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IP Market News - March 2023

Crane IP Law Firm Ukraine


The Ukrainian company “Starlink” won a lawsuit against Elon Musk’s SpaceX

On March 2, 2023, the court of first instance rejected the claim of SpaceX (Space Exploration Technologies Corp.) to LLC “Starlink”  in the case regarding the cancellation of the certificate for TM “Starlink” in Ukraine.

The American SpaceX tried to prove that the Ukrainian “Starlink” did not use its trademark during the last five years for all services in classes 37, and 38 and part of services in class 42. The plaintiff claimed that the defendant did not carry out economic activities in the field of electronic communications and activities in the field of space activities.

SpaceX On February 15, 2022, an application was submitted for registration of the trademark “Starlink by SpaceX” in relation to the list of goods of classes 09, 38, and 42.

The court drew attention to the fact that no information about further registration or refusal to register the Starlink by SpaceX trademark was provided by the plaintiff. The case materials also do not contain data on the examination of the application, or the publication of the issuance of the certificate.

Thus, the court decided that the fact of a real violation of his rights was not proven by the American company.

Also, based on the results of the conducted research, an independent expert concluded that there are grounds to believe that the Ukrainian TM “StarLink” is used, at least, for a large list of services in classes 37, 38, and 42.

The American company SpaceX has the right to appeal the court decision.

 

Ukraine has intensified the protection of intellectual property rights

On March 20, 2023, the parliament of Ukraine amended a number of laws to strengthen the protection of intellectual property rights.

In particular, amendments were made to the Civil Code on the regulation of intellectual property protection by the court. The court can make a decision, in particular, about:

– withdrawal from civil turnover of goods made or entered into a civil turnover in violation of intellectual property rights and destruction

– removal of materials and tools that were used mainly for the manufacture of goods with intellectual property rights, or the removal and destruction of such materials and tools at the expense of the person who committed the violation (the destruction occurs at the expense of the offender);

– application of one-time cash payment instead of applying other ways of protecting intellectual property rights. The use of one -time cash payment shall be made at the request of the defendant, provided that the intellectual property right is violated by the defendant inadvertently and without negligence and that the use of other methods of protection is disorderly damage caused to the plaintiff.

The amount of a payment is determined by the court as the amount of remuneration, which would be paid for granting the plaintiff’s permission to use the intellectual property rights in which the dispute arose, and reasonably satisfying the plaintiff

In the Economic Procedure Code and the Civil Procedure Code appear a new article “Requiring individual evidence in cases of violation of intellectual property rights”.

According to it, upon a motivated request of the participant of the case, the court may decide on the demand of evidence in the form of information on the origin and network of distribution of Intellectual property rights.

It is also established that at the request of the TM certificate, the geographical indication, the utility model, the patent for the invention, and the registered or unregistered industrial design, such violation must be terminated, and the offender is obliged to compensate the rights owner of the property damage by compensation or payment of compensation and payment or caused by moral harm.

The amount of damages is determined by the court, taking into account the lost benefit or income received by the offender as a result of a violation of the owner’s rights.

The amount of compensation is determined by the court on the basis of the amount of violation, guilt of the offender, and other circumstances of significant importance. However, the amount of compensation may not be less than the amount of remuneration that would be paid for granting permission to use the rights to the object in which the dispute arose.

If the violation of rights occurred inadvertently and without negligence, the amount of compensation is equal to the amount of remuneration that would be paid for the granting of such permission.

Compensation recovery is applied by the court instead of compensation for damages at the discretion of the right holder.

The Law on Copyright and Related Rights provides in particular that regardless of the alienation of property rights for the execution the executor has the right to fair remuneration for relevant methods of use.

Without the permission of the subject of property-related rights to execution, but with the payment of fair remuneration to the executors, such use of phonograms, and videograms that contain appropriate execution is possible:

– public performance of the phonogram;

– public phonogram notification;

– public demonstration of videograms;

– public videographer notification.

The right to fair remuneration belongs only to the executor, goes only to the heirs of the performer, and cannot be transferred (alienated) to other persons.

The fair reward of the contractor is 50 percent of the income from the rights concerning the use of the relevant phonogram or videogram and is determined in accordance with the Law of Ukraine “On Effective Management of Property Rights of Copyright and (or) Related Rights.” The remaining 50 percent of the specified income from the rights belongs to the manufacturer of the phonogram or the manufacturer of the videogram, which contains appropriate execution.

 

5 tons of counterfeit coffee of a well-known Italian brand were seized in Ukraine

The Bureau of Economic Security of Ukraine identified residents of Zakarpattia Oblast who stored counterfeit coffee of a well-known international brand in a rented warehouse.

Thereafter, falsified products were sold on the market in the Zakarpattia region and via the Internet under the guise of imported original coffee. At the same time, the entrepreneurs did not have any contracts or licenses for the right to use of the trademark.

The manufacturing company has confirmed that all products labeled under its brand are counterfeit.

In this way, the Italian company, which has registered trademarks in Ukraine, suffered material damage in the total amount of almost UAH 3.5 million ($100 thousand).

Persons have been notified of the suspicion of committing a criminal offense provided for in Art. 229 of the Criminal Code of Ukraine (illegal use of a mark for goods and services, trade name, a qualified indication of the origin of goods).

 

Crane IP Law Firm



About the Firm

Crane IP Law Firm

Address34-V Radystiv str., ap. 35, Kyiv, 02089, Ukraine
Tel380-44-355 5557
Fax
Contact PersonIvan Nikitchenko
Emailinfo@craneip.com
Linkhttps://craneip.com


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