TRADEMARKS: Zero tolerance to non-use of trademark
While one of the beverage giants is fighting for
Zero trademark rightson the other side of the Atlantic, Ukrainian brewers are fighting for
Ukrainian version ofzerotrademark. Yet, the
focus of battle in Ukraine differs. The recent court decision in
Carlsberg Ukraine vs. First Private Brewery trademark cancellation
case has given an important reminder for trademark owners that the
top importance for judges is to see and touch a real product for
which a trademark is registered, while other evidences are less
significant. However, now it seems to be only a part of the test
that the Ukrainian courts expect to implement in the future. The
court currently wants to not only see a sample of the trademarked
product, but also expects to receive evidences, which confirm that
it was brought to the relevant market for consumers.
word mark (to be spelled as "NULYOVKA" and that actually
means zero of something) was registered in 2005 for goods
in classes 32 (in particular, for non-alcoholic beverages
and for beer) and 33 (alcoholic beverages (except
beer)) (the "Trademark") and
further assigned to First Private Brewery.
About a year ago, Carlsberg Ukraine (the
"Claimant") filed a lawsuit against
First Private Brewery (the "Defendant")
seeking cancellation of the Trademark registration due to its
alleged non-use during three consecutive years.
The Defendant disagreed with the lawsuit and
along with various documentary evidences (license agreement,
delivery notes, other business related documents) provided a bottle
of non-alcohol beer bearing the Trademark.
However, the Claimant contended that the
bottle of beer provided by the Defendant is not an admissible
evidence mainly because the products bearing the Trademark is not
available on the market for consumers. To prove its statement, the
Claimant provided its bottle of the Defendant's non-alcohol
beer, which does not contain the Trademark. The fact of beer
purchase was confirmed by the payment receipt. To further support
its position regarding the absence of the relevant product on the
market, the Claimant also provided the market research reports and
mass media monitoring report.
When assessing the evidences provided by the
parties the court held that the Defendant failed to prove that the
respective product bearing the Trademark is available on the market
for consumers. The court expected to see not only a sample of the
product – which was actually provided – but also a
payment document, which would prove that the product was purchased
on the market. As regards documentary evidences provided by the
Defendant, the court held that they do not prove that the relevant
product with the Trademark attached to it was available on the
market for consumers during three consecutive years.
In view of the above consideration, the court
satisfied the claim and decided to terminate validity of the
Trademark for all goods for which it was registered.
It seems that the above court decision is not
the end of the dispute. First Private Brewery filed two new
trademark applications for "NULYOVKA" word mark, and the
Claimant expressed its intent to acquire rights to this mark.
However, although the dispute between brewers is likely to
continue, the above status quo in the case is an important
signal for other non-involved trademark holders that trademarked
products should be brought to the market. Otherwise, your trademark
may be an easy meat for competitors.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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