Doubinsky & Osharova defended Jack Daniel’s trademark rights.

On May 28, 2020, the Supreme Court upheld the Jack Daniel’s cassation appeal to hold invalid the certificates of Ukraine for «BLACK JACK» and «БЛЕК ДЖЕК» trademarks.

The dispute started in 2017 after Jack Daniel’s filed a statement of claim to the Commercial Court of Kyiv to invalidate the said title documents, basing on earlier registered and world-famous trademark «JACK DANIEL’S». The case was considered by courts of all levels repeatedly.

In 2018, the Commercial Court of Kyiv established the similarity of the disputed trademarks and that it could be misleading, and therefore satisfied the plaintiff's claim. The Northern Commercial Court of Appeal agreed with these findings but dismissed the lawsuit for the reason the statute of limitations had expired. By overturning the ruling of the court of appeal, the Supreme Court stated that the beginning of the statute of limitations for filing a lawsuit with such a claim could not automatically coincide with the date of publication of the information on the registration of the trademark.

The Doubinsky & Osharova’s team consisting of partners Anton Koval and Victoria Sopilnyak, attorney-at-law Nikolai Koval and lawyer George Gabeliya worked under the supervision of managing partner Michael Doubinsky.

Commenting on this significant decision of the Supreme Court, Anton Koval highlighted: “The Supreme Court’s position in this case once again confirms the accuracy of the determination of the beginning of the statute of limitations in cases on invalidation of title documents to intellectual property rights objects which cannot automatically coincide with the date of publication of the information on the registration of the disputed trademark.This period starts from the date the rights holder identifies a conflict with the contentious mark, in particular, identifies the use of the contentious trademark and the existence of likelihood of confusion between this mark and rights holder’s mark already registered.Decision of the Supreme Court should be a good precedent for a proper application of rules of substantive law with regard to the statute of limitations."

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