all the countries of the Union (Ukraine is one of those) and no additional application or registration is required; as well it does not depend on whether it is a part of a trademark or not. The same goes from Art. 489 Civil Code; and the Art. 159 of Code of Commercial Procedure of Ukraine states, if one reads it carefully, that there is no need to conduct a registration of the trade name in such cases. Then it raises a question – who knows which side bread is buttered that makes our Registrar to connect ‘first use’ exactly with the territory of Ukraine. And why do we face the problem of misunderstanding of the trade name and name of juridical person that is obviously mentioned in the registration documents by our Register Office and Courts?

 Maybe the Registrar should be more careful in conducting examination of the trademarks. Lots of marks that are now in the register clearly must have got a refusal at a glance; – all of them are merely descriptive and do not contain any distinctive features and explicitly lie about their applicant’s data.

Obvious is the fact that if the Registrar chooses the ‘way of refuses’, then the applicant would have to proof whether his intention is of bona fide.

However, till the working scheme keeps being “court rocks!”, Registrar:

–          Conducts vague qualifications expertise;

–          Shifts their functions on courts;

–          Provokes solid financial and temporal losses for the company;

–          Puts into risk reputation of the whole country by showing to the world wide that in our country even Well-Known Mark can be registered on the natural person without much difficulty.


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