Société BIC obtained a favourable judgement on the cancellation of the decisions of the Ukrainian IP Office and the Appeal Board of the IP Office in the first instance court.
In 2018, the Ukrainian IP Office decided on non-registrability of the shape of Société BIC’s lighter as a trademark. In 2019, the Appeal Board of the IP Office upheld the decision of the IP Office and, despite all the evidence provided, decided that the shape is not trademarkable. Société BIC disagreed with the decisions and filed a lawsuit requesting the cancellation of them. The company argued that the filed 3D mark (the lighter’s shape) fulfils the essential trademark function of uniquely identifying the commercial origin of the goods for which the registration is sought.
The first instance court agreed with the rights holder’s position that the decisions should be cancelled and that the IP Office should re-examine and re-decide in relation to the Société BIC’s trademark application, taking into account the judgement of the first instance court. Notably, all of the expert evidence conclusions that the court ordered the expert institutions in the field of IP to prepare for verification of the eligibility of the BIC lighter’s shape for trademark registration were in favour of Société BIC.
The rendered judgement reconfirms 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.
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, 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. The case strengthens Sayenko Kharenko’s expertise in sophisticated trademark cases concerning the protection of 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 Natalia Gorodetska.