Judgements of the Courts of the Republic of Lithuania

The right to a trademark belongs to the author of that idea and not to the company that have been using it

By 21 June 2016 ruling in the civil case No 2A-505-798/2016 the Court of Appeal of Lithuania has rejected the appeal of the plaintiff, i.e. the private limited liability company Gastronomai, concerning 9 November 2015 judgement of Vilnius Regional Court delivered in the civil case No 2-3800-823/2015 opened according to the action of the plaintiff, i.e. the private limited liability company Gastronomai, against the defendant A. G. concerning revocation of registration of the trademark.

The plaintiff in its action requested to re-register the defendant’s figurative trademark NO SUGAR COFFEE BAR (reg. No 69760) in the name of the plaintiff on the grounds provided for in Article 41 of the Republic of Lithuania Law on Trademarks (hereinafter referred to as the “LTM”); as the court has decided not to satisfy the above claim, i.e. invalidate the registration of the figurative trademark NO SUGAR COFFEE BAR (reg. No 69760) by reason that the defendant has filed the application for registration of the trademark in bad faith on the basis of Article 7(3) of the LTM, since the defendant as the director of the company who is also a shareholder was responsible for conclusion of contracts with designers, registration of the logo and trademark, nevertheless, by mutual agreement of shareholders, without other shareholders being aware of this, registered the chosen logo and the created name of the café NO SUGAR COFFEE BAR not in the name of the plaintiff, but in his own name, thus, misappropriating the company’s intellectual property.

The court has decided that namely the defendant and not the appellant is the author of the idea of special brew café and the originator of the trademark. The afore-mentioned conclusion has not been rebutted by the fact that the defendant has sent several versions of graphical representation of the trademark to one of the shareholders because the original and actual author of the idea of the name and graphical representation is the defendant.

The Court of Appeal has accepted the conclusion that there was no evidence that creation of trademarks fell within the defendant’s official duties in the proceedings which was drawn by the court of first instance. Although, as pointed out by the appellant, the defendant as the director must arrange ordering of creation and realisation of the name, sign of the café etc., all circumstances allowed the court to draw a definite conclusion that the defendant created the trademark not as a result of fulfilment of official duties, but as a result of realisation of his personal idea; thus, the Court of Appeal has accepted the conclusion of the court of first instance that, in the case in question, the provision set forth in Article 9(2) of the Law on Copyright and Related Rights could not be applicable.

 no-sugar

The fact that the first letter of the company names under comparison does not coincide does not eliminate the similarity

By 23 June 2016 ruling in the civil case No e2-1070-407/2016 the Supreme Court of Lithuania has rejected a separate appeal brought by the defendant, i.e. the private limited liability company Žaibosauga LT concerning 17 March 2016 ruling of Vilnius Regional Court applying interim measures in the civil case No e2-4249-585/2016 brought according to the action of the plaintiff, i.e. the private limited liability company Ežiukai against the defendant, i.e. the private limited liability company Žaibosauga concerning unlawful use of the signs Ežiukai, name of the legal person and the domain name and indemnification of damage.

 eziukai

The court of appeal has accepted the preliminary assessment of the court of first instance that at this stage of the proceedings the evidence which suggests that namely the plaintiff Ežiukai UAB which operates the domain eziukai.lt is the proprietor of the trademark ežiukai GERAI GREITAI NEBRANGIAI and the defendant has used the sign “ežiukai” in Google AdWords system for advertising of its own goods and services is sufficient for determining on preliminary reasonableness of the action. The court has noted that in the event of a dispute over infringement of the rights of the proprietor of the trademark, interim measures may be aimed not only at ensuring enforcement of the future court judgement which may be favourable to the plaintiff, but also at provisional protection of the infringed rights or rights exposed to the risk of infringement. Consequently, as the court has preliminary assessed that the defendant has infringed the plaintiff’s rights, it had reasons to apply preventive interim measures.

The court did not allow to monopolize the generic mark

By 30 June 2016 ruling in the civil case No e2A-539-407/2016 the Court of Appeal of Lithuania has satisfied the appeal of the plaintiff, i.e. the private limited liability company Ekotakas concerning 4 December 2015 judgement of Vilnius Regional Court delivered in the civil case No e2-5073-823/2015 brought according to the action of the afore-mentioned plaintiff against the defendant, i.e. the private limited liability company Ekotekas concerning protection of the rights of the proprietor of the trademark and the rights to the name of the legal person.

Having evaluated the overall impression of the trademark belonging to the plaintiff and the name of the legal person of the defendant, the dominant elements (“takas” and “tekas”) and aural and semantic differences of the afore-mentioned signs, the court of first instance has decided that the compared signs are not confusingly similar. The chamber of judges of the Court of Appeal has not accepted such assessment of the court of first instance. The chamber has also disagreed with the conclusion that different accentuation stresses on the syllables which do not coincide (“ta” and “te”) are overshadowed by aural similarities of the afore-mentioned words.

