Trademark Infringements on the Internet under Ukrainian Case Law
Once it is ascertained the trademark is used in Ukraine, the next step would be checking what manner of the use it is, whether it is an infringement or falls under exceptions to trademark rights. This is a continuation of the previous post.
Trademarks in Domain Names
One of the general principles applicable in this kind of cases is that the mere registration of a domain name that incorporates someone else’s trademark shall not be regarded as trademark use. A trademark is deemed to be used only if it is used in relation to the goods and services for which it is registered. This position is expressed in two upheld judgments of the Kyiv City Commercial Court issued in 2010 and 2011, available here (case No. 20/68) and here (case No. 20/296).
In case No. 5011-39/8538-2012, resolved by the High Commercial Court of Ukraine in 2013 and initiated by the owner of the trademark Kaeser against the owner of the domain name kaeser.com.ua, the courts found that on pages of the web site the mark KAESER was used, as well as information about activities of a codefendant in connection with the sale of compressors and components, similar to the products produced by the plaintiff. The courts ascertained that the mark in the domain name was similar to the extent of confusion with the trademark owned by the plaintiff and might mislead consumers regarding the source of the goods or services. Based on these findings, the courts prohibited the use of the plaintiff’s trademarks in the domain name and the defendants’ email addresses.
Later, in 2015, Ukraine adopted the Law on Electronic Commerce, which clarifies trademark rights exceptions related to the resale of goods or services put on the market by the trademark owner. In its art. 3 the Law states that domain names, email addresses should not be regarded as part of commercial proposals, which means that even resellers of original products should obtain trademark owner’s consent if they want to use the trademark in the email address, whenever use is related to the goods or services for which the trademark is registered.
The most recent example of such cases is the resolution of the Kyiv City Court of Appeals in case No. 753/21112/17, dated December 05, 2019. The court of appeals upheld the judgment of the court of the first instance that had granted relief in favor of the plaintiff, a trademark owner. The court of appeals noted that the purchase of goods under the respective trademark had not created the right, in particular, to advertise the goods on a certain web resource, because this was a specific manner of use of a trademark. Placing a wordmark in a domain name is intended for the attraction of attention of a consumer, that is, it is done for the purpose of advertising, and such advertising still remains within the exclusive competence of the trademark owner. Therefore, that manner of the use required obtainment of permission of the trademark owner.
A domain name can also be used for redirection to another website and such use should be regarded as the use of a trademark, especially when infringing activities are concerned. In 2016 the Kyiv City Commercial Court delivered a judgment in case No. 910/20983/15 where it stated that the products that are advertised and offered for sale on the website at emberoil.com, the access to which is provided through the domain name «mobil.dn.ua» by redirection, are similar to the goods for which the trademark of the plaintiff was registered. Eventually, the court ordered that the domain name should be transferred to the plaintiff.
There were also domain name disputes between owners of similar trademarks. For instance, between 2016 and 2018 courts considered a dispute related to a .UA ccTLD, a key characteristic of which is that they can be assigned only to owners of Ukrainian trademarks. The Kyiv City Court of Appeals upheld the judgment of a lower court in the case No. 761/39376/16 where the owner of a trademark registered for goods and services in classes 9, 16, 35, 38, 41, and 42 filed an action against the owner of a similar trademark registered for goods in class 30. Namely, from June 2007 to November 2014, the plaintiff was the owner of the contested domain name, but did not renew the domain name registration. Then, on January 16, 2015, the same domain name was registered in the name of the defendant, who had a similar trademark, but registered for goods and services different from those covered by the plaintiff’s trademark. The courts did not find that the contested domain name was registered in bad faith regardless of the plaintiff’s allegations that the website under the domain name lacked content.
Trademarks on Web Pages
This category of cases is partially governed by the Law on Consumer Rights Protection. Art. 15 of the Law states that consumers should be provided with necessary information about products or services prior to the moment they purchase them. This information is not regarded as advertising, and it should include the name of the goods and the name or reproduction of the trademark under which they are sold.
