The Higher Commercial Court of Ukraine Confirmed the Position of Berlin-Chemie While Reviewing Espumizan Trademark Case for the Third Time
On October 3rd, 2017, the Higher Commercial Court of Ukraine finally invalidated the orders of the Ministry of Health of Ukraine on the registration of a competitive medicinal product whose name is similar to Espumizan trademark owned by Berlin-Chemie (Menarini Group), German pharmaceutical company.
The dispute has been litigated in courts since March 2013. Since that time, for various reasons, the case has been reviewed three times in the cassation instance. However, the legal position presented by the intellectual property practice experts Illya Kostin, partner at Legal Alliance Company, and Natalia Lavrenova, counsel, representing the interests of the client, formed the basis for the final decision in the case.
In December 2013, the court of first instance, the position of which was upheld by the appellate court, banned the competing company from using in the name of its medicinal product a designation similar to Berlin-Chemie brand (Menarini Group). Then the Higher Commercial Court of Ukraine remanded the case back for a new trial on procedural grounds (could not find out when the consideration of the dispute on merits started).
Since 2013, the case has been reviewed two more times by the courts of the first and appellate instances.
Considering the dispute for the second time, the courts of the first and appellate instances considered that the licensee’s rights prevailed over the trademark owner’s rights, thus violating one of the fundamental principles of intellectual property - the principle of priority. In addition, the court considered that no requirements to invalidate orders are allowed without the appeal of rights to a trademark. The judges of the Higher Commercial Court set aside the decisions of previous courts, preventing the erroneous application of substantive law.
Reviewing the case for the third time, the courts of the first and appellate instances satisfied the claimant's demands in full.
At the stage of cassation for the third time, one of the adversary companies decided to join the case, filing an appeal, restored the deadline for appealing the decision and demanded to remand the case for a new consideration. Experts of Legal Alliance managed to reject the arguments of opponents and the falsity of their statements that they did not know about the dispute. The Board of Judges of the Supreme Commercial Court, having assessed all the circumstances of the case and hearing the positions of the parties, rejected the adversary’s cassation complaints and upheld the decisions of the previous courts.
The peculiarity of this dispute is that the claims relate to the name of the medicinal product and the orders of the Ministry of Health on its registration as the only legal basis for selling drugs on the territory of Ukraine”, Natalia Lavrenova comments on the case. "However, after the trial began, the defendant, pursuant to a license agreement, acquired exclusive rights to use the trademark, which is a package with the name of the medicinal product, which is the subject of the dispute".
"Among other things, handling the dispute has been complicated by an active procedural and non-procedural confrontation by the defendant, - said Ilya Kostin. - In addition to the complex correlation 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 significantly supplemented the evidence base. Also, the adverse party attempted to recognize their sign as well-known. Such intentions resulted in filing objections to the opponent's statement on behalf of the Client, although this procedure is not prescribed by the legislation of Ukraine. The Appeals Chamber rejected the petition of the defendants".