Lithuanian, Latvian and Estonian Practice of the Patent Bureau
PRACTICE OF THE LITHUANIAN STATE PATENT BUREAU
Opposition Substantiation Statistics:
In September, October and November the Appeals Division of the State Patent Bureau of the Republic of Lithuania examined four trademark oppositions represented by our firm. Two oppositions in which we represented the interested person were satisfied and respective trademark registrations were invalidated. Other two oppositions in which we represented the proprietor of the opposed trademark were dismissed as we proved that the trademarks in question were not confusingly similar.
Confusingly similar trademarks:
|Earlier marks||Opposed marks|
|BREEZER||vs.||Breeze||The marks are registered for designating identical and similar goods in Class 33|
|vs.||The marks are registered for designating identical services in Classes 39 and 43|
Trademarks which are not similar:
|Earlier marks||Opposed marks|
|vs.||The marks are registered for designating goods in Class 30|
|vs.||ARKORAMA||The marks are registered for designating goods and services in Classes 2, 4, 6, 7, 8, 11, 17, 19, 20, 21, 22, 24, 27, 35 and 37|
Prepared by the Assistant to Attorney-at-Law Mykolas Jakutis
Decisions on trademark applications:
Regarding registration of the international trademark 911 (registration No. 1 199 656) in Lithuania
After performance of the expert examination, it was decided not to register international trademark 911 for goods of class 12 in Lithuania, reasoning that the sign did not have any distinctive character, the sign denoted and indicated only a quantity of goods or a nominal figure. The State Patent Bureau was presented with arguments that consumers’ attention to goods marked with the sign 911, i.e. luxury cars, would be particularly big, it was also presented with evidence about the distinctive character of the sign, namely that huge amounts of money had been spent for popularizing the mark, cars with that mark represented a large portion of sports cars in Lithuania, only cars with that sign participated in the largest circuit racing organized in the United Kingdom, the Porsche car club, which organizes various events, was active in Lithuania and namely cars with that mark took part in such events. Based on these arguments, it was proven that the sign was not descriptive and performed its, as trade mark’s, main function – enabled to differentiate goods of one manufacturer from those of another, therefore, the State Patent Bureau of the Republic of Lithuania, agreeing with the presented arguments, entered the trademark into the register.
Regarding registration of the trademarks IDEALUS LANGAS (application No. 2013 1839) and IDEALUS LANGAS (application No. 2013 2240) in Lithuania
After performance of the expert examination, it was decided not to register two national (figurative and verbal) trademarks IDEALUS LANGAS for goods of class 19 and services of class 35, based on the fact that the marks did not have a distinctive character and denoted and indicated purpose of goods. The State Patent Bureau was presented with arguments that the experts did not examine the distinctive character of both the marks namely with regard to services of class 35. The State Patent Bureau was also presented with evidence regarding the acquisition of the distinctive character by use of the marks, namely that the signs had been used since 2011, there were 24 stores in Lithuania with these marks, the marks were also used in various advertising publications, but, according to the State Patent Bureau, this evidence was not enough to prove the acquisition of the distinctive character of the marks. With regard to this, the State Patent Bureau decided to enter the trademarks IDEALUS LANGAS (application No. 2013 1839) and IDEALUS LANGAS (application No. 2013 2240) into the register for services of class 35.
