أوكرانيا

Case № 910/13209/18

Plaintiff: Limited Liability Company "Ascania-Trading"

Defendant: Ministry of Economic Development and Trade of Ukraine

Third party: МcDonald's International Property Company, Ltd.

Lawsuit re: invalidation of the Appeals Chamber decision.

In case No. 910/13209/18 "Ascania-Trading" LLC filed a lawsuit against the Ministry of Economic Development and Trade of Ukraine to invalidate the decision of the Appeals Chamber of the State Intellectual Property Service of Ukraine to recognize the mark "Mс" as well-known in Ukraine regarding McDonald's International Property Company, Ltd. as of 01.06.2009.

The lawsuit was rejected by decision of the Kyiv city Commercial Court, which was left unchanged by the decision of the Northern Commercial Court of Appeal.

Court decisions are motivated by the groundlessness of the claims.

Commercial Court of Cassation within the Supreme Court left the decisions of previous court instances unchanged according to the following.

The disputed decision of the Appeal Chamber recognized the mark "Mc" as well-known in Ukraine in relation to the Company (a company of the state of Delaware, USA) for goods of class 29 of the MKTP - "food products made from meat, pork, fish, poultry; milk shakes"; MKTP class 30: "sandwiches; sandwiches with meat; pork sandwiches; fish sandwiches; chicken sandwiches; cakes; flour confectionery; ice cream" and services of MKTP class 43 - "self-service restaurants; fast and casual establishments service; restaurant services; takeaway food and beverage preparation services" as of 01.06.2009.

The Company believes, in particular, that the mark "Mc" has no distinguishing ability, is a commonly used prefix of foreign origin and cannot be monopolized by one person, and therefore could not be recognized as a well-known mark in relation to the Company; The plaintiff is an owner of Ukrainian certificates No. 130111, 130112 for "McCorn" and "MacCorn" marks, which include the "Mc" mark, and therefore recognition of the mark as well-known violates the rights of the plaintiff.

According to the Company, the mark "Mc" has acquired independent distinctiveness, as well as the status of a well-known mark of the McDonald's company, which is confirmed by the decisions of the courts of the United States, the European Union, and other countries available in the case. The history of the "Mc" sign is directly related to the history of the Company, in particular, it symbolizes one of its founder’s names.

The Company did not take into account that the contested Decision of the Appeal Chamber recognized the mark "Mc" as well-known in the name of the Company according to its application, and by demanding the recognition of this decision as invalid, the plaintiff actually disputes the ownership of the Company.

At the same time, by decision of the local commercial court, the Company was involved in the case as a third party, which does not make independent claims regarding the subject of the dispute.

The court decision on the merits of this case on the Company's rights was made in the absence of the necessary procedural status of a co-defendant in the case. Given the content of the stated claims, the Company itself should have been the defendant in the case together with the Ministry (co-defendant). In addition, the Company (but not the Ministry) did not recognize the claimant's right to the "Mc" sign.

At the same time, the courts of previous instances did not admit a violation of the procedural law rules in this connection, because the right to file a petition for the involvement of a co-defendant in the case belongs exclusively to the plaintiff; other participants in the case are not given such a right, and the court also does not have the right to involve a co-defendant in the case on its own initiative. The plaintiff not only did not file a corresponding request, but also objected to the Company's participation in the case as a co-defendant.

Taking into account the fact that the courts of previous instances came to the correct conclusion that there are no grounds for satisfying the claim, although they did not justify this conclusion properly, the Commercial Cassation Court has no grounds for satisfying the cassation appeal.