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“The team was recently visible advising on a number of pharmaceutical cases. Sources agree that the team is “moving in the right direction” and are particularly impressed by its work in the pharmaceutical sector”.

 

A Magic Match

20.02.2015

Irina Kirichenko, lawyer at Ilyashev & Partners Law Firm, patent attorney of Ukraine
Source: The Apteka

Moderation is a fatal thing.
Nothing succeeds like excess.

Oscar Wilde

39In our difficult and troubled time people and companies trying to work not only owing to, but in spite of the crisis, and also creating innovative products and services deserve respect. However, Western companies have ineradicable habit to patent their “mabther” before entering domestic and foreign markets. Hundreds of articles were written on how, e.g. patents for antiretroviral medicines prevent the domestic health care institutions from solving the problem of HIV in Ukraine once and for all. I propose to consider “innovative” ways to solve the problem of not only increasing the population of Ukraine, but also development of its industry, and most importantly – being engaged in competition.

MASTERPIECE OF INNOVATION

 What does the object of intellectual property mean?

As a rule, it is something new and original that significantly stands out from the general background: e.g. a new image of a lion (figure), a neologism (name of a medicine), an original design of a bottle of perfume (package), etc. A new chemical compound with unique properties (product) stands separately, but that’s another story.

 All of us in drew sticks, squares and circles in childhood, having mastered the “technique” we passed on to more intricate shapes. That is why the simple geometric shapes are excluded from copyright protection in accordance with international law governing this field.

What does it mean? It means that your “naught”, if it is properly positioned, will be out of competition. It is because the “square” is already in use: unhealthy and dressed in rags (by modern standards) woman Lisa stares enviously through the centuries in its black abyss, trying to understand the secret of success of the author of masterpiece – Kazimir Malevich, who left far behind Leonardo fellows and their whole era called the Renaissance era by a once nameless PR expert…

In general, naught is a mystical figure: it can be a beginning of a new life, culture, and most importantly – science. Why, for example, not to patent the wheel? After all, no one did it before you! I remember, back in the “noughties” somebody registered a word mark “peace” for all 45 classes of goods and services of the International Classification of Goods and Services (ICGS) – that’s a scale!

However, it was more PR stunt than benefit, what for do you need the whole world with its war, swamps and deserts, if you can monopolize only its resort area?

Moreover, the key to successful competition is the lack of competitors.

Let us work in this direction.

SECRETS OF KING SOLOMON

At present, even children know that the trademark (or TM – Eng. trademark) is an essential element of turnover personification and, therefore, a key element of advertising of both a producer of goods or services and its products. Thus, it must have advertising capability, i.e. to be concise, aesthetic, easy to reproduce (pronounce), and have associative features and be original. Numerous scientific papers have been written on how to stand out in your niche, but here, as one expert noted, “the situation is characterized by the lack and impossibility of forecasts”.

I passed my first “universities” in the field of intellectual property rights protection at the beginning of the “noughties” – in the midst of disputes over the Soviet trade marks, which, to the surprise of their first producers (and often creators) turned to be the property of the young and brave, and most importantly – not burdened by the knowledge of their history, “physics” (individuals) and “yuriks” (legal entities) – right owners that applied for their registration first.

Why it was not done by the manufacturers of the relevant goods? Because they thought their names as specific, more precisely, “standard” – it were the names of “Soviet” standards – All-Union State Standards (GOSTs), specifications, pharmaceutical items to these products. The names of types of goods are excluded from protection as trademarks. Therefore, the patent office had to refuse their registration.

Indeed: back in 2003, intending to join the World Trade Organization, Ukraine in general has brought its national legislation in the field of intellectual property in line with the international standards. However, our trademark law envisages quite exact criteria for granting legal protection to the mark, as well as objective and subjective (“senior right” of third parties) grounds for refusal of its registration, practice shows that it does not always confirms the theory.

The object of mark can be verbal (visual, combined) designation and, accordingly, name of goods/services and/or producer, as well as an advertising slogan if it is original. The trademark holder has an exclusive right to use the mark, dispose of it and, accordingly, prohibit its use to others. This right is acquired on the basis of state registration of the mark, but can also be obtained on the basis of popularity. The main conditions for protectability: the mark must have distinctive character (not to be the general concept and be different from others) and must not be misleading.

 The main relative grounds for refusal of registration of a mark (according to “senior right”) are inter alia as follows: this or similar designation has already been registered by other persons for the same goods or services; designation reproduces names of famous works of science, literature and art or fragments, quotes and characters from them without the consent of copyright proprietors or legal successors; designation reproduces first and last names, pseudonyms and their derivatives, as well as portraits and facsimiles of famous people without their consent.

