Legal Alliance successfully defended the interests of one of the leading domestic distributors

The Legal Alliance Company's team successfully defended the interests of one of the leading domestic distributors in the pharmaceutical market in a dispute concerning intellectual property infringement on a trademark in the court of appeal.

DETAILS OF CASE

The Economic Court of Kyiv Region reneged on the principle of international exhaustion of intellectual property rights and declared unlawful the sale in Ukraine of goods with the trademark applied, after it was first put into circulation abroad with the consent of the right holder of the trademark, and also ordered the client of Legal Alliance to compensate loss of profit to the plaintiff in the amount of over EUR 100,000.

Despite the fact that the client reached out to Legal Alliance's attorneys already at the first-instance litigation stage, they managed to form an effective defense strategy and won the case on appeal. In a very short period of time, the attorneys collected new evidence, which indicated the right holder had consented to the use of trademark in electronic correspondence and initiated an expert examination to confirm their validity.

Thus, on December 7, 2021, the Northern Economic Court of Appeal, taking into account the evidence and arguments of the attorneys, overturned the ruling of the court of first instance and declared the use of the disputed trademark as lawful, as it was performed after the introduction of goods with trademark in civil circulation with the consent of the right holder.

WHY IS THAT IMPORTANT?

First and foremost, in its ruling, the Court of Appeal upheld the international approach to the principle of exhaustion of the rights of the trademark holder, according to which, following the lawful introduction of labelled goods into circulation even outside Ukraine, further resale of such goods no longer requires another permit from the right holder of the trademark.

The court also noted that the introduction of goods into civil circulation with the consent of the right holder is not the same as "transfer of exclusive right" to permit, prevent or prohibit the use of the intellectual property items. Thus, entering into the license agreement is not the only form of confirmation of the right holder's consent, since it can be expressed in another way.

The team composed of Partner Illya Kostin, Attorney-at-law Anastasia Hrachova and Junior Associate Victoria Malyniak worked on the case.