Is your brand really yours?

Natalya Sopelnik, Deputy Editor-in-Chief of Les Nouvelles Esthetiques Ukraine magazine, Operations Director of Estet Group of Companies

The end of March this year for aesthetic medicine in Ukraine was marked not only by the beginning of quarantine. During the same period, many Ukrainian companies - distributors of professional equipment and products in the field of cosmetology were surprised to learn that the trademarks of the brands they represent in Ukraine may in the near future cease to belong to them. The Pro editors looked into the details of the current situation. Cosmetology

On March 25, 2020, a post appeared on the Facebook page of Yuri Zelemsky, which stated that almost 100 trademarks of professional cosmetology equipment, including brands such as Lumenis, LPG, Viora, Ulthera, etc., were submitted for registration by the general director MedicaLaser company Denis Tikhoruk.

The president of the Eastern European Association of Aesthetic Medicine Specialists “Secret. Doctors only” Alexander Turkevich, involving numerous owners, directors and TOP managers of distribution companies in Ukraine into the dialogue, as well as directly contacting Denis Tikhoruk, General Director of MedicaLaser, a Ukrainian manufacturer of laser equipment.

In the comments to this post, Mr. Tikhoruk wrote (the author's spelling has been preserved - editor's note):

“...You can easily contact me as a person whose rights I have effectively destroyed. For the moment, such a person has not been brutalized before me. I also want to point out that despite the fact that I have registered numerous brands for several decades, I have never tried to obtain these brands to create pressure on anyone or anything to create unclean competition. Therefore, for the sake of these people, who have this page, write emotional posts and then see their escalating atmosphere, and what they call me “.....” then they should not engage in provoking, but effectively contact me to remove the comment And in many other actions, such as I have effectively violated their rights {...} Be that as it may, any human enterprise whose rights have been violated has not yet become violent. “Also, everyone steals someone’s rights, and also threatens, calls them names, etc.. Once again I emphasize that every person whose rights I violated in the last two days before me was not killed.”

The editors of the professional online publication for cosmetologists Pro.Cosmetology decided to find out the details of this case and turned to different parties for comments:

• to the General Director of MedicaLaser Denis Tikhoruk;
• to representatives of companies whose brands appeared in the posts;
• Additionally, we asked a patent attorney for expert clarification.

Unfortunately, Mr. Tikhoruk refused to answer questions, demanding an official letter from the editor. We are used to working as an independent press. Our goal was to understand the situation, understand the motives and actions of all interested parties; take an open and honest interview rather than settle for official answers. And in order to provide readers with comprehensive information, we still publish Denis Tikhoruk’s answer, which we received on Viber:

"Dear Natalia! You approached me with an offer to comment on a certain conflict situation that has arisen between me and certain companies on the Internet. I don't know about such a conflict. Your link to some communication on the Internet does not indicate either the parties to the conflict, or its actual existence and its essence. For a conflict, the parties whose rights have been violated must be clearly identified. If such infringement occurs, the parties can resolve their differences in court. Therefore, I ask you to issue an official written request from your editorial office, signed by the editor-in-chief or an authorized person, in order to clearly record legal issues, and not rumors and speculation of incompetent Internet figures. If you receive such a letter, I will prepare an official response to you within a day. In your request, I ask you to indicate the specific names of the persons who are disseminating information that requires a response. Otherwise, your company risks being drawn into a fictitious situation created by some people who arbitrarily interpret some information {...}

I clearly formulated my position - I asked you for an official letter in paper form from your company. And he explained why I was asking for a letter in this form. I will not answer questions sent on Viber.”

At the same time, we asked for comments from representatives of companies whose brands, according to official registers, were submitted for registration. Lilia Sun-Chen-Li, owner of the Prime Laser Systems brand, founder and director of Ukrkrasa LLC, and Elena Pavlova, director of the World of Cosmetologist company, agreed to talk with the editors. We publish their answers and comments.

Pro.Cosmetology:

On March 25, information appeared on Facebook that Mr. Tikhoruk (MedicaLaser company) filed for registration of more than 100 trademarks, some of which belong to you. According to the patent search, some of them have already been registered by him, some are in the process. Please comment on this situation and your attitude towards it.

Liliya Sun-Chen-Li, owner of the Prime Laser Systems brand, founder and director of Ukrkrasa LLC:

Indeed, such an incident occurred in the beauty industry market. Mr. Tikhoruk, in his own name, filed for registration a number of applications for trademarks that reproduce well-known brands in Ukraine that belonged to other participants in the cosmetology equipment market.

