Aequo, acting in the interests of Darnitsa Pharmaceutical Company, succeeded in having revoked the decision of the PTO Appellate Chamber on recognition of the "Корвалол Corvalolum" trademark as well-known in the dispute against Farmak JSC, the Ministry of Economy, and the Ukrainian National IP Office.
The dispute continued from 2017. On 10 December 2021, based on the outcomes of a yet another new case consideration, the Kyiv City Commercial Court satisfied the claim of Darnitsa in full, however, later, the court of appeal adopted another position.
On 18 January 2023, the Supreme Court put an end to the dispute by satisfying the cassation appeal of Darnitsa in full and revoking the judgement of the court of appeal.
In this case, Darnitsa challenged the decision of the PTO Appellate Chamber on recognition of the "Корвалол Corvalolum" trademark as well-known. Prior to Dartnitsa’s claim was filed with the court, Farmak attempted to use the "Корвалол Corvalolum" trademark as the ground to invalidate the "Corvalol-Darnitsa" trademark, which attempt resulted in another judgment made in favour of Darnitsa.
The Supreme Court upheld the arguments of Darnitsa that the court had no power to substitute the PTO Appellate Chamber and remedy defects of Chamber’s decision or weigh the new evidence.
In particular, the court concluded that the "documents pertinent to the "Corvalol" (“Корвалол” in Cyrillic) trademark that were put as the basis for the Decision could not be the ground for the "Корвалол Corvalolum" trademark to be recognised as well-known, since they referred to different marks".
Further, "certain similarity of the "Corvalol" (“Корвалол” in Cyrillic) and the "Корвалол Corvalolum" designations can not be a sufficient ground for taking into account the evidence pertinent to some other trademark... Moreover, the acceptance of such evidence per se also questions the date from which the trademark was declared to be well-known ".
Speaking on the limits of discretion powers of the patent office, the Supreme Court noted that discretion is not arbitrary; it shall be always exercised in accordance with the law.
"It is an important precedent for Ukrainian judicial practice since, until now, no decision of the PTO Appellate Chamber on recognition of trademarks as well-known has been revoked in a judicial proceeding. This precedent will reinforce the efficiency of intellectual property rights protection since discretion powers should not be exercised by public authorities arbitrarily and decisions should not be based on contradictory or irrelevant arguments (as in case of the decision regarding "Корвалол Corvalolum" trademark)", Tetiana Kudrytska, Aequo’s Partner, comments.