 The above grounds for refusal have a keyword – well-known. The question is, to whom? Just look at the database of registered trademarks of Ukrpatent to conclude either experts of the agency are not familiar with a majority of world masterpieces or the world does not know the true names of their creators.

 Thus, if guided by the register of registered trademarks, it is possible to learn that surname of the owner of rights to the marks “Кин-Дза-Дза” (“Kin-Dza-Dza”) and “Гравицапа” (“Gravitsapa”) is not “Danelia”, but “Kucha”, and for many years I have been tormented by the question: who is this Mr. E.I. Kucha – copyright holder of Ukrainian state trademark registrations: “Кин-Дза-Дза” (“Kin-Dza-Dza”) (certificate of Ukraine No. 67500); “KЦ” (“KTS”) (No. 96115); “Полная КинДзаДза” (“Full KinDzaDza”) (No. 76012); “Гравицапа” (“Gravitsapa”) (No. 67499); Gravitsapa (No. 67498); he also holds a “fantastic” mark “Рыцари сорока островов” (“Knights of Forty Islands”) (No. 96114) – the original title of the book by Sergei Lukyanenko.

 Similarly, “Чайка” (“The Seagull”), “Вишневый сад” (“The Cherry Orchard”), “Дядя Ваня” (“Uncle Vanya”) … Do you think these are well-known names of world famous plays of Anton Chekhov? No, in the XXI century they are used as brands by different individuals and legal entities for labeling their products and services.

 Thus, “Дядя Ваня” (“Uncle Vanya”) (certificate No. 127938) can be used to label any food and drink, and fairy-tale characters, starting with “Cinderella” by Sh. Pero (No. 57704A) are used as brands of goods and services for several classes of the Nice Classification: “Герда” (“Gerda”) (No. 128481 and No. 128506), “Снежная королева” (“The Snow Queen”) (No. 140577), and there are as much as two copyright holders of “Винни” “Вінні” (“Winnie”): Mr. Goncharuk owns “Винни” in Russian, in Ukrainian and in combination (Nos. 114229, 119259, 121921) and Ms. O. Melnichuk owns a picture “Вінні Пух” (“Wіnnіe-the-Pooh”) (No. 157276).

“Eternal values” were also privatized: all variants of “heartful” word combinations, such as “Created/done with feeling/love”, “The way to the heart” and a pioneer slogan “Always ready”, etc. belong to a certain Mr. Volkov. Kyiv’s sight – Maidan belongs to the citizens Kovaleva (certificate No. 85114) and Belyaev (“Kyiv Maidan” – certificate No.76573) for almost 10 years.

At the same time law enforcement practices of registration of trademarks, which reflect other people’s copyrights, and their invalidation, can be described by the “law” named after Jupiter and Bull: someone will hardly try to “privatize” at least one of Hollywood dreams.

Instead many people wind up their brains to register as trademarks names of many products habitual to several generations of the Soviet people that can be illustrated by a number of proceedings regarding “protection” of rights of their owners from traditional manufacturers.

Those who know a lot of such words and do not try to privatize them can only remember the saying “Knowledge increase sorrow” attributed to the King Solomon. It is believed that this is not just a philosophical judgment on the futility of human knowledge, but a feature of human physiology, which prevents the majority of people to achieve success.

IF THERE IS A SUBJECT-MATTER, THERE WILL BE A DISPUTE

If someone thinks that struggle for “intellectual” rights always takes place in court, he is very wrong. More precisely, he indulges a vain hope.

Intellectual property is the only legal monopoly, which remedies are diverse and extensive.

Twelve years ago, a real war of extermination of the trademark “Lotos” raged in the Ukrainian market of detergents. I remember the story of one manufacturer of synthetic detergents, who learned by own experience how effective was Article 229 of the Criminal Code of Ukraine – “Illegal use of mark for goods and services, brand name”. Then you will prove in court why you used a particular trademark, file a counterclaim for its invalidation, etc. However, if criminal proceedings have already been initiated against you, firstly, all “counterfeit” goods and accompanying documents will be withdrawn. You will have the outstanding supply contracts, late payment fees, etc.

Another option, such as entry of an object of intellectual property rights in the Customs Register “works” against unsuspecting producers not less effectively. For example, a package of medicinal product can ”in general” be registered as an industrial sample by specifying some of its variants, including different names of medicinal products.

As once turned out, it is especially useful to specify the international non-proprietary name (INN) of the medicinal product, and to indicate the remaining signs of an industrial sample as “package of a pharmaceutical preparation “INN”, which according to the analytical regulatory documents has the shape of a cuboid with an inscription “INN, tablets (dosage), series, best before …, address of the manufacturer, store in … “, etc. on its horizontal side.

The relevant example is patent No. 10359 “Package of pharmaceutical tablets “Ascorbic Asid”, which was canceled.

My “rights-based” experience has been recently enriched by the example illuminating all the previous practice by its “blue light”.