Prepared by the Junior Lawyer Ignas Motiejūnas
PRACTICE OF THE LATVIAN PATENT OFFICE IN OPPOSITION CASES
Misleadingly similar trademarks:
|Earlier marks||Opposed marks|
|ENIGMA||vs.||ENIGMA NATURE||The marks are registered for the marking of identical goods in Class 03|
|HENDERSON||vs.||The marks are registered for the marking of identical goods in Class 25|
|VISONAC||vs.||VISOMAX||The marks are registered for the marking of identical goods in Class 05 and partially similar services in Class 44|
|BRONCHOFORTON||vs.||BRONCHOTON||The marks are registered for the marking of identical goods in Class 05|
|STARCK||vs.||The marks are registered for the marking of identical goods in Class 20|
The marks are registered for the marking of identical goods in Class 09 and similar services in Class 35, 38. Opposed mark includes reference to the well known in Latvia trademark TWITTER
|balluun||vs.||The marks are registered for the marking of identical goods in Class 09 and similar services in Class 35, 38|
|vs.||Viesnīca Roma||The marks are registered for the marking of identical services in Class 43|
Design which are similar:
|Earlier design||Opposed design|
The opposition has been satisfied and opposed design registration withdrawn
PRACTICE OF THE ESTONIAN BOARD OF APPEAL OF INDUSTRIAL PROPERTY
Misleadingly similar trademarks:
|Earlier marks||Opposed marks|
|vs.||The trademarks registered for goods of Class 32 and Class 33|
|vs.||The trademarks registered for goods of Class 30|
Opposition against “saku G N (fig)” was not satisfied, decision No 1489 (29 September 2015)
Earlier trade mark
Opposed trade mark
Reg. No 48008 (Classes 32, 33)
Appl. No M201200538 (Classes 32, 33)
On 11.11.2013 AS A. Le Coq, owner of an earlier mark „G:N (fig)“, filed an opposition with the Board of Appeals of Industrial Property regarding the decision of the Patent Office to register the trade mark „saku G N (fig)“ in Class 32, 33 in the name of Saku Õlletehase AS.
The Opponent argued that the Patent Office’s decision to register „saku G N (fig)“ was in contradiction with the Estonian Trade Marks Act § 10 section 1 point 2, which states: „Legal protection is not granted to the following trade marks: trade marks which are identical or similar to an earlier trade mark which has been granted legal protection with regard to identical goods or services or goods or services of a similar kind designated by the trade mark, if there exists a likelihood of confusion on the part of the consumers, which includes association of the trade mark with the earlier trade mark.“
AS A. Le Coq took a stand that the marks „saku G N (fig)“ and „G:N (fig)“ were confusingly similar since the dominating element of both marks is„G N“, which is depicted as black bold letters. The other elements of the marks are of secondary importance. More precisely, the shape of a bottle is descriptive of the goods in Classes 32, 33 (different kinds of beverages) and the indication to the producer „saku“ is too small to bear any significance. The general impression is the same and since the goods are everyday goods, the consumers do not have a heightened degree of attentiveness. Therefore, the Opponent stated, the marks are confusingly similar taking into consideration that the goods are identical as well.
The Applicant did not agree with the Opponent and argued that both signs obviously refer to the alcoholic drink GIN, more precisely to the GIN long drink products which are very popular on the market. The Applicant pointed out that there are several manufacturers who produce either the traditional GIN long drink or its somewhat different tasting variations. Many trade marks which have the word „GIN“ or even „GIN long drink“ in them, have been registered by the Patent Office and until year 2004, the Patent Office clearly stated that GIN is not subject to protection.
In 2008, Regulation (EC) No 110/2008 of the European Parliament and the Council of 15 January 2008 on the definition, description, presentation, labeling and protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89 came into force. The regulation specified, which alcoholic drinks can be named GIN and how they have to be labelled. Estonian manufacturers did not produce their GIN long drinks based on gin, but rather on fermented alcohol. Due to that, the labelling had to be changed and the word GIN could not be used by the aforementioned manufacturers. However, since the drinks were very popular, the manufacturers wanted to change the labels as little as possible, therefore creating figures and images which would lead to a general impression similar to GIN.
The Applicant took a stand that marks, figures or letters which lead to a general impression of the word GIN are therefore not very distinctive in Classes 32 and 33. The consumers are accustomed to seeing different labels by different producers using the word GIN or GIN long drink or something similar. Therefore the other elements of the marks have a more significant role – the coins and an obvious indication of the producer SAKU make the later mark distinctive enough for the opposition to be left unsatisfied.
The Board of Appeals of Industrial Property agreed with the Applicant and decided not to satisfy the opposition. Specifically, the Board stated that both parties had previously registered and used several trade marks with the word GIN. Only after the year 2008, several manufacturers had to make small changes to act pursuant to the changed law, therefore filing trade mark applications which included the modified version of the word GIN.
