Ilyashev & Partners successfully represented Latvian pharmaceutical company Kalceks AS in a high-profile dispute concerning the invalidation of Ukrainian trademark certificates for the anesthetic trademarks “Promedol” and “Промедол” registered by Pharmaceutical Group Zdorovia LLC.
Kalceks AS is widely known as the manufacturer of anesthetic products under the trademark “Promedol Kalceks Промедол Калцекс”, protected by International Registration No. 1320345 dated 20 June 2016 for goods in Classes 1 and 5 of the Nice Classification.
In 2016, Kalceks obtained Ukrainian registration certificate No. UA/15324/01/01 for the medicinal product “Promedol Kalceks”, solution for injection, 20 mg/ml” (Order of the Ministry of Health of Ukraine No. 787 dated 28 July 2016).
The dispute arose when Pharmaceutical Group Zdorovia LLC began marketing similar products in Ukraine under the trademarks “Promedol-ZN” and “Promedol Промедол”, protected by Ukrainian certificates No. 129188 and No. 227836. In the same year, the company filed a lawsuit with the Commercial Court of Kyiv seeking to invalidate Kalceks’ international trademark registration, claiming the trademarks were identical apart from the additional elements “ZN” and “Kalceks”.
The case was further complicated when the Ukrainian claimant requested interim measures to prohibit the State Customs Service of Ukraine from including Kalceks’ international trademark in the Customs Register of IP Rights. Such a restriction could have resulted in Kalceks’ products being treated as counterfeit, leading to delays at customs and potential reputational and financial damage.
To protect its rights, Kalceks engaged Ilyashev & Partners. The firm’s Intellectual Property team filed a counterclaim, arguing that Kalceks’ trademarks included both the INN (International Nonproprietary Name) “Promedol” and the manufacturer's brand name. Accordingly, Kalceks had a legitimate basis for use, whereas the Ukrainian company's attempts to block imports constituted an infringement of Kalceks’ legal rights and interests.
The Commercial Court of Kyiv upheld the arguments presented by Ilyashev & Partners, ruling that “Промедол” and “Promedol” are generic names included in the WHO’s INN list. Such terms cannot serve as standalone elements in trademarks or product names, as this would result in unfair competition and a potential market monopoly. The court also found that the “ZN” component lacked distinctiveness. On 8 April 2019, the court ruled in favor of Kalceks and invalidated the Ukrainian trademark certificates.
Pharmaceutical Group Zdorovia LLC appealed the decision, but on 6 May 2025, the Supreme Court of Ukraine, acting through the Commercial Cassation Court, upheld the first-instance judgment. The Court confirmed the invalidation of certificates No. 129188 and No. 227836 for “Promedol-ZN” and “Promedol Промедол”. By the time the case reached the higher courts, ownership of the trademarks had been transferred to a third party – Farmeks Hrup LLC, which had become the legal successor and new right holder.
The Supreme Court further ordered the Ukrainian National Office for Intellectual Property and Innovations to record the invalidation of the two certificates in the State Register of Trademark Certificates of Ukraine and publish the information in the official bulletin Promyslova Vlasnist (Industrial Property).
The Supreme Court’s decision is final and not subject to appeal.
The case was handled by Mikhail Ilyashev, Managing Partner; Oleh Trokhymchuk, Counsel and Co-Head of Dispute Resolution; Andriy Lytvyn, Head of the Kharkiv Office and Attorney at Law; and Dmytro Lazebnyi, Attorney at Law.