While Mattel Inc., US manufacturer of numerous globally known toy brands, recently faced problems trying to register its most famous trademark Barbie® in Ukraine in certain classes of goods, the Kyiv City Commercial Court ruled in favor of Mattel on September 3, 2019.
After Mattel Inc. filed a trademark application to register the trademark BARBIE for goods in classes 8, 29, 30 and 32 (light beverages), the Ukrainian PTO issued a provisional refusal against the trademark application in February 2018 for being confusingly similar to the prior trademark БАРБІ (BARBI in Cyrillic), covering goods in classes 29, 30 and 32 and registered by Ukrainian confectionery and soft drinks manufacturer “Food company Yasen”, LLC in July 2003.
According to Yasen’s website, the food company uses its trademark БАРБІ (BARBI in Cyrillic) for fruit jelly candies, also called “marmalade” in Ukraine.
In order to remove the obstacle to the registration of their trademark, Mattel Inc. filed an action before the Kyiv City Commercial Court on May 13, 2019, requesting cancellation of Yasen’s trademark БАРБІ in relation to all designated goods due to non-use for more than five years.
To prove actual use of its trademark in Ukraine, the defendant only provided copies of supply agreements related to БАРБІ jelly candies. The court noted that the trademark БАРБІ does not cover “marmalade” or jelly candies, but covers “jellies” in class 29. In order to determine whether “marmalade” falls under the category of jellies, the court examined the relevant State Standards of Ukraine (Derzhavni Standarty Ukrainy, DSTU) and concluded that, based on DSTU definitions, marmalade and jelly could be defined as different products, prepared by using different cooking technologies – fruit puree is boiled to make marmalade, and extracts or essences are mixed with other elements without boiling for the jelly. Therefore, the court disregarded the agreements as evidence of trademark use, because it could not reason that the defendant’s trademark БАРБІ covering jellies in class 29 also covers marmalade. The court concluded that the plaintiff’s claims are valid and issued a decision on September 3, 2019 to cancel Yasen’s trademark БАРБІ in all classes due to non-use for more than five years. No appeal was filed by the deadline stipulated in procedural law, and the decision is now final.