Lithuanian, Latvian and Estonian Practice of the Patent Bureau
PRACTICE OF LITHUANIAN STATE PATENT BUREAU
Protest Substantiation Statistics
In January, February and March the Appeals Division of the State Patent Bureau of the Republic of Lithuania examined eight trade mark oppositions represented by our law firm. Six oppositions were lodged for national trademarks and the other two oppositions were filed for international trademarks. All oppositions where we acted as a representatives of the proprietors of the afore-mentioned trademarks have been satisfied and the registrations of all trademarks have been invalidated.
Confusingly Similar Trademarks:
Prepared by the Assistant to Attorney-at-Law Mykolas Jakutis
Decisions on trademark applications:
Regarding registration of the international trademark Montana (reg. No 622554) in Lithuania
Upon an expert examination, it was decided not to register the international trademark Montana for designating goods in Class 30 in Lithuania on the grounds that the sign may mislead the public as to the type, quality or geographical origin of the goods and/or services. The State Patent Bureau has been provided with the reasoning that, as a rule, products in Class 30 are not associated with Montana State and the consumers’ knowledge about Montana State as a geographical indication is particularly low. Montana State is mainly known for its land and livestock farming and it is not common and important to indicate the geographical origin of such goods putting emphasis on the quality or other important criteria. In the light of the afore-mentioned reasoning, the State Patent Bureau of the Republic of Lithuania has included the trademark in the register.
Regarding registration of the international trademark Intense Colour Systems (reg. No 1 208 011) in Lithuania
After an expert examination, it was decided not to register the international trademark Intense Colour Systems for designating goods in Class 3 in Lithuania on the grounds that the mark does not have a distinctive character and designates the origin of the goods. The State Patent Bureau has set out the arguments that the sign is original in respect of the listed goods and does not indicate the characteristics of the goods. Furthermore, the trademark is composed of English words and the mark includes figurative elements that attract the consumers’ attention. Therefore, in the light of the fact that the consumers would not perceive the semantic content of the whole sign for which registration is sought, the State Patent Bureau has included the trademark in the register.
Prepared by the Junior Lawyer Ignas Motiejūnas
PRACTICE OF THE LATVIAN PATENT OFFICE IN OPPOSITION CASES
Misleadingly similar trademarks:
Trademarks which are not similar:
PRACTICE OF THE ESTONIAN BOARD OF APPEAL OF INDUSTRIAL PROPERTY
Misleadingly similar trademarks:
Decisions on Trademark Applications:
Appeal against the Patent Office regarding the partial refusal to register trademark GRILLCUBE was satisfied, decision No 1558 (30 November 2015)
Trademark: GRILLCUBE (word), Appl. No M201200378, 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 GRILLCUBE for some goods in Classes 4 and 11.
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 Patent Office based their decision on the following arguments. The aim of § 9 section 1 point 3 is to leave signs, which are subject to public interest, free to use by everyone. The mark GRILLCUBE consists of two English words: grill and cube. According to Statistics Estonia, an average Estonian consumer understands English well. Thus, the meanings of „grill“ and „cube“ are clear and the consumer associates the word GRILLCUBE with something that is used for grilling and is also cube-shaped. Thus, it characterises the goods in Classes 4 and 11 (such as ovens, firewood, kitchen utensils etc).
The aim of § 9 section 1 point 2, however, is to preclude the registration of marks which lack any distinctive character. In this case, the mark is descriptive of the goods in Classes 4 and 11, therefore it does not have a distinctive character.
The Applicant argued that the Patent Office’s decision was based on the wrong conclusions. The word GRILLCUBE is not an actual word in English and it does not bear any certain meaning in the eyes of the consumers, whether they know English or not. The Patent Office only analysed the words „grill“ and „cube“ separately, but together they do not form a new word that is commonly used or recognised; GRILLCUBE is a fictitious word. Point 3 cannot apply in this case, since the connection between the mark and the goods in Classes 4 and 11 is not obvious. Being cube-shaped is not a characteristic of any of the goods in Classes 4 or 11. Additionally, the Patent Office did register the mark for several goods in Classes 4, 11 and 21, of which many are almost identical or highly similar to the goods the Patent Office declined the registration in relation to. Since GRILLCUBE is a fictitious word, it is also distinctive in the sense of point 2. Thus, the motives of the Patent Office’s decision remain unclear.
