أوكرانيا

Case № 910/13119/17

Plaintiff: Jack Daniel's Properties Inc.

Defendant 1: "Buklet-Yug" Limited Liability Company;

Defendant 2: Ministry of Economic Development, Trade and Agriculture of Ukraine (previous name – Ministry of Economic Development and Trade of Ukraine)

Lawsuit re: invalidation of certificates for marks for goods and services and obligation to perform actions.

In case № 910/13119/17, the Company claimed to Kyiv city commercial court to invalidate certificate of Ukraine № 50459 for the mark for goods and services "BLACK JACK", certificate of Ukraine № 185083 for the mark for goods and services "БЛЕК ДЖЕК" which the Company owns.

Justifying claims the plaintiff notes that TM "BLACK JACK", TM "БЛЕК ДЖЕК", which are protected by Certificates No. 50459, 185083, are so similar that they may be confused with previously registered mark for goods and services "JACK DANIEL'S", which owner according to the certificate of Ukraine No. 5109 is the Company 2, - therefore, in accordance with the second paragraph of the third part of Article 6 of the Law of Ukraine "On Protection of Rights to Trademarks for Goods and Services" TM "BLACK JACK ", TM "БЛЕК ДЖЕК" do not meet the conditions of legal protection and violate the property rights on TM "JACK DANIEL'S".

Courts considered the case several times.

As a result of the new consideration of the case, first instance court’s decision was canceled by decision of the Northern Commercial Court of Appeal dated February 19, 2020, and a new decision was made, which rejected the claim.

Previous courts reached a conclusion on reasonableness of plaintiff's claims regarding the invalidation of Certificates No. 50459, 185083 for TM "BLACK JACK", "БЛЕК ДЖЕК".

However, the courts of the first and appellate instances came to opposite conclusions regarding the existence of grounds for applying provisions of Chapter 19 of the Civil Code of Ukraine.

The Supreme Court, revoking the decision of the Commercial Court of Appeal dated February 19, 2020 and upholding the decision of the court of first instance, based on the following.

According to the first part of Article 261 of the Civil Code of Ukraine, limitation period begins from the day when a person found out or could have found out about the violation of his right or about the person who violated it.

The statute of limitations is applied by the court only upon the statement of the party in the dispute, made before it renders a decision (part three of Article 267 of the Civil Code of Ukraine).

Parts four and five of Article 267 of the Civil Code of Ukraine provide that the expiration of the statute of limitations, the application of which has been declared by a party of the dispute, is a ground for rejecting the claim.

If the claims are recognized as well-justified, and the party in the case declares that the statute of limitations has expired, the court is obliged to apply the provisions of Article 267 of the Civil Code of Ukraine to the disputed legal relationship and to resolve the issue of the consequences of such a statute of limitations, i.e., or to reject the claim due to the statute of limitations, or if there are good reasons for its omission - to protect the violated right.

For the correct application of the first part of Article 261 of the Civil Code of Ukraine in determining the beginning of the statute of limitations, not only the direct awareness of a person about the violation of his rights is important, but also the objective possibility of this person to know about the circumstances of the violation of his rights. According to the content of the given norm, the beginning of the statute of limitations coincides with the moment when the interested party has the right to sue, that is, the opportunity to exercise his right in a compulsory manner through the court.

Pursuant to the Supreme Court rulings dated 26.06.2018 and 28.01.2020 in case № 910/20564/16, resolving disputes regarding the invalidation of certificates of Ukraine for marks for goods and services, the court of cassation assumes that the beginning of the statute of limitations for filing such lawsuits cannot automatically coincide with the date of publication of information on the registration of a mark for goods and services.

This right is connected, in particular, with the beginning of the corresponding conflict on the market regarding the disputed designation, for example, the beginning of the use of the disputed designation on the market.

The courts established that the Company requested to apply the consequences of the expiration of the statute of limitations to the plaintiff's claims due to the fact that the plaintiff missed three-year statute of limitations from the moment of publication of information on the registration of Certificates No. 50459, 185083, the owner of which is the Company.

The company did not consider that it had missed the statute of limitations by filing a lawsuit in the case, and did not apply for renewal of such a period.

Therefore, the Company, having made a corresponding application, should properly justify it.

The decision of the court of first instance states that the plaintiff objected to the application of the statute of limitations due to the fact that he did not know about the registration of TM "BLACK JACK", "БЛЕК ДЖЕК", which are protected by Certificates No. 50459, 185083 from publication of information about their registration, therefore there is no reason to consider such a moment as the commencement of the limitation period.