Legal Alliance Company Lawyers Defended the Title to "Espumisan" Trademark
On June 27 this year Kyiv Economic Court of Appeal reaffirmed the legal position of the Legal Alliance Company lawyers in the case of partial recognition of the orders of the Ministry of Health of Ukraine on the registration of a medicinal product of a competitor whose name is similar to the Espumisan trademark owned by the German pharmaceutical company Berlin-Chemie (Menarini Group ).
So, in December 2013, the first instance court, with the position of which the appellate court agreed, forbade the competing company to use in the name of its medicinal product a designation similar to the brand name of Berlin-Chemie (Menarini Group). Then the Supreme Economic Court of Ukraine returned the case for a new trial on procedural grounds.
Since 2013, the case was twice again reviewed by the courts of the first and appellate instances.
The key feature of this dispute is that the claims refer to the name of the medicinal product and the orders of the Ministry of Health about their registration as the only legal basis for selling drugs on the territory of Ukraine. However, after the trial began, the defendant, on the basis of a license agreement, acquired exclusive rights to use the trademark in the form of a package using the name of the medicinal product, which is the subject of a legal dispute.
In considering the court dispute for the second time, the courts of first instance and the appeals court considered that the rights of the licensee are more foreground than the rights of the trademark owner, by this violating one of the basic principles of intellectual property - the principle of priority, and also pointed out that without appealing to trademark rights, claims for order cancellation are impossible.
The judges of the Supreme Economic Court abolished the decisions of the courts of previous instances, preventing the erroneous application of substantive law.
Among other things, the dispute is complicated by an active confrontation on the part of the defendant. In addition to the complex relationship between the rights of the trademark owner and the rights of the licensee, three forensic examinations and two sociological surveys of consumers were conducted in the case, the results of which substantially supplemented the evidence base of the team of the Legal Alliance and helped defend the Client's rights to the trademark during the third trial.The client's interests were represented by lead specialists in the practice of intellectual property - partner Ilya Kostin and counselor Natalia Lavrenova.