12 September, 2019 Company news

Trademark Registration with the same name is possible

In order not to be unfounded, we will tell here about the real situation on the example of a court case in Ukraine, where the Claimant filed a lawsuit against the Respondent to prohibit the use of the “MARVEL” trademark.

A well-known sign under which comics, films, other cinema products, fan products, etc. are produced.

Case story: the Claimant had already registered the MARVEL trademark in 2013, which is confirmed by the relevant Certificate, in the 34th class of Nice classification (the goods related to smoking products: lighters and gas canisters for them; boxes for matches and matches ; smoking pipes and paper for them; mouthpieces (cuffs) for cigars and cigarettes; ashtrays; cigar cutters; cigarettes (cigarettes), cigarette ends (filter) cigarillos; snuff-boxes; smoking herbs; tobacco etc.)

At the same time, the Respondent, according to information posted on the website of the Ukrainian Institute of Intellectual Property, applied for registration in Ukraine of the mark for goods and services “MARVEL” in 2018 in the 32th class of Nice classification (includes such goods as: beer, mineral and carbonated water and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages).

Given that the Respondent intended to register a trademark with the same name, he, according to the Claimant, violated the rights of the latter, since the sign is identical and so similar that they can be confused.

The position of the court is as follows.

According to para. 4 p. 3 Art. 6 of the Law of Ukraine "On the Protection of Rights to Marks for Goods and Services", designations that are identical or similar so that they can be confused with company names known in Ukraine and belonging to other persons who have received the right to them before the filing date Establishment of an application for the same or related goods and services.

However, when making the decision, the court proceeded from the fact that the mark used by the Claimant and the mark submitted for state registration by the Respondent belong to different classes according to the list of goods and services, and therefore are not identical or similar to such an extent that they can be confuse.

Therefore, the satisfaction of the claim was refused completely.

Thus, it is legitimate to create a trademark with the same name as an existing TM, provided that such a mark is registered for goods and services in different classes, which excludes the possibility of similarity of the marks to the extent that the consumer (client, person) can confuse them.