NEW COURT PROCEEDINGS IN SPRING 2017

Spring of the year of 2017 has already surprised by initiating of new interesting court litigations in the sphere of intellectual property in Ukraine.

«ISWATCH» V. «IWATCH»

watchWorld-wide famous manufacturer of watches – Swiss company SWATCH AG filed an action with the court against company APPLE INC. and the State Intellectual Property Service of Ukraine seeking invalidation of the certificate of Ukraine № 202678 dated of 25.08.2015 for a trademark «text».

 The Economic Court of the City of Kyiv by its determination № 910/2180/17 dated of 14.02.2017 allowed a claim and set a trial date for March 20, 2017 (judge – O.V. Marchenko).

According to the information contained in the international database «ROMARIN» it appears that the reason for invalidation of the certificate is a similarity of the trademark «text» in the 9-th and the 14-th classes with a trademark «swatc» that was previously registered under international procedure in the 14-th, 35-th and 37-th classes  (registration № 962366). Moreover, an application for «swatc» trademark was filed as far back as on 07.04.2008, while an application for a trademark of the APPLE INC. smart watches – on 03.06.2013.

The actions against APPLE were also filed with courts in other countries by SWATCH AG company and by Probendi Limited company as well, which is the owner of a single trademark of the European Union «iWatch» (an application for this trademark was filed as far back as on 03.08.2008).

DISPUTE ON VIOLATION OF RIGHTS IN A DOMAIN NAME 

At the end of the year of 2016, FORBES LLC, Delaware Limited Liability Company filed an action with the court against LLC «Publishing House Ukrainian Media Holding», LLC «Ukrainian Media Group» seeking termination of violation of intellectual property rights to marks for goods and services.

БезымянныйThe ground for action is illegal use by defendants without consent of the plaintiff of trademarks «Forbes», «FORBES», «Форбс», owned by the latest, in the course of publishing of «Forbes» magazine, at the Web-site located on Internet network at the address http://forbes.net.ua/ and in domain name forbes.net.ua, as well as on pages within social network Facebook.

Together with the relevant action the plaintiff also filed with a court an application for the following provisional remedies:

  • to prohibit LLC «Ukrainian Media Group» to take any actions on re-delegation (transfer) of a domain name net.ua in favor of any persons; to take any actions on the change of the registrar of a domain name forbes.net.ua; to take any actions on termination (cancellation) of delegation of a domain name forbes.net.ua, including actions on making relevant amendments into service records WHOIS with regard to a domain name forbes.net.ua, until the entry of a court decision on this case into legal force.
  • to prohibit LLC «Internet Invest» to take any actions on re-delegation (transfer) of a domain name net.ua in favor of any persons; to take any actions on the change of the registrar of a domain name forbes.net.ua; to take any actions on termination (cancellation) of delegation of a domain name forbes.net.ua, including actions on making relevant amendments into WHOIS database with regard to a domain name forbes.net.ua, until the entry of a court decision on this case into legal force.

The Economic Court of the City of Kyiv dismissed the plaintiff’s application on securing a claim in view of the lack of appropriate justification that a failure to take such measures may hinder or make impossible the enforcement of a decision of economic court.

At the beginning of this year the Kyiv Appeal Economic Court revoked this determination and allowed the application of FORBES LLC as the failure to take provisional measures on similar cases may lead to the following consequences:

  • unjustified extension of the scope of persons, whose rights and interests may be affected by court decision on this case.
  • it may delay court hearing of this case due to the necessity of the change of initial defendant or involvement of another defendant and initiating of court hearing all over again.
  • it may have an impact on jurisdiction and cognizance of this dispute.
  • a domain name may be re-delegated in favor of a person who was not a defendant on this case at the time the decision is made, and, consequently, it may hinder or make impossible the enforcement of court’s decision on this case.

It is to be recalled that court proceedings with regard to trademarks of FORBES LLC already took place in the year of 2010. In particular, those cases were about invalidation of certificates for two identical trademarks «forbes 1», owned by Chekmak Maryna Valeriyivna, and for a trademark «forbes 2», owned by Bogatov Oleg Ivanovych. According to the information of the register of Ukraine the mentioned trademarks have been already transferred to FORBES LLC.

ANOTHER LITIGATION IN THE COURT AROUND «МТС» COMPANY

At the end of February the mobile network operator LLC “Mobile TeleSystems” filed a cassation appeal against a decision of the Kyiv Appeal Economic Court, by which it revoked the ruling of the Economic Court of the City of Kyiv on pre-term invalidation of a certificate for a trademark   «mtc». We have already informed you about this court decision https://synergy.ua/ru/novyj-vitok-sobytij-vokrug-torgovoj-m/). So, the legal battle is under way…

As we can see, the current spring will bring us more unusual court proceedings in the sphere of intellectual property. So, let us follow the further developments with pop-corn in our pockets 🙂

Author: Anastasia Zaitseva

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