In accordance with Art. 10 bis of the Paris Convention «The countries of the Union are obliged to provide citizens of countries participating in the Union with effective protection against unfair competition».
An act of unfair competition is considered any act of competition, contrary to fair practices in industrial and commercial affairs. In particular, prohibitions are to be imposed: all actions that can in any way cause confusion in relation to the enterprise, products or industrial or commercial activities of a competitor.
In accordance with Art. 1 of the Law of Ukraine «On Protection against Unfair Competition» (07.06.1996 №. 236/96-ВР) «Unfair competition is any actions in competition that are contrary to the rules, trade, and other fair practices in business. In particular, unfair competition is the misuse of the business reputation of an economic entity (entrepreneur). It is unlawful, among other things, to use another person’s name, company name, marks for goods and services without the permission of an authorized person, which may lead to confusion with the activities of another business entity (entrepreneur) that has priority in their use.» This article does not indicate whether goods and services should be homogeneous or not.
The phrase «mixing with the activities of another entrepreneur» implies that consumers can or will associate certain (or all) goods and services under a well-known sign with the owner of such a mark. Proof of such confusion as in the case of unfair competition and in the case of well-known signs can and should be a sociological survey, and if it is clear from the results of such a survey that more than 50% of consumers associate goods and services with the owner of a well-known mark, then confusion will certainly occur, and therefore the well-known mark will be used by another person will indicate the relationship between this person and the owner well known sign. One can hardly think of a better way to prove such a mixture or indication of a connection. However, as shown by our own experience – the results of a sociological survey are not evidence for the court of confusion or an indication of communication.
Of course, the Paris Convention and the TRIPS Agreement together with the Joint Recommendation have played a very important role in protecting the well-known trademark in the world over the past decades, but, unfortunately, at present they cannot be fully adapted to the needs of such protection. Offenses, counterfeiting and counterfeiting with respect to well-known trademarks are today a very acute and very painful issue that seriously damages the reputation of the real owners, and consequently entails large losses in terms of profits.
You can also say that the addition of the Law of Ukraine «On the Protection of Rights to Marks for Goods and Services» Art. 25 and the approval of the procedure for recognizing a mark as well known in Ukraine by the Department of Appeals Chamber testifies to positive trends in the field of intellectual property in Ukraine today. However, it is still difficult to get any benefit from the official recognition of the mark as well known in practice. Thus, it turns out that the protection of a well-known sign is spelled out in Art. 25 of the Law of Ukraine. The procedure for recognizing a mark as such is adopted, and due to the lack of judicial practice of relatively well-known marks in Ukraine, these norms do not work and do not give additional protection to the owner. Thus, filing a claim on the cancellation of an identical or similar mark in respect of heterogeneous goods or services on the basis of the official recognition of the mark as well known in Ukraine is a very difficult path that will not always end successfully. And the beautiful wording «well-known trademark» still remains for the owner only a beautiful wording.
Consequently, it is necessary to strengthen in Ukraine (as well as at the world level) the protection of well-known signs by making changes and additions to existing normative acts, and perhaps by adopting a separate special normative act in relation to the protection of well-known signs.
The provision of absolute protection by Ukraine to well-known trademarks would certainly give their owners a very powerful, practically the only means of protecting their legal rights, would prevent erosion and damage to the reputation of well-known signs, which would improve Ukraine’s image in the international arena.