Resolving a registration dispute for Partizan TM

Client: Canadian manufacturer of vodka products under the Partizan trademark.

Defendant: HAMMER MARKET LLC, owner of the “PARTISAN” and “ПАРТИЗАН” trademarks.

Case Background

The client approached BrandR after receiving a provisional refusal of Partizan trademark registration in Ukraine. The reason for refusal was the existence of prior registered trademarks “PARTISAN” and “ПАРТИЗАН” owned by HAMMER MARKET LLC.

Legal analysis showed that these trademarks had not been used in Ukraine for over five years, which under current law is grounds for early termination. BrandR initiated a lawsuit aiming to terminate these trademarks and clear the path for Partizan TM registration.

Client’s Goal

1. Early termination of Ukrainian certificates for “PARTISAN” and “ПАРТИЗАН” trademarks due to non-use.
2. Resumption of the Partizan trademark registration procedure in Ukraine.

Case Complexity

• The defendant’s trademarks covered a wide list of Class 33 goods (alcoholic beverages), which required thorough collection of non-use evidence.
• Proving non-use of trademarks required gathering a significant body of evidence, including official responses from state authorities and documents from distributors and retail chains.
• The litigation required obtaining preliminary injunctions to protect client rights by suspending application examination during the proceedings.
• The lawsuit was complicated by the defendant’s failure to appear in court, which significantly slowed down the proceedings.

BrandR Strategy

1. Legal Analysis and Strategy Development: identifying grounds for early termination of trademarks.
2. Preliminary Injunction: filing a court application that suspended examination of the client’s application until the main dispute was resolved.
3. Evidence Gathering: official responses from state authorities, expert opinions, and confirmations from retail chains proving the absence of goods under the disputed TMs on the market.
4. Litigation Representation: successful defense of client interests and proving the facts of trademark non-use by the defendant.

Lawyers

• Anton Polikarpov — Managing Partner, Attorney-at-law, represented the client in court.
• Anastasiia Shevchuk — Senior Lawyer, coordinated the injunction and evidence-gathering process.
• Vladyslav Zhuravlov — Lawyer, developed the legal strategy and interacted with state authorities.

Result

On July 30, 2024, BrandR successfully obtained a court ruling on early termination of the “PARTISAN” and “ПАРТИЗАН” trademarks. This made it possible to submit the court decision to the Ukrainian National Office of Intellectual Property and Innovation (UIPTO) to resume the examination procedure of the client’s application and secure the trademark registration.