My brand “Prime Laser Systems”, which has existed on the Ukrainian market for a long time, also suffered from these actions. Mr. Tikhoruk registered the mark for goods and services “Prime Laser”, which almost completely reproduces my brand, which is actually also the “name” of my business. I believe that these actions indicate the fact of unfair competition and that the registration of the corresponding mark violates my rights and legitimate interests.

Elena Pavlova, director of the company “World of Cosmetologist”:

Yes, we know this information; Mr. Tikhoruk’s “patent trolling” is a manifestation of unfair competition. Unfortunately, the World of Cosmetologist company, as well as other companies on the Ukrainian cosmetology equipment market, had to face this issue and, as a result, be involved in litigation.

Pro.Cosmetology:

Which of your trademarks did Mr. Tikhoruk apply for registration, what is the registration status (completed, rejected, in progress)?

Lily Song-Chen-Li:

In addition to the “Prime Laser” mark, Mr. Tikhoruk also applied for other marks that duplicate the names of our equipment models: “Double Prime”, “Prime Smart”, “Prime Plus”, “Prime Light”.

Registration status for our brands:

• “Prime Laser” – received a Certificate of Registration on March 25, 2020 (Certificate for a mark for goods and services No. 273528);
• “Double Prime” – preparation for state registration and publication (preparation for issuance of a Certificate);
• “Prime Smart” – preparation for state registration and publication (preparation for issuance of a Certificate);
• “Prime Plus” – preparation for state registration and publication (preparation for issuance of a Certificate);
• “Prime Light” – preparation for state registration and publication (preparation for issuance of a Certificate).

Elena Pavlova:

Mr. Tikhoruk has already gone through all stages of registration and received certificates for two of our trademarks: “World of Cosmetologist” and “Mirkosmetologa”.

Pro.Cosmetology:

How long have you been representing these TMs in Ukraine? What documents regulate this?

Lily Song-Chen-Li:

My team and I have been representing the Prime Laser Systems brand since 2017; under this brand we actively participate in specialized exhibitions and events in the beauty industry (S-Congress, Intercharm-Ukraine exhibitions, Pro Beauty Expo, etc.).

Our brand has also been used in the domain name of our website www.primelaser.com.ua since 2017.

As for documents, evidence of our use of the Prime Laser Systems brand is the many contracts with our counterparties and various advertising materials in which our brand has been used many times.

Elena Pavlova:

The company "World of Cosmetologist" has been operating since 2016. We developed the name and graphic image of the “Cosmetologist’s World” logo, which is actively used on the company’s official website, various documentation, social networks and printed materials.

Pro.Cosmetology:

Why do you think Mr. Tikhoruk registers trademarks? How do you think he's going to use them?

Lily Song-Chen-Li:

The true purpose of registration is known only to Mr. Tikhoruk himself. Considering the massive number of applications, in my opinion, these actions have the nature of “patent trolling” and can be aimed at impeding the activities of companies whose brands have been registered.

Elena Pavlova:

I believe that Mr. Tikhoruk’s actions are direct evidence of unfair competition and are aimed at discrediting and eliminating the company “World of Cosmetologist” and other companies as their direct competitors.

Pro.Cosmetology:

Did Mr. Tikhoruk contact you with a notification that he was registering the trademark that you represent?

Lily Song-Chen-Li:

Mr. Tikhoruk did not contact us with notice that he was registering our brands. We have also not yet received any demands or prohibitions on any activities with them.

According to the law, it is not possible to present a ban until the registration certificate is received. The certificate for our brand was received by Mr. Tikhoruk on March 25, 2020.

Considering this fact, as well as the behavior of Mr. Tikhoruk at our stand at the conference for permanent makeup artists, which was held by the Estet company in March of this year (both companies PrimeLaser and MedicaLaser participated in the event. - Ed.), we sent an official letter to Mr. Tikhoruk to obtain information about his intentions regarding our trademarks.

Elena Pavlova:

Mr. Tikhoruk has not contacted us and has not yet filed legal claims. I assume that he is awaiting the official completion of the registration process of our trademark, with the receipt of which he will have a “free hand” to infringe on the rights of our company.

Pro.Cosmetology:

Will you defend your interests, in particular, file a lawsuit? Are you ready to file a lawsuit to protect your intellectual property rights?

Lily Song-Chen-Li:

We are ready to defend our interests in court and file a lawsuit. All these years we have been active, invested in the development of our brands and will act according to the letter of the law.