MATCH GAME

Genius lies in simplicity: matches are an essential feature of our everyday life in the XX century – one of the most amazing inventions of human genius. All our history is a history of getting “sparks” that will become a flame. Experience and culture of laying a fire in the old days are part of our civilization and, probably, the foundation of literature and art. Now it is hard to believe that humanity did without matches until the XIX century striking and “getting” fire in many ways from the most inappropriate things.Thus, the ignition temperature of the wood is 300°, imagine how much you need to rub pieces of wood against each other in order to reach this temperature.

A match has flame temperature of 750-850°, which is approximately equal to burning temperature of wood – 800-1000°.

The history of invention of matches is a synergy of discoveries in chemistry in late XVIII – early XIX century. There was no international patent law and the Patent Cooperation Treaty (PCT), so European countries are still arguing for supremacy in this respect.

The industrial production of matches began only at the end of the XIX century. It is known that in 1830 a 19-year-old French chemist Charles Soria invented phosphorus matches consisting of a mixture of potassium chlorate, white phosphorus and glue that was spread on a tip of a wooden stick.

At the beginning of 2014, Anastasia Shtukalyuk, a 21-year-old student at the National University “Lvivska Polytehnica” patented all of their kinds and became the right-owner of patents for industrial designs “СПИЧКА” (“MATCH”) No.26413 of 10.02.2014, and No. 26298 of 27.01.2014.

More information about our creative fellow countrywoman and Formula Brock Law Firm, which helps young people and not very young people to become owners of exclusive rights to napkins, tablet PC, toothpicks, ice cream sticks, gloves, clothes hangers, etc. can be found in some mass media.

Match factories were the first to learn about a new mistress of a magic wooden stick KTS (match). Thus, the leading Ukrainian woodworking enterprise known since the Soviet era was forced to suspend its foreign economic activity, because to fulfill a foreign order it was necessary to obtain a permit of Ms. Shtukalyuk, who carefully put industrial designs – ordinary household, fireplace, cigar and souvenir matches – on the Customs Register of Intellectual Property, which the customs is guided by during customs clearance of goods.

The Director’s attempts to refer to the fact that the enterprise has been manufacturing products in accordance with the specifications for “Matches” (GOST 1820-2001, IDT) GSTY GOST 1820: 2004), did not produce an effect: in accordance with Article 20 of the Law on the protection of rights to industrial designs, using industrial design means manufacturing of a product applying patented industrial design, use of such products, offering for sale, other introduction into civil circulation, etc. Patent gives its owner the exclusive right to prevent others from using the industrial design without the owner’s permission.

According to Article 1 of the above mentioned Law, industrial design is the result of human creativity in the field of artistic design. The only criterion for patentability – novelty – in fact, is declared by the applicant and the patent is issued under his responsibility.

However, this “novelty” can be disproved only in court. The factory’s management had to apply to the court to cancel the patent protection of matches.

Considering the subject of claim and rules of law, the subject of proof in this case was establishment of the facts whether the industrial designs “СПИЧКА” (“MATCH”) on patents of Ukraine No.26413 of 10.02.2014, and No. 26298 of 27.01.2014 complied with the condition of patentability, such as “novelty”. The court appointed forensic examination of intellectual property objects in case No. 760/3397/14-ц (2-2250/14). According to the expert opinion, it was found that the said designs were not new, and pursuant to Article 25 of the Law of Ukraine “On the Protection of Industrial Designs” mismatch of the registered industrial design with the conditions of granting legal protection is the basis for invalidation of the patent in full or in part.

Having examined all the evidence in the case and giving them proper legal assessment, on December 23, 2014 the Solomyanskyi District Court of Kyiv ruled on granting the lawsuit. http://www.reyestr.court.gov.ua/Review/42172951, and the State Intellectual Property Service of Ukraine executed it by making on February 11, 2015 the entry in the Register of Industrial Designs that the patent of A. Shtukalyuk on matches was canceled.

Even during the time between adjudication and execution of the court decision the frustrated “fairy” used her “magic wand” to the maximum, and even applied to the local Department of Internal Affairs in accordance with Article 177 of the Criminal Code – “Violation of rights to industrial design”, issued “licenses” for using her patents to all those who wished, who even managed to write claims to manufacturers of matches.

This example proves that knowledge does not always generate sorrow, sometimes competent attitude is crucial during protection of manufacturers also FROM intellectual property rights. And anti-utopia is not always true: “If I have a little of KTS, I have the right to wear yellow pants, and patsak must curtsy not once, but twice before me. If I have a lot of KTS, I have the right to wear maroon pants, and patsak must curtsy twice before me, and chatlanin must do “ku”, and etsilopp has no right to beat me at night … Never!” (a quotation from the film “Kin-Dza-Dza”).

 
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