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Decision of the Supreme Court case № 910/5815/21 of 06.04.2023

Case № 910/5815/21

Plaintiff: Google LLC

Defendant 1: PJSC " Nerukhomist stolitsi"

Defendant 2: State organization "Ukrainian National Office for Intellectual Property and Innovation"

Lawsuit re: early validity termination of certificates of Ukraine № 81675 and № 81677 for trademarks in part.

 

Google LLC is a manufacturer of "smart home" devices (climate control, security, media systems, etc.) and related software under the "Nest" or "Google Nest" brand.

The plaintiff appealed to the court to protect his legitimate interest due to the fact that the defendant 1 has not used the marks for goods and services "Nest" according to certificates № 81675 and № 81677 for part of the specified goods and services of the relevant classes of the MKTP for more than five years, and he cannot register such a mark under the same classes on his name due to existing registration of this designation under defendant 1, which violates his rights and interests protected by law.

The decision of the commercial court rejected the claim. The decision of the commercial court was overturned by the appellate commercial court decision, a new decision was adopted, which satisfied the claim in full.

The Supreme Court considered the cassation appeal of PrJSC "Nerukhomist stolitsi" and drew attention to the fact that in this case the appellate court noted that defendant 1 did not prove the use of the trademark for the relevant services of class 37 and 42 of the MKTP, instead, the local commercial court unjustifiably recognized that circumstances were established regarding the use of disputed trademarks without specifying what kind of evidence proves such use.

The Supreme Court noted that the main function of a trademark is to distinguish the goods and services of one person from the goods and services of another person (as a mean of individualization).

Therefore, the Supreme Court rejected the arguments of the complainant that in this case there is no separate use of trademarks in the provision of a separate disputed service, and their use in the disputed services is precisely in the aggregate of actions, and left the cassation appeal unsatisfied and the decision of the appellate commercial court on satisfaction the claim of Google LLC unchanged.