TM AZOVSTAL does not belong to Akhmetov
As found out NV Business, the company of Rinat Akhmetov and Vadim Novinsky does not own this trademark. And now the owners of the Mariupol plant will have to fight for the right to use this brand.
In 2022, thanks to the heroism of the defenders of Mariupol, Azovstal became the most famous Ukrainian brand. But, as NV Business found out, the company of Rinat Akhmetov and Vadim Novinsky does not own this trademark. And now the owners of the Mariupol plant will have to fight for the right to use this brand.
In early 2023, it became known that a small state in Oceania – Niue – issued a souvenir coin dedicated to the defenders of Azovstal. Last year, a private American brewery began brewing and bottling Azovstal beer. And on the OLX classifieds site, you can buy postage stamps dedicated to the defense of the steel plant, published in Liberia. All these products, most likely, were produced without the consent of the owners of the Mariupol enterprise, which has already become a legend.
Rinat Akhmetov and two competitors at TM AZOVSTAL
In August 2022, Metinvest Holding submitted two applications to the Ukrainian Institute of Intellectual Property (formerly Ukrpatent) for the registration of the AZOVSTAL and AZOVSTAL trademarks.
“We hope for a positive response this year, but not everything depends on us,” Metinvest’s press service told NV Business.
But despite the fact that the holding is the sole shareholder of the enterprise, which became known to the whole world in 2022, it has several competitors in the dispute for the brand.
Two months earlier, in June, an application for the AZOVSTAL trademark was filed by the Bershad Lux company from the Vinnitsa region. She wants to produce alcoholic beverages under this name. The address of the company matches the location of the Bershad distillery, which the state sold in November 2020.
But the most interesting thing is that the AZOVSTAL trademark has had an owner since February 2006. This is Oleg Bogatov, who in the mid-2000s was called the main cybersquatter in Ukraine. The azovstal.ua domain is also registered on it, from which the redirection to the Ukrrudprom website takes place.
Why is it important?
The trade mark can be used without registration. For example, when it matches the brand name of the company.
“In this case, the company or enterprise acquires the rights to a commercial name, which does not require state registration for protection,” says Ekaterina Oleinik, partner of Arzinger JSC.
But the presence of the Certificate of Ukraine for the trademark allows you to monetize it by selling goods and services under this TM. In addition, the Certificate gives the right to register a domain name in the .UA zone and the right to conclude various agreements on the disposal of intellectual property rights. “The presence of a trademark is in practice a prerequisite for concluding franchising agreements and further scaling the business”, says Alexander Molotai, partner at Law Firm Molotai and Partners, to NV Business.
When registering and using TM, there are many legal nuances. There are 45 classes of the International Classification of Goods and Services (ICTS). In each of them, you can register a consonant trademark. But there is only one domain in the .UA zone. Usually there is a fight for it.
This is exactly what Bogatov took advantage of, registering a trademark according to class 38 of the Nice Classification. It concerns Internet communications services. But it does not intersect with the activities of the metallurgical plant.
On August 15, 2022, Metinvest Group applied for the registration of TM for goods of 01, 06 classes and services of 35, 36, 39, 42 of the Nice Classification. That is, according to the profile of their activities.
Plant, graphic sign, trade mark
Why did Metinvest decide so late to fight for a trademark that has existed for almost 90 years? Moreover, in the mid-1990s, the company’s managers already understood the need to develop the brand and invested in obtaining international quality certificates. Thanks to this, on the American market, Azovstal’s products cost $60-70 more than those from other Ukrainian enterprises, Alexander Bulyanda, then head of the plant, said in an interview with the Zerkalo Nedeli newspaper in 1996.
Prior to the start of the full-scale Russian invasion, Azovstal operated exclusively as a manufacturer of rolled metal products. “The war and everything that happened at Azovstal, no matter how rude and bold it may sound in the context of the tragedy, scaled up this brand and made it a legendary symbol, — says Victor Ishkov, partner of BBDO Worldwide in Ukraine. — Fame and acquired associations have transferred the brand from a niche b2b to a common cultural field of almost global scale.“.
Metinvest acknowledges that by the beginning of 2022, the group’s overall strategy was to switch to the use of a single Metinvest brand for all products. Back in the late 2000s, Azovstal workers said that the plant issued an order to ban the use of the old logo.
The challenges of 2022 and the massive use of the name Azovstal due to the heroic defense of the plant by the Armed Forces of Ukraine made it necessary to take legal steps “to protect the brand from potential commercial use” in accordance with the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services”.
“One of the steps was the registration, in addition to the graphic trademark, also of text trademarks in the corresponding classes of activity of the Metinvest group,” the press service of the company says.
The “graphic trademark” is the same Azovstal logo of two letters “A” and “C”, which has been used since Soviet times and which was abandoned under Metinvest. And the rights to it really belong to the Azovstal Iron and Steel Works since January 31, 1994. According to the Ukrpatent database, it has registration number 3272. The last time the validity of the graphic mark was extended in 2018 for 10 years. Metinvest’s press service calls it “the graphic designation of Azovstal”. However, Ukrpatent’s open data does not indicate anywhere exactly what the letters “A” and “C” on the logo mean.
