Ganic D. A. Invalidation of certificates for trademarks: deceptive designations / / Legal weekly. - 2013. - № 25-26. - P. 7 (text written in Ukrainian)

Urgency invalidation of certificates of trademarks increases with time, while the courts hear a large volume of disputes related to intellectual property rights to the trademark. Currently, the use of these and similar designations trademarks are common cases as this option seems more attractive than investing money in advertising the newly created brand. The emergence of the trade network like brand goods not immediately cause suspicion and nashtovhne average consumer to think about changing notation. Thus, a manufacturer of similar goods will make a profit from the sale.
Article 499 of the Civil Code of Ukraine stipulates that intellectual property rights in the trade mark declared invalid on the grounds and in the manner prescribed by law. According to Art. 494, 495 CC of Ukraine intellectual property rights in the trademark certificate shall be certified because it is subject to invalidation certificate.

According to Art. 19 Law of Ukraine "On Protection of Rights to Trademarks for Goods and Services" such reasons are: the discrepancy registered mark terms of legal protection, the presence of elements in the certificate mark and image of the goods and services that did not exist in the application, issuance of certificates due to the application in violation of the rights of others. Following the par. Section 2, Article 5. 6 of the Law of Ukraine "On Protection of Rights to Trademarks for Goods and Services" can not receive legal protection of the designation that is misleading or deceptive or which may be misleading as to the goods, services or persons that produces goods or provides services.

Given the multiplicity of existing practices for violation of Article 6 of the Law of Ukraine "On Protection of Rights to Trademarks for Goods and Services" to flesh out the concept of "designation that is misleading or deceptive or which may be misleading as to the goods, services or a person who produces the goods or providing a service. "

According to paragraph 4.3.1.9. Rules of drawing up, submission and consideration of the application for a Certificate of Ukraine to sign for the goods and services to the signs that are misleading or deceptive or which may be misleading as to the goods, services or a person who manufactures a product or provides a service include signs which rise in the consumer's mind associations connected with a certain quality, geographical origin of goods or services or a particular brand that is not really true. Designations may be deemed misleading or so that can be confusing when it is obvious that it is in use as a mark does not preclude the danger of misleading the consumer.

According to the recommendations of the World Intellectual Property Organization "During the inspection, the similarity of trade marks is that they need to compare ¬ to challenge in general and that more importance should be given the common elements that may be confusing you with ¬ dividing the difference is not visible to the average consumer. Trademarks may be similar to one another to a greater or lesser extent. In this case the test is to determine whether they are so similar to mixing. The trademark is confusingly similar to the previous when used for similar goods and so similar to the previous sign that it is probable mislead consumers regarding the origin of goods. If the consumer can mix products dystynktyvna feature the trademark does not work and the consumer can not buy a product he wants. This is bad for consumers, and bad for the owner of the trade mark, losing volume sales.

The company «Kaminova A / C» (Cheminova A / S) appealed to the court of the State Department of Intellectual Property, Ministry of Education and Science of Ukraine, Limited Liability Company "Company" Arista "to recognize completely invalid certificates Ukraine for trademark and services "SUPERVINTSYT." Plaintiff's claims obhuntuvav that is registered under the trademark "SUPERVINTSYT" does not meet the requirements of health and a certificate issued by Ukraine as a result of the filing of the infringement plaintiff, as holder of the international registration. Economic Court of Kyiv received the case file to the expert report, according to which the trade mark for goods and services with certificate of Ukraine "SUPERVINTSYT" is similar to the sign for the goods and services for the international registration of «VINCIT», previously registered, including the territory of Ukraine, name of another person for the same goods 5 of classes so that they can be confused, trademark services "SUPERVINTSYT" is misleading as to the goods and the person who produces the goods in connection with the use of the mark for goods and services «VINCIT» ( international registration).
Also similar issue company "Bacardi & Company Limited", Bahamas appealed to the Commercial Court of Kyiv action for annulment of the certificate completely Ukraine to sign for goods and services "Martinique" owned by LLC "Balta", and the commitment ' Liabilities Department amend the State register of trademarks for goods and services due to the fact that the mark is confusingly similar to the trademark of the plaintiff "MARTINI" by the testimony of Ukraine. Commercial Court in view of the evidence collected in the case, in particular, the conclusion of legal expertise in the appropriate part clarifications that mark for goods and services "Martinique" in Ukraine is similar evidence so that they can be confused with the trade mark applicant "MARTINI "Ukraine for the certificate in respect of goods of classes 32, ie installed discrepancy contested trademark class 32 of the Nice Classification criteria for legal protection. Therefore, the claim has been satisfied in the relevant part.

