Cake Wars in Ukraine: Confectioner Roshen Sues Ice Cream Maker Khladoprom over “Kyiv Cake” Trademark

In November 2019, the leading Ukrainian confectionery corporation Roshen asked the Kyiv City Commercial Court to order the Ministry for Development of Economy, Trade, and Agriculture to cancel the trademark registration “Khreshchatyk Kyivsky tort” belonging to the Ukrainian ice cream manufacturer Khladoprom, on the basis of its similarity with Roshen’s trademark “Kyivsky tort” (Kyiv cake).

Roshen also asked the court to order Khladoprom to withdraw from the market and destroy all packaging and labels featuring the words “Kyivsky tort”, independently or in combination with other word and figurative elements, particularly chestnuts or chestnut leaves.

The Kyiv City Commercial Court ruled in favor of Roshen in December 2019, but Khladoprom appealed this decision in January 2020. The case is currently pending before the Northern Commercial Court of Appeal.

“Kyiv cake” is a well-known dessert made since 1956 at the Kyiv Confectionery Factory, now part of the Roshen corporation. The cake packaging features images of horse chestnut leaves, one of the symbols of the Ukrainian capital.

Roshen has previously succeeded in defending its rights in unfair competition proceedings against several other manufacturers, including the Kyiv-based BKK and Kyivchlib baking and confectionery companies. The proceedings against both companies took place from 2016-2019 and centered around the similiarity of the “Kazkovy klyuchyk” (“Fairytale Key”) cake packaging to Roshen’s earlier “Zoloty klyuchyk” (“Golden Key”) trademark and packaging design. “Golden Key” is another one of Roshen’s famous cakes.

Moreover, Roshen is trying to assert its right to the color red as a trademark for goods in classes 22 and 30 in Ukraine. Back in 2018, Roshen filed a lawsuit against the Ministry for Development of Economy, Trade and Agriculture because it had refused to register the trademark. The Kyiv City Commercial Court issued a judgement in favor of Roshen in June 2019, but the Ministry appealed the decision in July 2019. The case is still pending before the Northern Commercial Court of Appeal.

Prepared by: Yuriy Karlash and Valentyna Martynenko

For more information, please contact ukraine@petosevic.com.

Sources: Unian and KyivPost news websites, State Judicial Administration of Ukraine website