The Supreme Court explained when a brand owner's partner cannot register a trademark in their own name

If a person who cooperated with the brand owner registers a trademark in their own name, courts must examine not only the formal structure of legal relations but also whether there was an abuse of rights and circumvention of the requirements of the Paris Convention for the Protection of Industrial Property.

This conclusion was reached by the Supreme Court in the composition of the panel of judges of the Second Judicial Chamber of the Cassation Civil Court in a case concerning the challenge of a Ukrainian trademark registration, which, according to the plaintiff, was registered in the name of his Ukrainian business partner without the brand owner's permission.

The Supreme Court annulled the decisions of the lower courts and sent the case for a new trial, emphasizing that the concepts of "agent" or "representative" within the meaning of Article 6 septies of the Paris Convention should not be interpreted too narrowly.

Case circumstances

A Moldovan citizen filed a lawsuit demanding the invalidation of a Ukrainian trademark certificate registered in 2019 in the name of a Ukrainian citizen. The plaintiff claimed that he owned the rights to the international registrations of the respective brand, which is used by a group of related companies in several countries.

According to him, the defendant headed a Ukrainian company that, under a contract, sold products under the respective trademark in Ukraine. Within this cooperation, the company was granted the right to use the trade name, logos, and trademarks to promote products in the Ukrainian market.

However, in 2017, the defendant filed an application to register a similar mark as his own trademark in Ukraine and received the corresponding certificate in 2019. Later, this became an obstacle to granting legal protection to the plaintiff's international trademark in Ukraine, as Ukrpatent referred to the existence of a previously registered similar mark.

The plaintiff believed that such registration contradicted Article 6 septies of the Paris Convention, which provides the trademark owner the right to demand cancellation of the registration if an agent or representative registered the mark in their own name without consent.

Decisions of the courts of first and appellate instances

The Pechersky District Court of Kyiv and later the Kyiv Court of Appeal denied the claim.

The courts reasoned that contractual relations existed between the Moldovan and Ukrainian companies, while the trademark was registered to an individual. In their opinion, the plaintiff did not prove the existence of agency or representative relations directly between him and the defendant as individuals.

Additionally, the courts noted that the plaintiff did not use the opportunity to file objections during the examination of the trademark registration application.

Position of the Supreme Court

The Cassation Civil Court within the Supreme Court disagreed with these conclusions.

The court emphasized that in the field of intellectual property, as in other private law relations, the principles of good faith and prohibition of abuse of rights apply. A person cannot use formal legal constructions to circumvent rules aimed at protecting the rights of another entity.

The Supreme Court specifically stressed that the concepts of "agent" and "representative" in Article 6 septies of the Paris Convention should not be interpreted solely through the prism of national civil or commercial law. Such concepts may include distributors, product resellers, and other commercial partners who are in contractual relations with the trademark owner and are obliged to act in their interests.

The court also referred to the practice of the Court of Justice of the European Union, according to which the concept of agent or representative should be interpreted broadly and may cover various forms of commercial cooperation that create relationships of trust and loyalty between the parties.

Why the Supreme Court annulled the decisions

According to the cassation instance, the lower courts limited themselves to a formal conclusion that the contract was concluded between legal entities and did not investigate other important circumstances of the case.

In particular, they did not properly assess the plaintiff's arguments that the defendant was the head of the Ukrainian distributor company, owned 100% of its authorized capital, and through this company participated in the sale of products under the respective trademark in Ukraine. The courts also did not verify the claim that the company acted under a contract that provided for the use of the brand to promote products in the Ukrainian market.

The Supreme Court noted that a person who is simultaneously the head of a company and the owner of 100% of its shares cannot automatically be regarded as a regular buyer or client of the trademark owner under certain circumstances. If the acquisition of trademark rights is made to circumvent the requirements of Article 6 septies of the Paris Convention, such actions may indicate bad faith and abuse of rights. At the same time, the Supreme Court did not establish the presence of such circumstances in this case but only pointed out the need for their proper examination during the new trial.

Separately, the cassation court emphasized that the right of a person to challenge a trademark certificate in court does not depend on whether they filed objections during the examination of the application. The mere fact of not filing such objections cannot deprive a person of the right to judicial protection.

What the Supreme Court decided

The Supreme Court concluded that the courts of first and appellate instances incompletely examined the circumstances of the case and prematurely denied the claim.

The cassation court noted that to properly resolve the dispute, it is necessary to establish the real nature of the relations between the parties, clarify whether they could fall under the concepts of agency or representative relations within the meaning of Article 6 septies of the Paris Convention, and assess the defendant's actions through the principles of good faith and prohibition of abuse of rights.

Accordingly, the Supreme Court satisfied the cassation appeal, annulled the decision of the Pechersky District Court of Kyiv and the ruling of the Kyiv Court of Appeal, and sent the case for a new trial to the court of first instance. The question of the validity or invalidity of the disputed trademark certificate on the merits has not yet been resolved.

Legal conclusion of the Supreme Court

In this case, the Supreme Court effectively formulated an important approach to the application of Article 6 septies of the Paris Convention. When considering disputes over trademark registration by persons cooperating with the brand owner, courts must assess not only the formal structure of contractual relations but also the real nature of commercial cooperation, the presence of trust and loyalty relations between the parties, and verify whether the corporate structure was used to circumvent international law requirements and bad faith acquisition of trademark rights.

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