1 TRADEMARK COURT CASES IN LITHUANIA © Giedrė Domkutė, Partner, Advocate Vilnius, 2007 TRADEMARK COURT CASES IN LITHUANIA © Giedrė Domkutė, Partner, Advocate Vilnius, 2007 

2 Legal background Law on Trademarks (2000); Law on Trademarks and Service Marks (1993) - marks filed for registration prior to January 1, 2001 shall be registered under this law. Paris Convention regarding Industrial property; Regulation (EC) 40/94 regarding Community trademark; Competition Law; Practice of the Supreme court of Lithuania and European Court of Justice.

3 Court cases regarding: enforcement of the proprietor’s rights; decisions of the Appeals Division of the State Patent Bureau in oppositions and appeals; invalidation of registration of a mark; revocation of registration of a mark; recognition of the mark as well-known in the Republic of Lithuania; CTM according to provisions of Regulation 40/94.

4 Enforcement of Rights recognition of rights; injunction to terminate all actions which infringe or may infringe owner’s rights; prohibit actions, due to which IP rights may be infringe or damage may arise; reimbursement of losses or damage, including lost income and other expenses or compensation; seizure and, where necessary, destruction of unlawfully used marks, devices or equipment for the production thereof, also of goods when it is impossible to remove the marks unlawfully affixed to them as well as of other devices and equipment used for the infringement of the IP rights.

5 Court practise: Invalidation on Absolute grounds The request to register trademark 5 th AVENUE rejected on absolute grounds as the trademark misleads society – it misstates about geographical connection and mistakenly orients regarding real origin. Average consumer in Lithuania may associate the trademark with the street in New York, having high reputation and therefore may mislead consumer regarding real origin of goods and services. The request to register trademark 5 th AVENUE rejected on absolute grounds as the trademark misleads society – it misstates about geographical connection and mistakenly orients regarding real origin. Average consumer in Lithuania may associate the trademark with the street in New York, having high reputation and therefore may mislead consumer regarding real origin of goods and services. Application to register trademark “Citrinų ir apelsinų skiltelės” (Cloves of lemon and orange) was rejected as it characterises only kind and characteristics (taste, aroma features and form of goods). Application to register trademark “Citrinų ir apelsinų skiltelės” (Cloves of lemon and orange) was rejected as it characterises only kind and characteristics (taste, aroma features and form of goods).

6 Court practise: Invalidation on Absolute grounds Civil case Anheuser - Busch Incorporated vBudejovicky Budvar N.P. regardind invalidation of trademark BUDWEISER When challenging registration of trademark on the grounds of the fact that trademark indicates only origin of goods, presumed legality of trademark registration should be denied and two circumstances should be proved that the trademark indicated only origin of goods and that the trademark has no distinctive character in respect of the goods for which it is registered.

7 Court practise: invalidation due to prior rights Gustav Pauling Ltd v Julius Meinl International AG regarding invalidation of trademark Praesident Meinl Kaffee (w.,fig) due to its similarity to trademark PRESIDENT. Trademark Praesident Meinl Kaffee (w.,fig) is combined trademark having independent elements which help to characterise trademark, what forms general impression perceived of average consumer. OHIM in case R541/ has noted that evaluating risk of misleading of consumers should be based on general impression of consumers, espacially paying attention to distinctive and dominating elements. Therefore, though semantical and phonetical similarity between trademarks exist, however such similarity is not strong enough to determine general impression.

8 Court practise: invalidation due to prior rights Similar: Melitta MELISSA, BUDWEISER Differs: NIVEA LINEA MOBICMOVIX MOBИKC PASAKA PRESIDENT

9 Court practise: invalidation due to unfair competition Civil case STADA Arzneimittel v Nestra Limited regarding Pfeil Zahnschmertz tabletten. Though in trademark law principle “first in time, first in rights” exists, but it is not absolute and absolutely undeniable, because if trademark registration is recognised invalid due to unfair competition, the said principle will not be applied to such trademark. The situation, when the person files trademark for registration having no bona fidea intentions to use it, when subjective rights to the trademark belongs to other person, who applied for trademark registration later, cannot be considered as coincident with manners of fair industry and trade dealing and should be held as an act of unfair competition.

10 Court practise: invalidation due to unfair competition Civil case LEGO v Legosta. Functions of company name and trademarks is not identical, however their functions should be in harmony with each other, otherwise misleading of public may arise – respective trademarks will be wantonly associated with companies, though really respective trademark and company with which trademarks are associated are not related and vice versa.This may mean reasonless use of good name created by other person, receipt of unearned and even unfair advantage, dilution of distinctive character (distinctiveness), value, good reputation, which is associated with such distinctiveness (so called theories of free riding and dilution).

11 Revocation of trademark was not used for a period of five years after the issue of the registration certificate became the common name for respective goods and services; in consequence of the use, made by the owner, misleaded consumers; registered without consent of owner by owner’s representative / agent (term to file claim – 3 years after learning about the fact).

12 Recognition as well known Well known trademarks in Lithuania: NIKE NIKE CAMEL CAMEL RAMA RAMA INTEL INTEL LEGO LEGO CHIVAS LEGO CHIVAS LEGO CHIVAS CHIVAS

13 ANY QUESTIONS?

14 Thank you for your attention J. Jasinskio 16B Victoria building LT Vilnius, Lithuania Tel: (370 5) Fax: (370 5)