Victory at Supreme Court. Legal Alliance protected client in a dispute over trademark
The dispute was initiated over the fact that the trademark owner filed a lawsuit against the client to ban the sale of products under its own trademark. The сlaimant based the lawsuit that without its consent, the products imported into the territory of Ukraine violate its trademark rights.
In turn, the client, acting in good faith, purchased the products abroad from the official distributor that has already entered into civil circulation of the products with сlaimant's trademark with the consent. Therefore, as a consequence, the client did not breach the rights to claimant's trademark.
The trial court, without conducting an in-depth study of case files, withdrew and did not apply the exhaustion doctrine in intellectual property law. According to this doctrine, the subsequent resale of products by the trademark owner no longer requires the permission or cannot be restricted by the trademark owner from entering the products into civil circulation or with its consent.
Thus, the trial court unlawfully recognized the trademark infringement, despite the fact that, as a result of the exhaustion doctrine in intellectual property law, the subsequent resale of the products no longer requires the permission of the trademark owner.
Legal Alliance's team joined the case on the defendant's side already at the appeal stage. After presenting the legal stance and indicating the mistakes made by the trial court, the court of appeal reversed the lower court's decision and validated use of claimant's trademark. The court of appeal listened to the arguments of Legal Alliance and noted the legality of resale of products by the client.
The Supreme Court of Ukraine also supported Legal Alliance defenders' stance and upheld the decision of the court of appeal. In its ruling, the Supreme Court took the position that the claimant, objecting to the use of trademark, contradicted its previous conduct of providing the claimant's director with authorization letters for the sale of products with trademark, that indicates the introduction of products with trademark, and that in turn violates the universal maxim derived from Roman Law "non concedit venire contra factum proprium" (no one may set himself in contradiction to his own previous conduct).
Thus, the Supreme Court has enshrined the international approach to the principle of exhaustion of trademark rights, under which, after the legal introduction of the marked products into circulation even outside Ukraine, further resale of such products no longer requires additional permission from the trademark owner.
A team of partners Illya Kostin and Vitalii Savchuk, and senior associate Yulia Prokhorenko have worked on the project.
Vitalii Savchuk said: "In general, we do not step in litigations whose first stage has been completed. But frankly speaking, in Ukraine there are not many principled IP litigation cases. So almost every one of them can have a positive or negative impact on the entire industry. That project was worth trying. We are pleased with the result."
