On March 30, 2011, the Solomyansky District Court of Kyiv, Ukraine ordered the cancellation of the trademark BALTIKA, registered for Classes 29 (processed peanuts, prepared nuts, raisins, ground almond), 30 (peanut confectionery, confectionery, fried almond) and 39 (packaging of goods).
The plaintiff, JSC Baltika Breweries (VAT “Pyvovarna Kompaniya ‘Baltika’”), brought an action against a natural person, seeking cancellation of the trademark BALTIKA (trademark No. 43973, registered on Oct. 15, 2004). The plaintiff argued that the defendant’s mark (top) was confusingly similar to the plaintiff’s internationally registered figurative mark (bottom) of the same name (IR No. 696700) for Classes 32 (non-alcoholic beverages, beers) and 35 (advertising, updating of advertising documentation), as well as to the plaintiff’s well-known trade (corporate) name in Ukraine, VAT “Pyvovarna Kompaniya ‘Baltika’”.
The defendant argued that their trademark and the plaintiff’s corporate trade name in question were different means of identification, and that the defendant acquired the right to use the mark by law, as a result of which either of the owners could use the marks without obtaining the other’s approval. The defendant also stressed that the two trademarks were not similar in all elements; the defendant also noted that the marks were registered for different classes and that beer, nuts and confectionery were not homogeneous products.
The court agreed that the plaintiff’s corporate trade name (VAT “Pyvovarna Kompaniya ‘Baltika’”) was known in Ukraine on the date the defendant filed the application (September 12, 2002) for its registration of trademark No. 43973. The court arrived at this conclusion after considering evidence (contracts, financial statements, etc.) submitted by the plaintiff and the information provided on the volume of sales and services, the duration of the trade name usage, the geographical area where the services were provided, and the degree of awareness among consumers about the interconnection between the trade name and its owner.
Following two expert investigations, the court reached the following conclusions:
The goods in Class 32 (tea, coffee, non-alcoholic fruit juice beverages) were congeneric with the goods from Class 29 (processed peanuts, prepared nuts, raisins) and the goods from Class 30 (peanut confectionery, confectionery, fried almonds)
The goods from Classes 29 and 30 (processed peanuts, prepared nuts, raisins, peanut confectionery, confectionery fried almonds) were congeneric with beer from Class 32. Because of beer’s different tastes—from bitter to sweet—it would require snacks that would help combine the tastes with similar or opposite characteristics
The packaging of the goods from Class 39 was congeneric with the services from Class 35, namely, updating of advertising material
The court also reasoned that the defendant’s mark was likely to mislead the relevant public as to which company produced the goods or rendered the services.
The court found that, on the date when the defendant filed the application (September 12, 2002) for the contested trademark, with regard to the goods and services for which it was registered in Classes 29 (especially with respect to ground almond), 30, and 39, this contested mark was similar to the plaintiff’s corporate trade name to such a degree that the two could be confused.
Therefore, the court held that trademark No. 43973 should be invalidated. This case is important because it takes into consideration the issue of well-known trade names. Despite the legal regulation of this issue since 1927 by the Soviet decree “On Firms” and, later, by amendments to the legislation, the case law is still unconsolidated and sporadic with respect to the rulings on corporate trade names and proving that they are well known.
Yuriy Karlash
PETOŠEVIĆ