The goods in question are indeed identical, but the trade marks differ from eachother remarkably. The „:“ mark and the bottle shape both indicate the word I, therefore leading to the pronunciation and visual image of the word „GIN“. The modified versions of GIN are not distinctive in Classes 32 and 33, such as the Applicant stated.
However, the words „saku“ and „Saku Õlletehas 1820“ clearly indicate the manufacturer of the goods for the later mark and can be considered to be highly distinctive both visually and phonetically. Visually, the figures between letters G and N significantly differ, therefore the general impressions of the marks are different and the marks will not be associated with each other by consumers.
Appeal against the Patent Office regarding the partial refusal to register trademark GREENER WAY TO GRILL was not satisfied, decision No 1557 (21 October 2015)
Trademark: GREENER WAY TO GRILL (word), Appl. No M201200381, filed on 19.04.2012
Classes: 4, 11, 21
GrillSeason OÜ filed an appeal with the Board of Appeals of Industrial Property regarding the decision of the Estonian Patent Office’s partial refusal to register the trademark GREENER WAY TO GRILL for some goods in Classes 4, 11 and 21.
The Patent Office had declined to register the aforementioned trademark on the basis of the Estonian Trade Marks Act § 9 section 1 points 2 and 3. Point 2 stipulates: „Legal protection is not granted to the following signs: signs which are devoid of any distinctive character, including single letters in non-stylised form, single numbers in non-stylised form and single colours.“ According to point 3: „Legal protection is not granted to the following signs: signs which consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services, or which describe the goods or services in another manner, or which consist of the above-mentioned signs or indications which are not considerably altered.“
The argumentation behind the Patent Office’s decision was as follows: the phrase „greener way to grill“ is descriptive of several of the goods listed in Classes 4, 11 and 21 (such as industrial oils and greases, apparatus for cooking and household or kitchen utensils etc) and the consumers do not associate „greener way to grill“ with the Applicant.
More precisely, the phrase „greener way to grill“ is frequently used by many sellers or manufacturers of grills or related products (such as oils, utensils etc), referring to choosing methods, tools or machinery that might do less harm to the nature. The aim of Trade Marks Act § 9 section 1 point 3 is to protect the public’s interest so everyone can use commonly used, necessary or descriptive terms freely. It is therefore in the interest of the public to partially decline protection of GREENER WAY TO GRILL regarding some goods in Classes 4, 11 and 21.
The Applicant disagreed with the Patent Office and argued that even though the phrase „greener way to grill“ might be interpreted in a way that is connected to choosing methods which are better for the nature, it is not the only possible interpretation. „Greener“ could also be used as a reference to someone being a beginner, it might be an indication of colour or something being raw or rare.
The Applicant then referred to a European Court of Justice decision C-398/08, in which the following is brought out in point 56: „It must be stated that all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message. It is clear, however, from the case‑law set out in paragraphs 35 and 36 of the present judgment that those marks are not, by virtue of that fact alone, devoid of distinctive character.“
Therefore the Applicant concluded that even though the Patent Office considers the GREENER WAY TO GRILL mark to be interpreted in only one way, it can actually mean several different things, therefore making it distinctive. The interpretation is not obvious and needs at least a minimal amount of creative effort. The mark has a number of meanings and might constitute a play on words or be perceived as imaginative.
The Board of Appeals did not satisfy the appeal and agreed with the Patent Office. More precisely, the Board stated that for an average Estonian consumer, who understands English, the phrase „greener way to grill“ is descriptive. It refers to methods, tools or machinery that might do less harm to the nature. Even though there are several ways to interpret the phrase, it is highly unlikely that consumers would see it any differently. Therefore the public interest in leaving the phrase unprotected and free to use in the course of trade overweighs GrillSeason OÜ’s interests. GREENER WAY TO GRILL is not associated with GrillSeason OÜ in the eyes of the consumers and therefore would not work as a trade mark as it is highly descriptive of the goods in question.