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Ilyashev & Partners Invalidates Ukrainian Trademark Certificates “Promedol”

27/ 06/ 2024
  Ilyashev & Partners succeeded in defending a well-known Latvian pharmaceutical manufacturer Kalceks, AS in a dispute on invalidation of trademark certificates for “Промедол” and “Promedol” trademarks of Ukrainian pharmaceutical company. An anesthetic manufactured by Kalceks, AS is known in many countries of the world as “Promedol Kalceks Промедол Калцекс” trademark (International registration No. 1320345 dated 20 June 2016 for goods of the 1st and 5th classes of the International Classification of Goods and Services). In Ukraine Kalceks, AS received the corresponding registration certificate No. UA/15324/01/01 for “Промедол Калцекс”, розчин для ін’єкцій, 20 мг/мл” (Order of the Ministry of Health of Ukraine No. 787 dated 28 July 2016).   The Latvian company discovered that Real-Pravo LLC is selling drugs under the brand names “Promedol” and “Промедол” in Ukraine (trademark certificates No. 278234 and No. 278236). “Промедол” and “Promedol” are generic names for a certain type of medicines that are globally recognized and included in the list of the World Health Organization (WHO) International Nonproprietary Names (INN). A registered trademark or medicine name cannot be solely comprised of such names. These actions can lead to monopoly in the market and unfair competition. As a WHO Member State, Ukraine should take all necessary measures to prevent the acquisition of title to INN, including prohibiting the name from being registered as a trademark. Considering reasonable legal position of Ilyashev & Partners’ team, on May 30, 2024, the Commercial Court of Kyiv City granted the claims of Kalceks, AS and ordered:  Invalidation of the Certificate No. 278234 for “Promedol” trademark, owned by Real-Pravo LLC, in relation to all goods classified under the 5th class of the International Classification of Goods and Services, namely: pharmaceutical preparations, chemico-pharmaceutical preparations, medicines for human purposes, narcotics, drugs for medical purposes; Invalidation of the Certificate No. 278236 for “Промедол” trademark, owned by Real-Pravo LLC, in relation to all goods classified under the 5th class of the International Classification of Goods and Services, namely: medicines for human purposes, narcotics, drugs for medical purposes, pharmaceutical preparations, chemico-pharmaceutical preparations, e., all of the above medicines, intended for pain relief. The court also ordered the State Organization Ukrainian National Office for Intellectual Property and Innovations to enter information about the invalidation of Ukrainian certificates No. 278234 and No. 278236 into the State Register of Trademark Certificates of Ukraine and publish this in Cumulative Official Bulletin “Promyslova Vlasnist”. The case was handled by Mikhail Ilyashev, Managing Partner, Oleh Trokhymchuk, Counsel, Co-Head of Dispute Resolution and Olena Sereda, Attorney at Law.

Ilyashev & Partners succeeded in defending a well-known Latvian pharmaceutical manufacturer Kalceks, AS in a dispute on invalidation of trademark certificates for “Промедол” and “Promedol” trademarks of Ukrainian pharmaceutical company.

An anesthetic manufactured by Kalceks, AS is known in many countries of the world as “Promedol Kalceks Промедол Калцекс” trademark (International registration No. 1320345 dated 20 June 2016 for goods of the 1st and 5th classes of the International Classification of Goods and Services).

In Ukraine Kalceks, AS received the corresponding registration certificate No. UA/15324/01/01 for “Промедол Калцекс”, розчин для ін’єкцій, 20 мг/мл” (Order of the Ministry of Health of Ukraine No. 787 dated 28 July 2016).  

The Latvian company discovered that Real-Pravo LLC is selling drugs under the brand names “Promedol” and “Промедол” in Ukraine (trademark certificates No. 278234 and No. 278236).

“Промедол” and “Promedol” are generic names for a certain type of medicines that are globally recognized and included in the list of the World Health Organization (WHO) International Nonproprietary Names (INN). A registered trademark or medicine name cannot be solely comprised of such names. These actions can lead to monopoly in the market and unfair competition.

As a WHO Member State, Ukraine should take all necessary measures to prevent the acquisition of title to INN, including prohibiting the name from being registered as a trademark.

Considering reasonable legal position of Ilyashev & Partners’ team, on May 30, 2024, the Commercial Court of Kyiv City granted the claims of Kalceks, AS and ordered: 

  • Invalidation of the Certificate No. 278234 for “Promedol” trademark, owned by Real-Pravo LLC, in relation to all goods classified under the 5th class of the International Classification of Goods and Services, namely: pharmaceutical preparations, chemico-pharmaceutical preparations, medicines for human purposes, narcotics, drugs for medical purposes;
  • Invalidation of the Certificate No. 278236 for “Промедол” trademark, owned by Real-Pravo LLC, in relation to all goods classified under the 5th class of the International Classification of Goods and Services, namely: medicines for human purposes, narcotics, drugs for medical purposes, pharmaceutical preparations, chemico-pharmaceutical preparations, e., all of the above medicines, intended for pain relief.

The court also ordered the State Organization Ukrainian National Office for Intellectual Property and Innovations to enter information about the invalidation of Ukrainian certificates No. 278234 and No. 278236 into the State Register of Trademark Certificates of Ukraine and publish this in Cumulative Official Bulletin “Promyslova Vlasnist”.

The case was handled by Mikhail Ilyashev, Managing Partner, Oleh Trokhymchuk, Counsel, Co-Head of Dispute Resolution and Olena Sereda, Attorney at Law.

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