The Board of Appeals satisfied the appeal and agreed with the Applicant. The Board stated that the word GRILLCUBE is fictitious and does not bear any meaning in Estonian or English. The interpretation offered by the Patent Office (that GRILLCUBE refers to a device or thing meant to be used in reference to grilling and which is cube-shaped) is not obvious, since the mark as a fictitious word could have a number of meanings and might constitute a play on words or be perceived as imaginative. It does require at least some form of interpretation by the consumer and is not clearly understood as a descriptive term. Additionally, not all characteristics of the goods play an important part regarding point 3: being cube-shaped is not a distinctive or important characteristic of goods in Classes 4 and 11. Thus, the mark GRILLCUBE is not in contradiction with the Trade Marks Act § 9 section 1 points 2 and 3, since due to its fictitious nature it is a distinctive mark, which does not characterise goods in the relevant classes. Additionally, the Board denoted that the Patent Office had failed to thoroughly analyse and found its arguments why the mark was given legal protection in relation to some goods, but not others.
Opposition against “NYX (fig)” was not satisfied, decision No 1521 (27 November 2015)
Earlier CTM Reg. No 008774531 (Classes 3, 44)
|Opposed trade mark IR Reg. No 1052316 (Class 3)|
Laboratoire NUXE (the Opponent), owner of the earlier mark NUXE, filed an opposition with the Board of Appeals of Industrial property regarding the decision of the Patent Office to give the trade mark legal protection in Estonia in Class 3 in the name of L’OREAL (previous owner of the mark being NUX, Los Angeles Inc).
Laboratoire NUXE based its opposition on 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.“
The Opponent thus argued that the Patent Office’s decision to give legal protection to was in contradiction with the aforementioned provision since NUXE and are confusingly similar marks which are registered for identical or similar goods. More precisely, the marks are highly similar visually since both marks consist of one short word, whose first letter is N and third X. The styling of the mark could confuse consumers regarding the second letter as it reminds the letter U instead of the letter Y. According to the practice of the European Court of Justice, the consumer normally attaches more importance to the first part of words. Due to that the likelihood of confusion is bigger in this case. Phonetically, the marks also sound alike as NUXE is pronounced [nyks] or [nuks] and is pronounced [nyks], [nuks] or [niks]. Semantically, neither of the marks have a meaning in the eyes of Estonian consumers. Therefore, the Opponent stated, the marks are confusingly similar taking into consideration that the goods are identical or similar as well.
The Applicant responded by stating that the marks are not confusingly similar. Firstly, the earlier mark NUXE is a word mark, whereas is a combined mark, whose styling requires a certain level of effort from the consumers to understand the letters. The styling gives the mark a distinctive nature and just because the letters N and X coincide, does not make the marks confusingly similar. The addition of the letter „e“ in the earlier mark is important since the marks are very short and thus even one letter could make a big difference. For instance, now the marks have a different amount of syllables, which also is noticeable phonetically. The mark NUXE is pronounced [nukse], whereas is pronounced either [niks] or [nüks]. Additionally, the word Nyx does have a well-known semantical meaning: Nyx is the Greek goddess of the night. Also, the level of attention regarding cosmetics is higher than the average, which lessens the likelihood of confusion. Thus, the marks are not confusingly similar and not associated with eachother.
The Board of Appeals of Industrial Property agreed with the Applicant and decided not to satisfy the opposition. The Board stated that although the goods are identical or highly similar for both marks, the marks themselves are not confusingly similar. Although both marks include the letters N and X in the same systematic order, that is basically the only common feature. The mark NUXE is pronounced as [nukse], whereas is pronounced either [niks] or [nüks]. Visually, the mark has distinctive styling and therefore is noticeably different from the earlier mark. It is also likely that consumers associate the mark , more precisely the word Nyx, with the Greek goddess of the night, whereas the word NUXE has no semantical meaning.
Taking into consideration that the attention level of the public is quite high regarding cosmetical products and the marks are dissimilar, the opposition was left unsatisfied. The Board, however, denoted that both parties had submitted evidence regarding the same dispute (and decisions regarding the same marks) in other countries. However, the practice of other countries is not relevant when considering the situation in Estonia.