Based on the results of the trial, which took place on June 30, 2022 and having read the full text of the Ruling of the Supreme Court, Farmak will continue to protect its intellectual property rights to the CORVALOL trademark. This is important to stop unfair competition in the market in general and on the part of PJSC “Pharmaceutical company “Darnitsa” in particular.
In our opinion, the Resolution of the Supreme Court was issued with an obvious violation of the fundamental right of Farmak to participate in legal proceedings in order to protect its rights and legitimate interests. Moreover, during the trial, there was no proper assessment of the evidence contained in the case file.
The result of these violations was the adoption by the Supreme Court of a decision to cancel the decision of the Economic Court of Appeal, which had previously fully satisfied the claim of Farmak and invalidated certificate No. 49087 for a trademark for goods and services.
The dispute between Farmak and Darnitsa has been going on since 2005. In fact, from the moment when the Corvalol-Darnitsa trademark was registered. It is important to emphasize that the name of the soothing drug “Corvalol” was invented in 1960 at the Lomonosov Kyiv plant. After privatization, Farmak became the successor of the plant and the only one to have a right to produce Corvalol. In 1996, Farmak received the first certificate for the CORVALOL trademark, and in 2004, Farmak’s CORVALOL was recognized as a well-known brand in Ukraine.
Despite Farmak’s exclusive rights to the CORVALOL brand, in 2017 the Darnitsa company began producing its own drug under the Corvalol-Darnitsa trademark. At the same time, the competitor actually uses the name of the medicinal product, which is similar to the degree of confusion with TM “CORVALOL” and the well-known designation “CORVALOL CORVALOLUM”.
In 2019, Farmak, as part of the protection of its rights to TM Corvalol, achieved the cancellation of the state registration of the Corvalol-Zdorovya drug in court. The Supreme Court recognized that the designations “Corvalol” and “Corvalol-Zdorovya” are similar to the degree of confusion, that the word “Corvalol” is the dominant element, and satisfied the claims of Farmak. At the same time, absolutely similar litigation against TM “Corvalol-Darnitsa” produced by PJSC “FF “Darnitsa” has been going on for more than 17 years, contrary to the existing practice of the relevant litigations.
Farmak continues to protect its rights and legitimate interests for the trademark Corvalol. It is important for us to prevent unfair competition not only in the pharmaceutical industry but also in Ukraine as a whole. After all, the investment attractiveness of our economy depends on it.
REFERENCE
Corvalol is a sedative drug developed and produced by employees of the Lomonosov Kyiv Chemical and Pharmaceutical Plant in 1960. This drug is the first domestic generic of the sedative drug Volocordin, which was produced in Germany.
The senior chemist of the plant Y. Yakovlev took up the development in 1959, and the very next year the first batch of Corvalol was released by the Lomonosov Kyiv Chemical and Pharmaceutical Plant. This drug was in great demand throughout the Soviet Union.
In 1991, after Ukraine gained independence, JSC “Farmak” as the successor of the Lomonosov Kyiv Chemical and Pharmaceutical Plant, continued to produce all the drugs that were previously manufactured at the plant. In particular, Farmak became the only manufacturer of a drug produced under the brand name Corvalol in the entire post-Soviet space. The use of the mark “CORVALOLUM CORVALOLUM” is confirmed by packages for the period 1991-2002 inclusive.
TM “Corvalol” is protected in 16 countries of Europe and Central Asia: Germany, Poland, Lithuania, Estonia, Latvia, Moldova, Romania, Bulgaria, Turkmenistan, Armenia, Georgia, Azerbaijan, Tajikistan, Kyrgyzstan, and Kazakhstan.