Can registering a logo in 1994 help register your own domain? Ekaterina Oleinik says that the domain name must completely match the registered TM, or the verbal part of the TM must be dominant in the designation. “Since the TM according to certificate No. 3272 is a logo, such a TM cannot be used to register a domain in the .UA zone”, explains Oliynyk.
Negotiate or go to court?
The press service of Metinvest Group did not answer a direct question from NV Business about attempts to negotiate with Oleg Bagatov to buy out TM Azovstal and the domain.
Bogatov also did not answer the editors’ question about possible contacts with Metinvest on the Azovstal trademark.
Although they have a long history of relationships. Previously, Bogatov was the owner of TM Metinvest and the Metinvest.ua domain. As of now, the owner of this trademark is Metinvest BV (Netherlands) in the Ukrpatent register. In 2012, it was reported that Rinat Akhmetov’s SCM group bought several trademarks from him. But it seems that TM Azovstal was not included in this list at that time.
Because of such cases, Oleg Bogatov was called the largest cybersquatter in Ukraine in the mid-2000s. He actively registered well-known trademarks and domains. The loudest story is a lawsuit between Google and the Ukrainian LLC Go Ogle, received from Oleg Bogatov with a certificate for the Google trademark in Ukraine. This company was the owner of TM and the Forbes.ua domain, which were subsequently bought by an American publisher.
Today Oleg Bogatov has 30 valid Certificates of Ukraine for various trademarks.
The Ukrainian legislation provides safeguards both to prevent unfair registration of trademarks and to combat manifestations of unfair competition.
In the case of Azovstal, this is an institution of well-known brands. This is an extended property right compared to the rights of a traditional registered trademark owner. “Such right is indefinite and does not require periodic renewal or confirmation. explains Alexander Molotai. The status of a well-known trademark is established by its recognition from a decision of the court or the Patent Office of Appeal, which can take several years.
So, in the mid-2000s, the then well-known metal trading company UMMC sued the same Oleg Bogatov over TM UMMC, UGMK and the UGMK.UA domain. “In order to prove the status of a well-known trademark, we even had to conduct surveys in the regions and collect publications in the media with comments that were previously given by the managers of our company than spreading knowledge about UMMC”, – recalls the former top manager of the UMMC in a conversation for NV Business on condition of anonymity. According to him, the courts with Oleg Bagatov and another contender for their trademark have been going on for about three years. This was the principled position of the owners of the company. Some details of this case can be found in the Register of Judgments.
Separately, it should be noted that in the case of submission for registration of trademarks associated with a famous person, reflecting an object of cultural heritage of national importance, etc., the law provides for the possibility of refusing to register a trademark if such registration would humiliate honor, dignity, business reputation.
In the photo zn.ua – beer under TM Azovstal from an American brewery
Ekaterina Oleinik believes that an attempt to register TM Azovstal for vodka may also face similar restrictions. “Such use will offend the feelings of Ukrainians, violate the norms of public morality and well-established principles,” says Kateryna Oleinik. She recalls a case from her practice, when the registration of TM “MAZEPA ON VERESOVOY HONEY” for alcoholic beverages was denied. Then the definition was recognized as such that “gives the impression of a sarcastic semantic content and a disrespectful attitude towards an outstanding Ukrainian historical and state figure – Hetman of Ukraine Ivan Mazepa.”
The representative of Bershad Lux, in an interview with NV Business journalist, noted that the company will provide comments only after the relevant state authorities decide on the registration of the trademark.
How much does TM AZOVSTAL cost
HB magazine published a rating of Ukrainian brands for several years. It is noteworthy that industrial trademarks have never made it into the TOP-100. Is it possible to estimate the value of TM Azovstal today?
“It is incorrect to assess the commercial value of the Azovstal brand. This is the property of the people, the property of the Ukrainian army, one of the symbols of the war against Russia. The position of the Metinvest group is to allow the free circulation of the Azovstal brand, without restrictions on its use in the cultural sphere”, — answered NV Business in the press service of Metinvest. They are reminded of the insane demand for bracelets from the latest batch of steel from Azovstal. Then 100 thousand units were sold out in a matter of days. And the collected funds were transferred to support the Armed Forces of Ukraine.
Large symbols always become part of the culture, Viktor Ishkov notes. And where this symbol is not protected by rights, culture will begin to exploit and replicate it, including appropriate it for business interests. “This is a natural market process, but it would definitely be worth moderating in the legal plane.”, Ishkov is sure.
Azovstal bracelet signed by Valery Zaluzhny. Photo: N. Yemchenko facebook
Metinvest also has more practical motives to resolve the situation. The company’s management has repeatedly spoken about plans to resume Azovstal after the de-occupation of Mariupol. “The group considers it necessary to preserve for the descendants and the cultural code of Ukrainians the name of the plant, whose defense has become known to the whole world. Accordingly, products under the Azovstal brand will be produced at the restored Azovstal”, — summed up in Metinvest.
So, most likely, the owners of the metallurgical plant and the owner of the trademark will have to negotiate. If a love solution is not found, then long courts are not ruled out. In this case, the name AZOVSTAL will continue to be used by manufacturers of souvenirs and consumer goods without respecting copyright.
But it is also possible that Metinvest Group will receive a Certificate of registration of the AZOSTAL / AZOVSTAL trademark in other classes of the Nice Classification. And he will not claim a domain name in the .UA zone, which will remain with Oleg Bogatov.
translation Skeleton.Info
