Lithuanian, Latvian and Estonian Practice of the Patent Bureau

PRACTICE OF LITHUANIAN STATE PATENT BUREAU

Opposition Substantiation Statistics:

In April, May and June the Appeals Division of the State Patent Bureau of the Republic of Lithuania examined three trademark oppositions represented by our law firm. Two oppositions have been satisfied and one opposition has been rejected. In the proceedings of the satisfied oppositions we acted as a representatives of the parties concerned as the proprietors of earlier trademarks and in the proceedings of the rejected opposition we represented the proprietor of the opposed mark and have protected the trademark, since we have proved that the compared trademarks designating the goods are not confusingly similar.

 Confusingly Similar Trademarks:

Earlier marks  Opposed marks
 MARSHAL  vs.  untitled The marks are registered for the marking of identical goods in Class 34
 lion

LION

vs.  king-lion The marks have been registered for marking identical goods in Class 29 and Class 30

 

Trademarks which are not similar:

Earlier marks Opposed marks
             CRISTAL  vs.  JAUME SERRA CRISTALINO The marks have been registered for marking identical goods in Class 33

Prepared by the Assistant to Attorney-at-Law, Senior Lawyer Mykolas Jakutis

Decisions on trademark applications:

Regarding the re-examination of application No 2015 1912 to register the mark HOLIGANS

Upon completion of an expert examination, it was decided not to register the mark HOLIGANS for all applied goods in Classes 25, 28, 32 and services in Classes 41 and 43 on the grounds that the sign is contrary to public order and is of such nature which promotes aggression (swearing, noise, fights) and everything related to disorderly actions and encouragement not to respect public order. The State Patent Bureau of the Republic of Lithuania has been filed with a request to carry out the re-examination examination of the afore-mentioned application setting out the following arguments: (i) the average consumer would not perceive the sign HOLIGANS as “hooligan” (chuliganas”), “infringer of public order” (viešosios tvarkos pažeidėjas); (ii) translation of this word into the Lithuanian language per se is not offensive, indecent; (iii) the decision on the expert examination does not set out any proofs evidencing the impact of use of the word “hooligans” on public order and promotion of aggression; (iv) the legal person Holiganas UAB is registered in the State Enterprise Centre of Registers; (v) a lot of trademarks bearing the word “hooligan” are registered in the English speaking countries the consumers of which perceive such sign as “hooligan”. In the light of the afore-mentioned reasoning, the State Patent Bureau has issued a positive decision.

Regarding the re-examination of application No 2015 0745 to register the slogan Tai, ką sugebame geriausiai

Upon completion of an expert examination, it was decided not to register the sign Tai, ką sugebame geriausiai for all applied goods in Class 32 on the grounds that the sign is of descriptive nature and does not have a distinctive character. The State Patent Bureau of the Republic of Lithuania has been filed with a request to carry out the re-examination of the afore-mentioned application alongside with evidence (detailed certificate of the communication agency, customer survey, evidence of use, documents evidencing advertising costs) which prove that after the date of filing the application the sign has acquired distinctive character in respect of the goods in Class 32 due to its use. In the light of the afore-mentioned reasoning, the State Patent Bureau has issued a positive decision.

Regarding the re-examination of application No 2015 0569 to register the slogan WE KNOW HOW TO MAKE IT STRONG

Upon completion of an expert examination, it was decided not to register the sign WE KNOW HOW TO MAKE IT STRONG for all applied goods in Classes 1, 2 and 17 on the grounds that the sign has no distinctive character. The State Patent Bureau of the Republic of Lithuania has been filed with a request to carry out the re-examination of the afore-mentioned application alongside with the argument that the link between the sign and the goods specified in the application is not sufficiently direct and specific and the supporting evidence (report of the public opinion survey). In the light of the afore-mentioned reasoning, the State Patent Bureau has issued a positive decision.

Regarding registration No 1 158 993 of the international trademark THE ORIGINAL STEAKBURGER

Upon completion of an expert examination, it has been decided not to grant protection to registration of the international trademark THE ORIGINAL STEAKBURGER for all applied goods in Class 30 and services Class 43 in Lithuania on the grounds that the sign is descriptive and has no distinctive character. The State Patent Bureau of the Republic of Lithuania has been filed with a request to carry out the re-examination of the afore-mentioned registration designating Lithuania setting out the following reasoning: (i) information on the goods in Class 30 and services in Class 43 has not been provided in the application outright because the link between the sign applied for and the afore-mentioned goods and services is not sufficiently direct, specific and understandable without additional reflections; (ii) the sign as a whole is original and, at first view, suggests a causal link of the characteristics of the goods and services specified in the registration. In the light of the afore-mentioned reasoning, the State Patent Bureau has issued a positive decision.

Prepared by the Junior Lawyer Aurimas Sobutas

PRACTICE OF THE ESTONIAN BOARD OF APPEAL OF INDUSTRIAL PROPERTY

Trademarks which are not similar:

Earlier marks   Opposed marks

JOOP!

JOOP

vs.  jup-jup

 

The marks were found not similar
 countryside  vs.

KAHTPИ

COUNTRY

The marks were found not similar
 rolex

ROLEX

 vs.  roller The marks were found not similar
 ossa

ossa-2

 vs.  ossa-kui The marks were found not similar

 

Misleadingly similar trademarks:

Earlier marks Opposed marks
 richmond  vs.