Having assessed the overall visual, aural and semantic similarity of the plaintiff’s trademark EKOTAKAS and the name of the defendant Ekotekas UAB and the overall impression created by them, the chamber of judges has decided that the plaintiff’s trademark and the defendant’s name are confusingly similar.

One letter difference between company names – insufficient

By 5 July 2016 ruling in the civil case No e3K-3-350-219/2016 the Supreme Court of Lithuania has satisfied the appeal of cassation of the plaintiff, i.e. the company Future Enterprises Pte Ltd, concerning review of 1 December 2015 judgement of the chamber of judges of the Civil Division of the Court of Appeal of Lithuania in the civil case opened according to the action of the plaintiff, i.e. the company Future Enterprises Pte Ltd, against the defendant, i.e. the company McDonald’s International Property Company, Ltd concerning annulment of the decision of the Appeal Division of the State Patent Bureau of the Republic of Lithuania.

The Supreme Court of Lithuania has pointed out that the defendant’s trademark McCAFE consists of the formant “Mc” and the word “cafe” which means a café (kavinė) and this word is generic, indicates the place of provision of the descried services; thus, it is not a distinctive element, since, naturally, the points of sale of coffee or coffee drinks are designated by the word “coffee”, “café”; thus, the conclusion of the court of first instance that the word “cafe” is a weak distinctive character of the defendant’s mark should be accepted as reasonable. Although the formant “Mc” which has been registered by the defendant as a separate trademark may raise associations with the company McDonald’s International Property Company, Ltd due to its use for designation of goods or services of certain categories, and prominence and reputation of the mark and should be considered as a strong distinctive character of the defendant’ mark, the particle “Mc” is also used in other trademarks belonging to other economic entities; thus, the similarity between it and the formant “Mac” used in the verbal element of the claimant’s trademark in aural terms and possible associations with the respondent’s company alone do not constitute grounds for applying Article 7(1)(2) of the Law on Trademarks. The court of first instance which took into account the verbal element and figurative element of the plaintiff’s trademark, the overall image created by them has reasonably decided that the plaintiff’s mark which includes several independent elements helping to identify it, eliminates the impression created for the consumers which may attract the consumer’s attention and remain in his memory, without associating the mark with the defendant. The Supreme Court of Lithuania has reversed the judgement of the court of appeal and upheld the judgement of the court of first instance.

 maccoffee  prieš  McCAFE

The consequences of the illegal use – without waiting for the court decision

 By 12 July 2016 ruling in the civil case No 2A-549-798/2016 the Court of Appeal of Lithuania has rejected the appeal of the defendant, i.e. the private limited liability company Trailana concerning 17 November 2015 judgement of Vilnius Regional Court delivered in the civil case No 2-4871-823/2015 opened according to the action of the plaintiff, i.e. the private limited liability company Railana, against the defendant, i.e. the private limited liability company Trailana, concerning protection of the rights of the proprietor of the trademark.

The appellant has pointed out that the court has unreasonably determined that the name of the appellant and the trademark of the plaintiff are similar in visual, aural and semantic terms. The appellant has grounded the above argument on the fact that the court has unreasonably failed to assess the trademark as a whole and has ignored the fact that the plaintiff’s trademark has not only a verbal element, but also a graphical element; the signs “railana” and “trailana” are not similar in semantic terms; furthermore, according to the appellant, the court has failed to properly evaluate the evidence concerning confusing similarity provided by the plaintiff.

Nevertheless, the Court of Appeal has accepted the conclusion of the court of first instance that the verbal element of the plaintiff’s trademark and the name of the appellant as a legal person are similar in visual terms and visual differences of the plaintiff’s trademark are not so strong that they eliminated the visual similarity of the compared signs.

The Court has not accepted the appellant’s position that the plaintiff’s trademark and the name of the appellant as a legal person are not similar in aural and semantic terms. First of all, as determined by the Court, the afore-mentioned signs are artificial words bearing no semantic meaning per se; thus, their comparison in semantic terms is not possible. Second, it should be accepted that the logic of the court of first instance that the semantic meaning of the words “rail” and “trail” (bėgis, vežimas geležinkeliu and kelias, takas) is not remote and, taking into account the links between the signs and the activities carried out by the parties, similar. Third, as it has already been mentioned, the syllables of the signs are “rai-la-na”, “trai-la-na” without placing emphasis on the start of the words, i.e. “rail” and “trail”; thus, attention from the semantic meaning of the words “rail” and “trail” is diverted when translating them from the English language.

In the light of the fact that it has been determined that the court has reasonably decided on non-conformity of the name of the appellant’s legal person with the requirements of Article 2.39(3) of the Civil Code and as it has been established that the name of the appellant’s legal person is confusingly similar to the plaintiff’s trademark, the Court has reasonably stated that the name of the appellant’s legal person is confusingly similar to the name of the plaintiff’s legal person.

trailana

 Prepared by the Attorney-at-law Inga Lukauskiene, Junior Lawyer Ausrine Sakalauskaite

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