In case No. 904/2029/15, resolved by the High Commercial Court of Ukraine in 2015, the plaintiff, who was the owner of the trademark, filed an action against a legal entity who operated the website and offered the plaintiff’s products for sale there. The High Commercial Court of Ukraine agreed with the defendant’s position that the use of the trademark for distinguishing one manufacturer’s goods from another’s for the goods already put on the market by the trademark owner was lawful.
In yet another case, No. 333/1535/15, the High Specialized Court on Civil and Criminal Cases construed Art. 16 of the Trademark Law related to exceptions to trademark rights and use of a trademark on a website in connection with the sale of goods under this trademark. The court combined two exceptions by noting that exceptions also apply in relation to non-commercial use of a trademark. According to the court, providing consumers with true and correct information about goods by a reseller is free of charge and does not lead to gaining profits. Therefore, a reseller has the right to subsequently resell goods and use a trademark without the consent of its owner, provided that the reseller puts the goods on the market after their first sale by the trademark owner or with the trademark owner’s consent”.
The part of the court’s reasoning related to the non-commercial nature of resellers’ providing consumers with true and correct information about goods is arguable, but, in general, courts agree that resellers of genuine goods are entitled to use the trademark as described in Art. 15 of the Law on Consumer Rights Protection in order to distinguish the goods of one trader from those of another, provided that the goods were initially put on the market by the trademark owner.
The most interesting dispute was resolved in 2018 by the Lviv Region Commercial Court (case No. 914/2509/16). This case was initiated by a trademark owner against an individual entrepreneur who put on his website and used in commercial activities images of products bearing the plaintiff’s trademarks and a catalog of the plaintiff’s products. On the website, the defendant also stated that he was a partner of the only official distributor of the plaintiff in Ukraine.
The court studied the evidence and the list of goods and services for which the plaintiff’s trademarks were registered and ascertained that besides the goods in classes 6 and 9, the plaintiff’s trademarks also covered advertising services. Additionally, the court noted that the plaintiff’s trademarks covered in class 9 downloadable electronic publications and catalogs, thus the plaintiff had an exclusive right to place product catalogs on websites.
The court concluded that the [reseller’s] right to put a trademark onto the Internet for advertising purposes is not linked to obtaining a property title in goods under this trademark and does not emerge automatically upon putting the goods on the market [by the trademark owner], and that there were no grounds to apply «the principle of exhaustion of trademark rights». It turned out that the defendant could not prove that he had the goods in question at all. Therefore, the court granted relief, though not in respect of all of the plaintiff’s claims.
Trademarks on Social Networks
One of the disputes (case No. 760/23278/14) resolved by the Solomyanka District Court of Kyiv in 2014 was a complex issue that involved both copyright and trademark infringements, including use of a trademark in a domain name, on a website and on social networks – Facebook, Twitter, Instagram, and VK. The plaintiff filed an action against two individuals and two domain name registrars. The court reasoned that the domain name registrants and account users used the trademark in question without consent of the trademark owner for the sale of goods for which it had been registered. The court prohibited the use of the trademarks.
Another dispute (case No. 910/4071/17) arose between producers of alcoholic beverages, and involved comparison of the marks O’Dailys and Dailys with the trademark Baileys and was resolved by the High Commercial Court of Ukraine in 2018. The court ascertained that the use of the marks for the production and sale of liquor might mislead consumers as to the producer of the goods and create the wrong impression that they originated from Baileys. The court banned the use of the marks for liquors and ordered that they should be deleted from the defendant’s Facebook page.
Trademarks as Favicons
It seems that in 2018 Ukrainian courts resolved for the first time a case (case No. 760/3260/17 considered by the Solomyanka District Court of Kyiv) involving the use of a trademark as a favicon. However, the trademark was also used in domain names and on the infringing web site. This website contained information about goods for which the plaintiff’s trademark was registered. The court reasoned that the use of the trademark could mislead consumers as to the owner of the website and the person who sells the goods in question. The court prohibited those kinds of use of the trademark and canceled the domain name registrations.
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