In accordance with paragraph 4.3.2.5. Rules of drawing up and submitting an application for a Certificate of Ukraine to sign for the goods and services in establishing similarity of goods or goods and services, the likelihood of the consumer the impression of belonging of a person who produces goods or provides services. To establish such uniformity consider race (species) of goods and services, their purpose, type of material from which products are made, conditions and channels of distribution of goods, the range of consumers.

Paragraph 4.3.2.6. Rules of drawing up and submitting an application for a Certificate of Ukraine to sign for the goods and services provided that in determining the similarity of word signs considered sound (phonetic), graphics (visual) and meaning (semantic) similarity.
In accordance with Section 65 Decision of the Plenum SECU number 12 from 17.10.2012 year, resolve disputes related to the invalidation of certificates for trademarks and service marks registered grounds that the conditions for granting legal protection to clarify issues require special expertise (eg, whether a certain element is dominant position in the image of the mark, whether there is reason to believe that the sign may enter consumer confusion about the origin and quality of products marked with this sign, what parts of the image are similar to other images , whether the characters are so similar that they can be confused, etc.), the economic court is necessary if the similarity is not obvious nature appoint forensic examination without taking upon itself the functions are not appropriate court expert. Commercial courts should establish similar signs for goods and services at their own discretion. According to part six of Article 42 of the Commercial Procedure in case of rejection of the economic court forensic expert is to be motivated in the decision.

Deceptive designation is an objective characteristic and semantic inconsistencies resulting from the value notation - Properties of the goods or services to which they are marked, ie whether or not the product or service characteristics that contradict the semantic value of the tags. This information about the presence or absence of such properties consumers perceived as authentic.

Ability to mislead the consumer as to the person who manufactures a product or provides a service may occur if there is a market related products or services that are identical or similar labeled so that you can confuse the designation, rights that are acquired before (industrial designs, names, etc. ). This similarity may produce in the mind of the consumer associations connected with a particular brand that is not really true.

Despite the widespread use of the practice of invalidating evidence trademark in connection with the use of misleading designations, the current legislation of Ukraine there is a tendency to define such a criterion is not directly in the legislation, and with expertise. Analyzing case law on the definition of misleading designations, it should be noted that the courts tend to examination, since in such cases the necessary expertise and to minimize risks challenge the court's decision.

In the context of study is useful to refer to the Law of Ukraine "On Protection Against Unfair Competition", which states that the use without permission of the authorized person to sign someone else's goods and services, other signs and promotional materials, packaging of goods can lead to confusion with the activities of another entity, or any other actions of competition contrary to the rules, trade and other fair customs in entrepreneurial activities is recognized as unfair competition and is prohibited by law. The appearance on the market of similar goods and services which are identical to the existing designation is the likelihood that the consumer will perceive the product or service subject to another well-known company. Thus, the new company takes away some customers, profits, and bases its activities on the reputation of the well-known firm.

On this basis, applying the legislation, it should be noted that the degree of information rozreklamovanosti good factor significantly associated with the use of misleading designations. Thus, the stress difference between his brand from all other customers and pay attention to the details that help distinguish a product or service from a fake.