Richman

The marks were found similar

REPUBLIC

republic

fashion-republic

republic-of

republic-eta

 vs.  LOVE REPUBLIC

The marks were found similar

 

Opposition against “VIRMALINE” was satisfied, decision No 1579 (26 July 2016)

On 01.12.2014 the Estonian Patent Office made a decision to register the trade mark VIRMALINE (translates to „polar lights“) in the name of AS Hagar (the Applicant) in Class 30, including the following goods: pastries and confectionery.

OÜ Eesti Leivatööstus (the Opponent) filed an opposition on 01.02.2015, claiming that the decision to register the mark VIRMALINE was in contradiction with the Trade Marks Act § 9 points 2 and 3, which state that legal protection is not granted to signs which are devoid of any distinctive character and signs which designate the characteristics of the goods and services.

The Opponent argued that the word „Virmaline“ or its derivative „Virmalise“ has been used by several different producers to mark a certain type of pastry in Estonia at least since 1968, when the recipe for that pastry was confirmed by the Confectionary Board in Estonian SSR. The production of the pastry has been based on that same original recipe, give or take a few modifications introduced by various producers. The pastry Virmalise is considered to have a long storage life compared to other pastry products and consists of three layers of shortcrust pastry, acidulous jam and praline cream, covered with chocolate fondant and decorated with butter cream.

The Opponent stated that since several different manufacturers have produced the pastry and used the name Virmalise to mark the products, the word Virmaline or Virmalise can not function as a trade mark since the essential function of a trade mark is to distinguish the goods or services of a person from other similar types of goods or services of other persons. In addition to that, even the consumers have started to refer to the name Virmalise to characterise the product itself, thus the word Virmalise designates the kind of a certain type of goods.

The Applicant disagreed with the Opponent and argued that the word Virmaline can not be descriptive of the goods due to the fact that the word Virmaline aka „polar lights“ has no relation to the characteristics of pastries or confectionery and thus can not describe the product itself. The Applicant also stated that all of the manufacturers who produced the pastry Virmalise, used the word Virmalise or Virmaline as a trade mark, not as a characteristic of the „kind“ of pastry.

The Board of Appeals of Industrial Property satisfied the opposition and agreed with the Opponent. The Board found that the Opponent had provided sufficient evidence to consider the word Virmaline descriptive of the certain kind of pastry. Although the word itself is not descriptive of the characteristics of the pastry, it has become descriptive in practice. Due to the aforementioned, the word Virmaline can not be used as a trade mark as the consumers would not associate the sign with only one producer, but rather associate the word with a certain type of pastry.

pyragas

Prepared by the Patent Attorney Kaie Puur, Lawyer Maria Silvia Martinson, Estonia

PRACTICE OF LATVIAN PATENT OFFICE IN OPPOSITION CASES

Latvian team of Metida successfully helped to protect international trademark Tammex in Latvia

  Earlier EUTM   Opposed trade mark
 tabex-2tabex  Tammex

Latvian team of Metida successfully helped WALMARK, a.s. to protect his international trademark Tammex in Latvia registered for goods of class 5, namely ‘pharmaceutical products, food supplements and medical preparations for use against diarrhea’. Said trademarks was opposed by pharmaceutical company SOPHARMA AD having two earlier trademark registrations in Latvia:

tabexand tabex-2

Since both earlier trademark registrations as ground of the opposition are registered for goods of class 5 with generally formulated lists of goods, namely ‘Pharmaceutical products’ and ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use’ correspondingly, evidences of use were requested form our side.

Board of Appeals gave an analysis of the proof of use provided for of earlier trademarks Tabex and TABEX ТАБЕКС and made a conclusion that said marks were used in Latvian market sufficiently and accordingly to the requirements of the law in respect of antismoking drugs.

Board of Appeals gave an analysis of the similarity of goods of trademarks involved in the dispute and has found that goods of class 05 are similar, because all are pharmaceutical preparations intended for medical use, both are intended for any consumer who is going to improve its health and could be manufactured by same manufacturer. Besides these products could be purchased in same places, namely in pharmacy stores. But the Board of Appeals concluded that these goods has different indications therefore are not competitors to each other.

Comparing verbal elements of trademarks Tabex and Tammex the Board of Appeals agreed with most of our provided arguments. Namely it was stated that ending -EX is common and frequently is used for trademarks intended for marking pharmaceutical products. Beginning part Tab- in earlier marks is associative with word ‘tobacco’ which in Latvian is even more similar and is ‘tabaka’ and consumers probably will have association exactly with preparations against smoking and less with word ‘tablet’ as a form of medicine.

Two letters ‘mm’ included in opposed mark Tammex makes this mark different visually and phonetically.

Board of Appeals also stated that in respect to pharmaceutical preparations as product group, consumers have much more higher level of attention. Moreover consumers in Latvia usually have not free access to these goods in pharmacy stores, but making a purchase consumers always are served by qualified pharmacologist. Board of Appeals agreed with argument of the applicant of the opposition that these products could be found together in home pharmacy case, but stated that in respect to drugs consumers are very attentive because use of inappropriate drugs is very risky for consumer’s health and even life.

As a esult Board of Appeals concluded that even taking into account similarity of goods, trademark Tammex is not confusingly similar to trademarks Tabex and refused the opposition.

Prepared by the Patent Attorneys Evgenia GainutdinovaRuta Olmane, Latvia

 

Informuojame, jog šioje svetainėje naudojami slapukai (angl. cookies). Daugiau apie slapukus skaitykite čia. Savo duotą sutikimą bet kada galėsite atšaukti pakeisdami savo interneto naršyklės nustatymus ir ištrindami įrašytus slapukus.