Ukrainian “Старлінк” defends SpaceX trademark suit and obtains compensation. What’s next?

The US company SpaceX filed a lawsuit against the Ukrainian IT company “Старлінк” to prohibit it using a trademark which is the Ukrainian spelling of the name of SpaceX’s satellite business, Starlink. ТОВ “Старлінк” (Ltd. Starlink) has been operating in the Ukrainian market for over ten years, so the Ukrainian company was able to prove its right to the trademark in court. It was also awarded financial compensation. The case is not yet resolved, as SpaceX has filed an appeal. AIN.Capital shares the details of this legal dispute.

What’s happened?

The Ukrainian “Старлінк” IT company was founded about fifteen years ago, as its owner Serhii Dulytskyi told AIN.Capital. Its main areas of activity are IT integration and cloud services, but the company has also provided Internet communications services.

In 2020, lawyers who introduced themselves as the American SpaceX company’s representatives contacted the company’s management and said they wanted to discuss the trademark, Dulytskyi recalled. Then the Ukrainian company asked for proof that the lawyers were indeed working with SpaceX, and communication stopped for several months.

After a while, the lawyers returned with a power of attorney from the American company, and the parties scheduled a meeting. According to Dulytskyi, SpaceX was represented by the Kyiv office of the Russian law firm Gorodissky & Partners. However, later they changed the law firm (although the lawyer remained the same).

The parties discussed a valid certificate for TM Starlink No. 135574 dated February 25, 2011 (Musk launched the American Starlink in 2014 and applied for TM registration in the United States in 2017):

Screenshot from the State Register of Certificates for Trademarks and Service Marks of Ukraine

“Their message was that we must refuse the types of activities they are interested in so that they can register their own TM. For this, they offered us $4000. But we have been operating in the market for 15 years and worked in that field (everything related to Internet access and data transmission),” said the founder of the Ukrainian company.

Due to shelling and power shortages, “Старлінк” has reported a growth in demand for optical communication channels.

According to Dulytskyi, SpaceX’s demands meant that ТОВ “Старлінк” would cease operations, and their efforts to explain this were unsuccessful. The parties did not agree, and in October 2022, SpaceX went to court.

In the spring of 2022, there was news that SpaceX was planning to open an office in Ukraine. So, the trademark dispute may be related to this.

What the court decided

In court, SpaceX asked to “partially terminate the validity of the Ukrainian trademark certificate No. 135574 dated 25.02.2011.” The lawyers justified the claim by the fact that SpaceX wants to register Starlink in Ukraine as a trademark for goods and services related to those for which the Ukrainian company’s brand is registered.

“They based their claims on the fact that Starlink is a world-famous brand and that this is the only reason we should give up the TM. They filed a trademark application with the Ukrainian National Office of Intellectual Property and Innovations, and this 20-page document half consisted of references to media about how well-known Starlink is,” said Dulytskyi.

The trial court found that “the Plaintiff has not proved the fact of actual violation, non-recognition or contestation by Defendant 1 of the Plaintiff’s rights and/or legally protected interests as of the date of filing the statement of claim, which makes it impossible to satisfy the claims.”

Based on the examination, the court also found that ТОВ “Старлінк” is engaged in the disputed activities, particularly the provision of Internet access, fiber optic Internet connection, satellite communication, access to databases, etc.

Therefore, on March 2, 2023, the Kyiv Commercial Court completely rejected SpaceX’s claims.

And on June 8, 2023, the same court ruled to recover from SpaceX UAH 480,000 in legal fees and UAH 60,000 in expert examination costs.

“But this does not mean we have received the money or will be paid soon. SpaceX’s lawyers have filed an appeal, and the court will consider it in August this year,” Dulytskyi said.

What comes next

Following an appeal from SpaceX, the Northern Commercial Court of Appeal resumed proceedings in the Starlink trademark case. The case will continue to be heard on August 15, 2023.

“They have filed a lawsuit against us to cancel our TM; they are actually attacking my business; we have to defend ourselves; we have no other choice. We will defend our interests in court,” said the owner of the Ukrainian company and trademark.