Two Claims Against One Trademark: Procedural Economy in Ukrainian TM Disputes

What do you do when a third party’s trademark registration stands in your way in Ukraine? The law offers at least two tools: an invalidity action and a non-use cancellation action. So why not use both at once? A case from our practice shows why such a “two-front attack” can end with one of the cases being stayed — and what strategic lessons rights holders should draw.

A Principle Missing from the Codes

Procedural economy is one of the foundational principles of litigation, yet none of Ukraine’s procedural codes actually defines it. The gap has been filled by case law — which, as a source of law, has a familiar weakness: a lack of complete uniformity. The same rules and principles can be applied differently across categories of disputes.

For practitioners this means it is not enough to find a relevant legal position; one must ensure it applies in the right context. Here is how procedural economy operated in a situation our team was directly involved in: parallel proceedings seeking invalidation and non-use cancellation of the same trademark certificate.

The Facts: Attacking a Registration on Two Fronts

A party interested in clearing the register was inconvenienced by a third party’s trademark certificate. It chose to act on two fronts simultaneously: it filed an invalidity claim and, in parallel, a claim for early termination of the certificate for non-use.

Ukrainian procedural law contains no express prohibition on doing so — both cases were opened and proceeded in parallel.

📋 How events unfolded
Step 1: two sets of proceedings opened against the same certificate: invalidity and non-use cancellation
Step 2: in the non-use case, a party moved to stay the proceedings under Article 251(1)(6) of the Civil Procedure Code — pending a final decision in the invalidity case
Step 3: the first-instance court granted the motion and stayed the proceedings
Step 4: the claimant appealed; the appellate court dismissed the appeal

Dismissals of such appeals are routine. What makes this one worth reading is the court’s reasoning.

The Legal Framework: a Duty to Stay — and Its Proviso

Article 251(1)(6) of the Civil Procedure Code obliges a court to stay proceedings where it is objectively impossible to decide the case before another case — constitutional, administrative, civil, commercial or criminal — is finally resolved. The same provision carries an important proviso: a court may not invoke objective impossibility where the evidence gathered allows it to establish and assess the facts at issue.

The claimant’s appeal rested on that proviso. Its logic: the non-use case turns on the certificate’s validity status, the defendant’s ownership, the fact of non-use for a continuous five-year period, and the presence or absence of justifiable reasons for non-use. None of that requires examining whether the rights were lawfully acquired or whether the sign met the conditions of protection — the questions at the heart of the invalidity case. Formally, then, the two cases are autonomous.

The Court’s Reasoning: Look at the Result, Not the Form

The appellate court took a wider view — through the lens of what both claims were ultimately for.

📋 The appellate court’s key holding The claimant filed two claims against the same defendant with one and the same aim — termination of the trademark certificate. Despite the formal difference in the subject matter and grounds of the claims, the practical result of granting either would be identical: the certificate would cease to be in force.

The court anchored this in the position of the Grand Chamber of the Supreme Court (ruling of 4 July 2023 in case No. 233/4365/18, citing rulings of 22 September 2020 in case No. 910/3009/18, 8 February 2022 in case No. 209/3085/20, and 21 September 2022 in case No. 908/976/19): a remedy is effective when it restores the violated right; protection must be complete, achieving the aims of justice and procedural economy.

✅ The Grand Chamber’s principle Under the principle of procedural economy, artificial duplication of judicial process — resolving a single dispute across several cases in one or more jurisdictions — is impermissible.

Hence the appellate court’s conclusion: continuing the non-use case before the invalidity case is finally decided would not give the claimant any more effective or higher level of protection. The appeal was dismissed.

Why This Approach Is Progressive

In our view, the position aligns with the European Court of Human Rights’ rejection of “legal purism” — the rigid, excessively formal (bureaucratic) application of procedural rules without regard to their purpose, the circumstances of the specific case, or the need to secure the effective exercise and protection of rights. Substance over form — and Ukrainian courts are visibly moving in that direction.

Strategic Takeaways for Rights Holders and Challengers

• Ukrainian courts increasingly assess not the formal differences between claims but their common purpose — a distinctly pro-European trend.
• There is as yet no settled practice on whether invalidity and non-use cancellation of the same certificate may proceed in parallel. A two-front attack therefore carries risk: one case may be stayed for years pending the other.
• When planning to knock out a third party’s registration, it is usually wiser to choose the priority route (invalidity or non-use) and pursue it first, deploying the second sequentially if needed — not simultaneously.
• For certificate owners the case is equally instructive: a motion to stay one of two parallel cases under Article 251(1)(6) can be an effective shield against the pressure of simultaneous proceedings.

This material is of a general informational nature, reflects the law and practice as at the date of publication, and does not constitute legal advice. For an assessment of your specific situation, we recommend consulting a qualified professional.