On 11 April 2023, the Northern Commercial Court of Appeal dismissed the appeals of the Ministry of Economy of Ukraine (former IP Office) and State Undertaking “Ukrainian National Office of Intellectual Property and Innovations” (current IP Office) and upheld the judgement of the first instance court under which decisions of the Ukrainian IP Office and the Appeal Board of the IP Office should be cancelled.
Both court decisions reconfirm that the shape of the BIC lighter is highly distinctive and is thus trademarkable. Trademarking the shape of the BIC lighter is also an important element of the company’s anti-counterfeiting strategy.
Remarkably, the current IP Office refrained from lodging a cassation appeal even though the IP Office is usually going through all the instances of the Ukrainian courts.
The judgement has been enforced voluntarily, i.e., substantive examination of the client’s trademark application has been resumed. The IP Office re-examined the Société BIC’s trademark application and, considering the judgement of the first instance court, decided on the registrability of the trademark for all goods in class 34 for which the registration is sought.
BIC lighter, which has been manufactured in the same shape for almost 50 years, has become an iconic object and a famous/recognisable brand worldwide, including in Ukraine. Moreover, BIC lighter is recognised as an item of modern art by various museums (Centre Pompidou, MoMa), which serves as another recognition of its distinctive form.
This is a landmark case in the field of intellectual property in Ukraine, proving that the efficient protection of 3D marks is possible, including during martial law.
Sayenko Kharenko’s attorneys provided comprehensive legal support to Société BIC, including enforcement of the favourable judgement. The case strengthens Sayenko Kharenko’s expertise in sophisticated trademark cases protecting IP rights to non-conventional trademarks.
The project team was co-led by counsel Oleg Klymchuk and senior associate Volodymyr Hrunskyi under the general supervision of partner Yaroslav Ognevyuk and in close cooperation with HQ Clichy-based legal department of Société BIC. The team also included associates Khrystyna Ivanytska and Mykola Lysenko.
