Case № 910/9564/20
Plaintiff: Public organization "Red Cross Society of Ukraine"
Defendant 1: State enterprise "Ukrainian Institute of Intellectual Property"
Defendant 2: Astravirtus Trade Limited Company
Lawsuit re: invalidation of a certificate for a mark for goods and services.
On December 14, 2021, a panel of judges of Economic Cassation Court as part of the Supreme Court, considered a case in which Public Organization "Red Cross Society of Ukraine" filed a lawsuit against the Ministry of Economic Development and Trade and Astravirtus Trade Limited Company to invalidate a certificate for the mark for goods and services.
The lawsuit is based on the fact that the emblem of the Red Cross is used in the sign for goods and services owned by the company, which is a violation of current international legal acts and the legislation of Ukraine.
The commercial court of the first instance, with a decision left unchanged by the resolution of the commercial court of appeal, satisfied the claim.
Courts of previous instances proceeded from the fact that: the plaintiff legitimately brought this lawsuit to the court to protect his violated rights; the Red Cross Society of Ukraine is the only Ukrainian organization that has the right to use the symbols of the Red Cross with a recognition function for the purposes and types of its activities; the expert's conclusion established that the element in the form of a red cross in the sign for goods and services is the one that depicts the emblem of the Red Cross; the conditions and rules for using the Red Cross emblem are determined by the Convention on the Improvement of the Fate of the Wounded and Sick in Active Armies dated August 12, 1949 and the Law of Ukraine "On the Symbolism of the Red Cross, Red Crescent, Red Crystal in Ukraine".
The first part of Article 6 of the Law of Ukraine "On Protection of Rights to Marks for Goods and Services" (as amended at the time of registration of the disputed mark) defines:
- according to this Law, signs depicting or imitating, in particular, emblems, abbreviated or full names of international intergovernmental organizations cannot receive legal protection.
Such designations may be included in the mark as elements that are not protected, if there is the consent of the relevant competent authority or their owners.
In accordance with the first part of Article 19 of this Law, a certificate may be declared invalid in whole or in part in a court of law in the event of:
– non-compliance of the registered mark with the conditions for granting legal protection;
- presence in the certificate of mark image elements and the list of goods and services that were not in the submitted application;
- issuance of a certificate as a result of submitting an application in violation of other persons rights.
The Supreme Court agreed with conclusions of previous instances courts that there are grounds for recognizing a certificate for a mark for goods and services as invalid due to its non-compliance with conditions for granting legal protection, established by Article 6 of the Law of Ukraine "On the Protection of Rights to Marks for Goods and Services", left the mentioned court decisions unchanged, and dismissed the cassation appeal of Astravirtus Trade Limited Company.