Elena Pavlova:

Of course, first of all, the company “Cosmetologist’s World” will set aside its rights and interests in court, provided for by the legislation of Ukraine. We have filed a number of lawsuits to protect the interests of our company.

Pro.Cosmetology:

Are you ready to sit down at the round table of negotiations with Mr. Tikhoruk?

Lily Song-Chen-Li:

Yes, we are currently awaiting a response from Mr. Tikhoruk regarding his position on our trademarks. I would like to believe in prudence and a return to fair rules of the game. However, at the time of publication, we had not yet received a response.

Elena Pavlova:

No, we are not ready to discuss the violation of our rights with Mr. Tikhoruk; we are ready to conduct all conversations only in court with the participation of our lawyers.

***

As an independent specialized publication, Pro.Cosmetology also asked for commentary from patent attorney, lawyer, managing partner of IPJURIX, intellectual property consultant of the Estet group of companies - Yuri Okhromeev.

Pro.Cosmetology:

Yuri, as a patent attorney with many years of experience, please comment on this situation. How typical is it in your practice?

In general, the very situation with an individual filing for registration of almost a hundred trademarks is puzzling.

The purpose of a trademark is to distinguish the goods of one manufacturer from similar goods of another manufacturer. Multi-brand companies usually afford this number of brands. For example, according to the search database, the Epicenter K company owns 87 registered trademarks - and this takes into account a large range of products, a fairly long presence on the market and rebranding. In my experience, what is happening is very similar to “patent trolling” in order to gain advantages in the market through unfair means.

Pro.Cosmetology:

That is, by registering these brands, Mr. Tikhoruk can gain competitive advantages? Should other market participants be worried?

Yes and no. Registration of well-known brands in itself does not hinder anything. The only problem it creates is the obstacle to registering the same or similar mark for goods and services.

To create more negativity, the owner of such a registration must take some action. At any time, the owner of such a trademark can, through the court, prohibit its use, limit the business of other market players, the supply of products, etc. And for companies distributing registered brands, this is the so-called “sword of Damocles”.

Pro.Cosmetology:

How often have you encountered such situations in your practice?

Working as a forensic expert, I often came across various types of patent issues. As a rule, such situations result in restrictions on the import and export of products. It is in this case that the maximum and fairly rapid damage is caused to the importer. A surge in such cases occurred in 2012, after the adoption of changes to the Rules for entering intellectual property into the customs register.

One of the most high-profile cases is a court ban on the Jysk company from importing ordinary hangers. Or another example - a court ban on the export of ordinary granite curbs from Ukraine, due to which employees of granite workshops blocked the international highway Kyiv-Chop.

After these scandals, customs officers are very picky about such statements, thanks to which unscrupulous copyright holders have significantly minimized their activities in Ukraine.

Also, very often trademarks are registered by persons who have absolutely nothing to do with them and prevent their use within the market. An example is the fairly recent and high-profile case of Xiaomi, which is now suing in Ukraine for the possibility of using its own brand.

Pro.Cosmetology:

What do you think Mr. Tikhoruk will do with registered trademarks?

Hard to tell. But I would like to draw your attention to the fact that registering one trademark in Ukraine today costs 4,685 UAH, and this does not include the services of a patent attorney. And in our case we are talking about almost a hundred registrations! So we think, is it worth it to get registration certificates and just hang them on the wall?

Pro.Cosmetology:

What advice do you give to companies that represent trademarks submitted for registration in Ukraine?

Today, fortunately or unfortunately, these companies have only one way out - a judicial procedure for canceling this registration. And this pleasure is not cheap.

At the same time, there is a possibility that all lawyer’s costs and court costs will fall on the losing party, that is, on the unscrupulous copyright holder. Perhaps this will somehow influence the adoption of further similar actions.

In Europe, this situation has long been resolved. Similar precedents also happen there, but such actions are punishable by fairly large fines, and a well-functioning enforcement system does not allow one to evade responsibility. Therefore, such cases are minimal.

***

The ethics of investigative journalism involve finding out the position of all parties involved, and we have made every effort to assess the situation from different points of view. Unfortunately, we were unable to receive a detailed answer in the form of an interview from Mr. Tikhoruk and comments on why he decided to apply for registration of trademarks represented by his colleagues in the market. It is possible that Mr. Tikhoruk’s actions are purely for good purposes, but at the moment we have not been able to confirm this.

However, we hope that after reading this material, Mr. Tikhoruk will consider it possible to clarify his position on this issue, and we will be happy to publish his comment and his vision of this situation.