On January 12, 2021, the Supreme Court of Ukraine in the panel of judges of the Economic Court of Cassation considered case #916/3470/19 and adopted the Decision about the support of decisions of courts of previous instances about withdrawal from civil circulation and destruction of counterfeit products on which the disputable signs of intellectual property were applied.
The case was initiated on the basis of a claim for infringement of the plaintiff's trademark rights under Ukrainian Certificates No 170473 and No 14778 and marks under Ukrainian Certificates No 15337 and No 172906, which are recognized as well-known in Ukraine, Because the defendant through the Odesa customs office of the FSA attempted to import a big party of products - spray cans "AD-50", which are marked with symbols containing verbal and pictorial elements, which are so similar that they can be confused with the plaintiff's trademarks.
The Supreme Court agreed with the judgments of previous instances and pointed out that the courts, in this case, established facts of violation of rights and legal interests of the plaintiff in connection with the manufacture and attempted importation (importation) in Ukraine by the defendant of the abovementioned products.
In this case, the panel of judges upheld the decision of the court of appellate instance in terms of applying such a method of restoration of the violated right as the destruction of manufactured counterfeit products, arguing that since the products contain markings characteristic only of the products manufactured by the plaintiff.
Thus, the Court in the judgment refers to the possibility of such actions on the basis of the right provided by the legislator, namely part 2 of Art. 432 of the Civil Code of Ukraine, which gives the plaintiff the right to demand the removal from circulation and destruction of counterfeit goods.
Despite the fact that the destruction of the sign belonging to the plaintiff, as a separate element of the product, according to the Court, is questionable because the designation is combined with the product in a way that makes it impossible to separate it without complete damage to the product, a similar method of protecting intellectual property rights, as the removal and destruction of products, is an appropriate and legitimate way to protect the violated rights of the plaintiff.
