أوكرانيا

Case № 916/3470/19

Plaintiff: WD-40 Manufacturing Company

Defendant: Antre Group Limited Liability Company

Third party: Odesa Customs of the State Fiscal Service of Ukraine

Lawsuit re: banning the use of the designation, withdrawal from civil circulation and destruction of the goods.

In case No. 916/3470/19, the Company filed a lawsuit against limited liability company for a ban on use of the designation, withdrawal from civil circulation and destruction of the goods.

The lawsuit is based on violation of Company rights of the on the mark for goods and services according to the certificates of Ukraine No. 170473 and 14778, as well as signs according to the certificates of Ukraine No. 15337 and 172906, which are recognized as well-known in Ukraine, since defendant, carried out attempt to import through the Odesa Customs Service of the Federal Tax Service a large batch of goods: canisters with aerosol preparations "AD-50", which marking containing verbal and pictorial elements, that are so similar they may be confused with the Company's trademarks.

By decision of the Economic Court of Odesa Region, which was left unchanged by decision of the South-Western Appeal Economic Court, the lawsuit was satisfied in full.

Court decisions are motivated by validity of the claim and lack of evidence that plaintiff gave defendant consent to use the markings on disputed certificates of Ukraine and markings that are so similar to the mentioned trademarks that they can be confused in any way.

At the same time, the appellate court noted the need to apply exactly such a method of restoring a violated right as destruction of the manufactured product, since the product contains marking that is characteristic only for products manufactured by the Company, the destruction of the marking as a separate element of the product seems doubtful, since the latter is combined with the product in such a way that makes it impossible to separate it without completely damaging the product.

The Commercial Cassation Court within the Supreme Court agreed with court decisions of the previous instances and indicated that courts during consideration of this case established facts of rights violation and legitimate interests of the plaintiff in connection with manufacture and attempted importation (import) of goods specified in this resolution into Ukraine by the defendant.

Choice of the method of judicial protection of intellectual property rights, including the seizure and destruction of goods and materials introduced into civil circulation in violation of intellectual property right, is carried out by person who owns the intellectual property right. At the same time, checking the compliance of this method with admitted violation and purpose of the trial is a duty of the court, which should make a decision on the case within the limits of stated claims and taking into account the actual circumstances of the specific case, the possibility of protecting a violated right in one way or another, as well as a need for further implementation of the court's decision.

Previous instances courts correctly noted that mentioned claim (regarding withdrawal from civil circulation and destruction of counterfeit goods) is legitimate, as it is based on the prescription of paragraph 3 of part two of Article 432 of the Civil Code of Ukraine.