Mattel Inc. Cannot Register Barbie® Trademark in Certain Classes in Ukraine

Sep 3 2019 - 14:41

Mattel Inc., US manufacturer of numerous globally known toy brands, is facing problems trying to register its most famous trademark Barbie® in Ukraine, in certain classes of goods.

Mattel Inc. already owns trademark registrations for the famous doll brand in Ukraine. According to court papers, in September 2016, the US company filed a trademark application No. M201619948 to register the trademark for goods in classes 8 (hand tools), 29 (meats and processed foods), 30 (staple foods) and 32 (light beverages). In February 2018, the Ukrainian PTO issued a provisional refusal against Mattel’s trademark application for being confusingly similar to the prior trademark БАРБІ (BARBI in Cyrillic), Reg. No. 32903, which covers goods in classes 29, 30 and 32, and was registered by “Food company Yasen”, LLC in July 2003.

“Food company Yasen”, LLC is a Ukrainian manufacturer of soft drinks, mineral water, and confectionery products. According to Yasen’s website, the food company uses its trademark БАРБІ (BARBI) for fruit jelly candies. However, it is unclear whether Yasen still manufactures the candies or if the information on the website is outdated.

In order to remove the obstacle to the registration of their trademark, Mattel Inc. filed an action before the Kyiv City Commercial Court on May 13, 2019 requesting cancellation of Yasen’s trademark БАРБІ in relation to all designated goods due to non-use for more than five years. The defendants are “Food company Yasen”, LLC and the Ministry of Economic Development and Trade of Ukraine, which is the competent authority for IP matters in Ukraine. The PTO Examining Authority was brought into the proceedings as a non-party intervener.

The same date the statement of claims was filed, Mattel Inc. asked the court to grant a preliminary injunction prohibiting the Examining Authority from issuing its final decision on the Mattel’s trademark application before the court’s decision in the non-use cancellation action enters into force. However, the court declined to grant the request because of insufficient evidence and insufficient grounds for the injunction.

According to the most recent court ruling, dated July 31, 2019, the next hearing in this case is scheduled for September 3, 2019.

Prepared by: Yulia Kropivka and Igor Alfiorov

For more information, please contact ukraine@petosevic.com.

Sources: Tech.Liga.net and Delo.ua news websites, Ukrainian Unified Register of Court Decisions, Yasen website, Ukrainian PTO databases

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