In two recent decisions, the Ukrainian courts have applied provisions of the Association Agreement between Ukraine and the European Union (the “Association Agreement”) directly.
In a decision on 23.04.2018 in case № 910/14972/17 the Kyiv Appellate Economic Court pointed out that article 198 of the Association Agreement shall be applied directly in Ukraine. The provisions of this article prescribe a longer 5-year period for revocation of a registered trade mark due to lack of its use in comparison to Ukrainian law which stipulates only a 3-year term.
Another difference is that article 198 sets out additional rules for decisions in such cases, namely that the 3 months prior to an application for revocation of a registered trade mark shall not be taken into account.
The Court also explained its position with respect to provisions of the Association Agreement which provide for gradual harmonization of national laws with respect to provisions of the Association Agreement. It stated that Chapter 9 of the Association Agreement does not stipulate its gradual implementation and shall be treated as provisions of direct force effective from 01.09.2017.
For the reasons stated above Zentiva, k.s. failed to revoke the registered trade mark “bio Crystal” (above left) registered by Private Enterprise “Alliance Krasy” (Alliance of Beauty).
This is one of the first decisions of the Court of Appeal which considers provisions of the Association Agreement with respect to the trade mark revocation rules. It should be also noted that in its ruling, the Supreme Court of Ukraine pointed out that the scope of applicability of the Association Agreement must be applied in the case filed by MTA S.p.A (Italy) for revocation of the registered trade mark MTA (as depicted above right) as well. Currently the proceeding in the case is underway at a first instance court and will be conducted according to the new procedural rules as recently adopted by the Parliament of Ukraine.
