News date: 20 February 2017
On February 7, 2017, the Higher Economic Court of Ukraine delivered the final judgment in the litigation on the protection of Grindex rights (Riga, Latvia) for the famous trade name Mildronate®.
Akciju sabiedrība (Joint Stock Company) Grindex – the developer and manufacturer of the well known throughout the world original medicinal product Meldonium, marketed under the trade name Mildronate®, – upon the expiration of Meldonium patent protection faced the attempts of different manufacturers of Meldonium generics not only to generate the contents of the original product, but also to take advantage of Mildronate® popularity by designing their trade names with a close similarity with this brand.
Grindex found out that the Ukrainian pharmaceutical market offers the medicinal product marked as MILDROKARD produced by Niko LLC, which is similar to the confusion with Grindex’s brand. Grindex applied to the Economic Court of Kyiv with the petition demanding the termination of Mildronate® trade name infringement.
As a result of this litigation the judgments were delivered on the cancellation of protection documents for the disputed trade name Mildrokard (certificate of Ukraine No. 129623 for sign Mildrokard and patents of Ukraine No. 22173 and No. 22174 for utility models protecting the packaging of Mildrokard) and on declaring Mildronate® as well-known sign in Ukraine since June 11, 2016, with regard to Grindex for goods of the 5th class of the International Classification of Goods and Services namely pharmaceuticals, immunostimulants for treatment purposes.
“Similarity of “pharmaceutical” names is more dangerous than the imitations of ordinary trademarks, – notes Irina Kirichenko, lawyer at Ilyashev & Partners, Patent Attorney of Ukraine, who represented the plaintiff – understanding the aspirations of one of the respondents to produce “the same but much cheaper product” we quickly reacted to rapidly evolving events: registration of drug packaging and marking as industrial design, conclusion of primary and follow-up expertise – this provided us with the opportunities for timely amendment of our claims. The forensic expertise has been conducted within the litigation that included medical and pharmacological practices. This facilitated the obtainment of the expert opinion on semantic equivalence of “variations” on a theme of Mildronate®. It is a pleasure to note that the economic courts of Ukraine have once again proved their competence in such complex litigations and multidimensional collisions”.