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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”.

 

Battle for the Brand Names: How to Defend and Advocate Masandra and Novyi Svit Brand Names in Ukraine

02.03.2015

Taras Utiralov, lawyer at Ilyashev & Partners Law Firm
Source:  The Liga

Protection of Crimean “wine” brand names – is one of the most pressing issues of economic struggle for Crimea: wine, perhaps, is nothing but the leading branch which has always been the peninsula’s source of the pride. Ukraine should have taken the matter in its own hands back from April of the previous year. However, it is not too late to protect the national interests of Ukraine.

 483The advantage of the situation is that now it can still be done almost without resorting to assistance of the courts and moreover without filing the claims to the Russian courts as soon as they will unlikely be loyal towards Ukraine. The real way is to create obstacles to Crimean companies incorporated under the Russian laws to export wine to countries – members of the WTO (except Russia) provided that they export products under the brand names used prior to 2014 by Ukrainian companies in Crimea. For this purpose one must maintain control over legal entities – owners of the respective registered trademarks (meant here are the formal attributes of a legal entity as soon as the assets of Ukrainian state wineries in Crimea were “nationalized”) and, if necessary, re-register the legal entities at the territory controlled by Ukraine. Within the WTO there is a number of effective agreements (TRIPS – The Agreement on Trade-Related Aspects of Intellectual Property Rights) and mechanisms allowing to protect trade marks internationally which are in force jointly with other international agreements in this area.

However, in various practical aspects difficulties are possible. The first question is what trademarks (and industrial samples) are registered by the Ukrainian companies (and Ukrainian individuals). Even at this stage there may be the problems with wines produced under “Magarach” brand name. Despite the success in 2013 achieved by Ukrainian Prosecutor’s Office in the legal battle regarding the annulment of the contract under which TM “Magarach” was transferred to Estonian company Magarach Osauhing at the moment other trade marks containing the word “Magarach” (namely, “MAGARACH” and “МАГАРАЧ”) are still owned by the mentioned company. The National Institute for Vine and Wine “Magarach” – which produced “Magarach” wines in Crimea – owns only those trade marks containing the word “Magarach” which also mention the name of the Institute. In this situation it is not worth talking about the effective protection of the mentioned TM abroad until the issue has been finally resolved within Ukraine.

The situation is better with “New World” and “Massandra” trade marks. Ukrainian State Concern “National industrial and agricultural association “Massandra” and the Ukrainian State Enterprise “The factory of sparkling wines “Novyi Svit” are the owners of different trade marks under which they produced and sold wines. In this case at least three Massandra Trade Marks went through international registration (including the name MASSANDRA itself) in relation to a number of countries. Now we need to implement the international registration of all other “wine” brands, covering the largest possible number of countries, doing this ahead of Russia (because newly-created enterprises which control the Crimean manufacturing facilities may do the same through the Russian registration, and then – through international registration).

Once the mentioned is done it will be effective to work with customs authorities of other countries is organized it will be possible to ban imports of Crimean wine products to other countries. However, Ukraine should be in a hurry because in January 2015 a number of trade marks containing the brand names “Massandra” and “Novyi Svit” were introduced into the Russian Registry immediately after registration of new “Russian” companies such as State Concern “National industrial and agricultural association “Massandra” and the State Enterprise “The factory of sparkling wines “Novyi Svit”.

It needs to be mentioned that production of wines outside Crimea under names containing names of the specific locations of the peninsula is to mislead consumers which will result in further protection of names of the product’s origin. Therefore, prior to restoration by Ukraine of its sovereignty over Crimea and by Ukrainian companies of their title over their assets in Crimea the best way to protect the national interests in this aspect is still to prevent the export of products manufactured by non-Ukrainian Crimean wine production enterprises to any country in the world except Russia. At the same time it is worth to consider the mechanism of bottling the products manufactured in Crimea at the territory of continental Ukraine, as government officials have previously mentioned.

 
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