Ukraine: 25 Years After the USSR Collapse, Two Countries’ Banks Keep Disputing One Trademark

The controversial conflict between two banks which has started in December 2015 and is still ongoing, resulted in three separate cases on diverse grounds with different rulings and approaches.

Two signs  (hereinafter “Oschadbank”) and  (hereinafter “Sberbank”) have the same meaning in Ukrainian and Russian, namely, the abbreviation of SBEREGATELNYY BANK (Savings Bank).

After the Soviet Union disintegration in 1991, the signs began to be used separately in Ukraine and Russia. Between 2003-2006, Ukrainian Oschadbank JSC registered two trademarks: Oschadbank and Sberbank. In 2007, Sberbank JSC entered the Ukrainian market under the combined sign “Sberbank Rosii” (Savings Bank of Russia) and after a while in 2015 began to use the trademark without the “Rosii” element.

The first move was made in 2016 by Oschadbank JSC who filed a lawsuit seeking invalidity of Sberbank’s trademarks in Ukraine (including international registrations), an injunction regarding the use of the mark, an obligation to change the company name and transfer of the domain name “sberbank.ua” to the Ukrainian bank. The claim was upheld by the first instance court except for the request to change the company name; however, the decision is not final as it is currently being reviewed by the appellate court.

In spring of the same year, Sberbank JSC filed a claim for early termination of the “Sberbank” trademark owned by Oschadbank JSC due to its non-use.

In defence, Oschadbank JSC furnished the following evidence:

• the use of the sign “Sberbank” on the house-fronts in two Ukrainian cities, in Interbank Information Dealing Network;
• the use of the sign “Oschadbank” is the use of the sign “Sberbank” since such differs only by single elements, in particular by the way of using the Ukrainian version of the same definition (“Oschadbank” and “Sberbank” are semantically equal);
• the use of the sign “Sberbank” under the terms of one of the special offers.

The first-instance court dismissed the claim holding that the Ukrainian Bank had sufficient evidence of the Sberbank trademark use. The Appeal and the Supreme courts upheld this decision.

The third case concerns the invalidation of the Ukrainian trademark as it does not meet the requirements of legal protection. The claim was filed by Sberbank JSC against Oschadbank JSC in June 2016 on the grounds that the Plaintiff is the holder of a well-known and registered Sberbank company name in Ukraine which predated the trademark registration. The claim was upheld by the court of first instance. However, currently the decision is being reviewed by the appellate court, and the additional forensic examinations has been ordered.

Overall, it is difficult to confidently predict who will have the last word in this dispute. However, it seems to be Russian Sberbank which decided to solve the problem comprehensively by leaving the Ukrainian market. The decision was supported by National Bank of Ukraine and there are investors who already want to buy and after this rename Russian Sberbank in Ukraine.

This case shows the increasing wave of legal disputes in former USSR countries – the companies from already independent countries intend to use the soviet TMs, that are well-known and have public trust. The legal battles for wrights on old soviet TMs can be observed around all CIS countries – between FMCG-companies, household product producers and financial companies, like in above mentioned case.