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.