Sayenko Kharenko has successfully represented Societe BIC in a dispute with the Ukrainian IP office regarding a three-dimensional mark.
According to Sayenko Kharenko, “On April 11, 2023, the Northern Commercial Court of Appeal dismissed the appeals of the Ministry of Economy of Ukraine (the former IP Office) and State Undertaking Ukrainian National Office of Intellectual Property and Innovations (the current IP Office) and upheld the judgment of the first instance court under which decisions of the Ukrainian IP Office and the Appeal Board of the IP Office should be canceled. Both court decisions reconfirm that the shape of the BIC lighter is highly distinctive and is thus trademarkable. Trademarking the shape of the BIC lighter is also an important element of the company’s anti-counterfeiting strategy.”
Furthermore, Sayenko Kharenkor reports that “remarkably, the current IP Office refrained from lodging a cassation appeal even though the IP Office is usually going through all the instances of the Ukrainian courts. The judgment has been enforced voluntarily, i.e., substantive examination of the client’s trademark application has been resumed. The IP Office re-examined the Societe BIC’s trademark application and, considering the judgment of the first instance court decided on the registrability of the trademark for all goods in class 34 for which the registration is sought.”
The Sayenko Kharenko team included Partner Yaroslav Ognevyuk, Counsel Oleg Klymchuk, Senior Associate Volodymyr Hrunskyi, and Associates Khrystyna Ivanytska and Mykola Lysenko.