News / 19 07 2023

Exciting Victory in the Supreme Court

Our team's victory set a precedent in the Ukrainian trademark jurisprudence.

Mamunya IP attorneys Oleksandr Mamunya and Ilona Boliubash prevailed in the trademark litigation for a global IT giant focused on internet searches, AI, and software development. It took two years of hard work and creativity.

Our client wanted to register the trademark in Ukraine to introduce an innovative service to the market under its brand. It appeared that the trademark was already registered in the name of a Ukrainian construction company. However, the relevant registered trademark had not been used for at least five years before our clients trademark application. Despite this, the defendant unlawfully prevented the client from registering and using the trademark.

Our client brough an action for the conflicting trademark cancellation due to its non-use. The court of first instance erroneously concluded that the trademark can be considered used even if the services thereunder were not provided separately but within some other complex business activities of the defendant as part of the construction cycle. 

The Court of Appeals and the Supreme Court overturned the lower court decision and ruled that a trademark may be considered used only when it is present on the market with respect to a separate service regarding which it is registered.

The Supreme Court also issued a landmark opinion that installation of equipment as an intermediate stage of the construction cycle of a real estate developer is not a separate service.

The Supreme Court has indeed expressed a new position on the use of trademarks in the provision of services. Previously, this issue was not addressed in the court practice. Instead, they analyzed the use of trademarks when offering goods. Therefore, we faced some resistance in forming a new practice in the court of first instance. However, in the end of the day, we managed to confirm our position in the court of appeals and the Supreme Court

- Ilona Boliubash

Therefore, Ukrainian courts of all instances will be guided by our client's case in the future disputes.

We are immensely proud of this victory, which not only safeguards our client's intellectual property rights but also sets a crucial legal precedent in Ukraine's trademark landscape.

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